Wednesday, 17 May 2017

Getting to grips with functional marks

The Court of Justice of the European Union (CJEU) issued a judgment on 11 May 2017 (Case C-421/15P) in relation to the interpretation of the prohibition on registration as a trademark of “signs which consist exclusively of the shape of goods which is necessary to obtain a technical result” laid down in Art. 7.1 e) ii) of the Regulation on the European Union trade mark.
In 2002 and 2003 the Japanese company Yoshida Metal Industry secured the registration of two figurative European Union trade marks, for certain items of cutlery in class 8 and kitchen utensils and containers in class 21, consisting of the two-dimensional representation of a series of black dots:
(EUTM No. 001371244)

EUTM No. 001372580
The marks were used in practice on the handle of the knives sold by Yoshida and represented a series of concave dots or dents on the handle of the cutlery which performed a non-slip function when cutting (and which were also protected by various patents):
In 2007, the companies Pi-Design AG, Bodum France SAS and Bodum Logistics A/S applied at the EUIPO for the marks to be declared invalid on the basis of Article 7.1 e) ii), given that the signs consisted exclusively of the shape of a product which is necessary to obtain a technical result.
The EUIPO accepted the applications for a declaration of invalidity and cancelled the registrations of the trade marks.
The CJEU has now dismissed the appeal lodged by Yoshida, upholding the invalidity of the trade marks.
The judgment accepts and confirms, on the one hand, the arguments previously asserted by the General Court in its judgment of 6 March 2014 (C-337/12 P y C-340/12 P) (see a comment in this blog), establishing that the prohibition on registration laid down in Art. 7.1 e) ii) must apply both to two-dimensional and three-dimensional trade marks and declaring that said prohibition on registration was in the public interest, insofar as companies cannot use trade mark law to extend indefinitely the protection of technical solutions. Moreover, it states that for a correct application of the provision it is necessary to identify the essential characteristics of the trade mark, carrying out a case-by-case assessment.
Moreover, it is important to mention the CJEU’s current interpretation of Art. 7.1 e) ii), holding that registration as a trademark should only be refused where “all of the essential characteristics of the sign are functional”, that is, the Court considers that in the disputed trade marks, the specific configuration of the black dots is a significant functional element, which means that they cannot be registered as trademarks and, consequently, they must be declared invalid. In this regard, the Court specifies that the prohibition on registration laid down in Art. 7.1 e) ii) may be overcome and the sign may be registered as a trademark where it includes other relevant non-functional components (such as, for example, decorative or fanciful elements).
The Court has undertaken a strict interpretation of Art. 7.1 e) ii) with regard to registration of this type of mark consisting of the shape of a product, to thus prevent companies achieving a monopoly on the technical solutions or functional characteristics of the product. The judgment is also interesting in terms of the detailed definition of all of the mandatory requirements for this type of mark to qualify for registration as a trademark.

Author: Ana Pérez-Prat

Visit our website:


  1. It is very informative post. I would like to thank you for giving us a detailed information about the the trademark registration in Spain. At times we are not aware about the refusals and opposition. This blog will give us a clear picture about it. Thank you once again for this post.

  2. Thanks for sharing, nice post! Post really provice useful information!

    Giaonhan247 chuyên dịch vụ mua hàng ebay việt nam hay tìm hiểu bảng giá cước gửi hàng đi mỹ uy tín cho dịch vụ gửi hàng đi mỹ giá rẻ với mặt hàng gửi quần áo đi mỹ uy tín.

  3. It was a smart move by Yoshida to protect the innovation with patents that “which was necessary to obtain a technical result” till it was dismissed by the court. The world of trademarks, patents, and copyrights is brutal, and one must be cautious when stepping into it. Sometimes one steps into it without even realizing it, take a college dissertation for example It is a work that belongs to you and you should have the “rights” for it. Those who hire academic writing services must make sure that the company does not claim (or sell) the rights of the academic work, or else the student could get into trouble.

  4. This is quite a bold step by the Court of Justice of the European Union (CJEU). After completing the google data analytics course I did research on Japanese company Yoshida Metal Industry and found out that they have a huge traffic of about 100K per month. This decision could heavily affect them.

  5. The European Union's Court of Justice has taken a big move in this case (CJEU). After searching the accounting and bookkeeping services, I looked up Yoshida Metal Industry in Japan and discovered that they had a lot of traffic, approximately 100K per month. This decision might have a significant impact on them.

  6. NMAT Preparation 2021 – Never Miss Any Thing!


  7. A person necessarily assist to make seriously articles I’d state.
    That is the first time I frequented your web page and thus far?

    my web page; 대구오피

  8. I run my own business and also provide online Assignment Help service to students of marketing and finance. As a businessman I know well the worth of trademark. It is very important to have trademark registration for your business to avoid any infringements. In this way no one can steal your ideas and if anyone do so that you’ll have a legal right to take action against it.

  9. Find out the most premium health and beauty products in Pakistan at Posch Care that is stocked with a wide variety of skin care items for you.
    shea body butter

  10. Thank you and thank you again! That’s amazing article . Actually, today I read some articles on this topic and I really think about it.
    Very helpful and Great information,

  11. You have shared such great information about Intellectual Property, I also got much help in my assignment here, but also I found the best coursework writing service, actually my friend suggested me to try them, when I found your blog.

  12. The art of getting the grips to the functional marks of any sort of educational department in private sector

  13. Lovine is one of the well-known online Cosmetic platforms in Pakistan for Women and Men items.

  14. The essay writing service is going toward a sudden change of idea devolopment & creation these functional areas for students

  15. Great Blog. Your article is amazing and inspiring. Keep writing and inspiring.
    Lovine Skin Care

  16. Nice info, I am very thankful to you for sharing this important knowledge. This information is helpful for everyone. Read more info about Trademark Registration Online in Malta So please always share this kind of information. Thanks.

  17. In this blog you give good information about functional marks. I hope you will share more good updates. Now it's time to avail jupiter Florida airport for more information.