Tuesday 11 March 2014

Shapes of goods to obtain a technical result: Registrable as trademarks?

The CJEU has recently (on 6 March 2014) issued a judgment in joined Cases C-337/12P to C-340/12P on interpretation of Article 7.1.e. CTMR and the requirements to be assessed in the case of trademarks that may comprise the shape of goods necessary to obtain a technical result.

Yoshida is a Japanese company that secured registration for two Community trademarks for certain types of cutlery in Class 8 and kitchen utensils in Class 21.

CTM 001371244

CTM 001372580

In practice the trademarks covered knife handles with concave dents for knives sold by Yoshida, as shown below.

Image downloaded from www.yoshikin.co.jp
The patterns of concave dents, also protected by several patents, served the purpose of helping to prevent the knives from slipping out of the user's hand when slicing.

Three companies, Pi-Design, Bodum France SAS, and Bodum Logistics A/S, filed applications with the OHIM for declarations of invalidity of the Community trademark registrations on grounds that they lacked distinctive character and were in breach of Article 7.1.e. CTMR, that is, that the trademarks consisted of the shape of goods necessary to obtain a technical result. After various appeals the matter reached the CJEU, and in its decision the Court first points out that the absolute grounds for refusal laid down in Article 7.1 CTMR are to be interpreted in the light of the public interest and that no company was entitled to a monopoly on technical solutions or product's functional characteristics.

The Court then points out that for proper application of Article 7.1.e CTMR the essential characteristics of the trademark need to be properly identified. Identification of the said essential characteristics requires a case-by-case assessment, taking into account the overall impression produced by the sign on consumers along with the various types of elements making up the sign, while having in mind that there is no hierarchy systematically applicable to the said elements. Furthermore, Article 7.1.e CTMR applies to both two-dimensional and three-dimensional trademarks.

The Court has also ruled that besides the above, it is also appropriate to take into account such other additional aspects as the filing date of the trademark application, to establish whether the grounds for invalidity had effect on that date, and additionally how the trademark has been used in practice since the filing date and whether there are earlier patents in existence. In not doing so the General Court erred in law.

Since the preceding aspects had not been taken into account, the CJEU referred the matter back to the General Court for judgment.

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