The European Union calls for a “Deluxe” decision

Through a decision dated 22 January 2014 EUIPO’s Second Board of Appeal confirmed the refusal of the application for the trademark

EU Trademark No. 011253044 (Refused)

which had been filed for a broad range of goods and services in classes 9, 35, 39, 40, 41, 42 and 45.

The reason for the refusal is that EUIPO found that the mark was devoid of distinctive character and that it merely informed consumers of the quality of all the goods and services at issue, without exception. The Office thus adopted a general reasoning in respect of all of them.

This decision was annulled by the General Court (case T-222/14 (in Spanish) which, after considering whether the Office had examined in sufficient depth the distinctive character of the sign at issue in relation to all the goods and services for which the application had been filed, held there to be a flaw in the reasoning of the Board of Appeal.

The appeal to the Court of Justice (case C-437/15P) therefore centered on the question of whether EUIPO should assess the capacity of a sign to identify a given business origin  with respect to each and every one of the goods or services, or whether, on the other hand, a global analysis of the goods or services will suffice if the Office finds them to have some relevant characteristic in common.

As we are all aware, EUIPO is under an obligation to state the reasons for its decisions, in order that the interested parties may know why their trademark is being refused access to the register and also that the courts of the EU may be in a position to oversee the legality of the decision.

When a trademark application is filed, the Office should indeed carry out an assessment of the capacity of the sign in question to distinguish the goods and services it covers. This will entail, in principle, an analysis of each and every one of those goods and services. 

However, an exception to this rule arises when the goods and services are interlinked in a sufficiently direct and specific way, to the point where they may be grouped in homogeneous categories. In that event the Office may confine its assessment to each of those categories.

The General Court relied on the order of 18 March 2010 (in case C-282/09P) to distinguish different categories into which the goods and services of the rejected mark could be grouped (cinema, advertising, storage and transport of goods, etc.), maintaining that they were very different in their nature, characteristics and purpose and that the Office should therefore at least have analyzed each of the homogeneous categories within the application.

EUIPO’s position, in contrast, was that if all the goods and services have a characteristic in common, which in the present case would be that they are all of superior quality, they may be regarded as forming a single category and, therefore, a general statement of reasons will suffice. The systematic repetition of the basic ground for the refusal, which is that the sign is devoid of distinctive character in respect of each and every one of the goods and services, may thus be avoided.

The Court of Justice annulled the judgment of the General Court, holding that the latter should have:

1. Checked whether the mark applied for, which comprises a word and a figurative element, could be perceived, directly and immediately, as a claim of superior quality or a laudatory message, rather than as an indication of the business origin of the goods and services. In the affirmative, the refusal of the application would be fully justified without the need for an examination of the sign in relation to all of the goods and services.

2. Checked whether the word element of the sign, “deluxe”, indeed conveyed the idea of superior quality or whether it could have a different meaning. In the latter event the mark could have a sufficient degree of distinctive character in respect of some of the goods or services. In that case an assessment of each of them would be required and different conclusions could be reached.

The Court of Justice held that the General Court had failed to appreciate that, despite their differences, all the goods and services at issue could have a common characteristic relevant to the analysis of the absolute prohibitions on registration which could justify their being grouped in a single homogeneous category and the consequent use of general reasoning in relation to them all.

The case has been referred back to the General Court and we shall therefore have to wait for a final decision on the substance. 

Author: Soledad Bernal

Visit our website: http://www.elzaburu.es/en

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

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The graphic representation of the Rubik’s Cube will no longer be a trademark in the European Union

All of us will be familiar with the famous puzzle invented in 1974 by Erno Rubik. The cube has a core mechanism with intersecting axes allowing each of the six faces to rotate independently, thus giving shape to a six-colour puzzle.

Given the worldwide success it rapidly achieved, the puzzle inevitably inspired the appearance in the marketplace in the course of the years of a multitude of other models made of various materials and in a range of shapes and colours.

In these circumstances appropriate protection naturally had to be sought for the Rubik’s Cube and was obtained through intellectual property rights such as those afforded by EU trademark No. 162784.

EU trademark No. 162784, the mark in dispute

A conflict arose in connection with that trademark in 2006, when a famous German toy manufacturer filed an application for a declaration of invalidity on the ground, essentially, that the mark embodied a technical function consisting of the rotatable nature of the product and that third parties were thus prevented from selling similar puzzles which necessarily incorporated that mechanism and took a shape essential for the proper functioning thereof.

Up to now the EUIPO and the General Court had maintained that the representation of the Rubik’s Cube with its grid structure had sufficient distinctive character to perform the function of a trademark and that the internal mechanism could not, in any event, be perceived therein. However, in a judgment published on 10 November 2016 (C-30/15 P) the Court of Justice has overturned those previous rulings.

In that judgment, which is in line with the conclusions previously drawn by the Advocate General, the Court holds that the essential characteristics of a shape must be assessed in the light of the technical function of the actual goods at issue (a three-dimensional puzzle), also taking into account the elements which are not visible in the graphic representation of that shape and the rotatability of the individual elements of a three-dimensional puzzle of the Rubik’s Cube type. Thus, for want of arbitrary or decorative elements, the shape of the Rubik’s Cube does not qualify for registration as a trademark, as such a registration severely limits the freedom of other traders to market products characterized by the same or a similar technical result, i.e., that of a three-dimensional puzzle to be resolved through positioning moveable elements in a logical order.

Now the EUIPO will have to deliver a fresh decision taking into account the findings of the Court of Justice.

N.B. A Spanish version of this article was published in the economic newspaper Expansión


Author: Soledad Bernal Montes

Visit our website: http://www.elzaburu.es/en

The Rubik’s cube: a shape necessary to obtain a technical result or a distinctive sign?

The outward appearance of goods is having an ever more important bearing on the decision of the consumer to make a given purchase. As a result, the filing of applications for three-dimensional trademarks, with a view to protecting shapes likely to influence that decision, has become a common practice.

However, the registration of marks of this type, consisting of the shape or representation of a product without anything else, has always been a controversial issue. The problem lies in striking a balance between granting an exclusive right to the trademark owner and avoiding the creation of a monopoly in the marketing of a given product.

From the prohibition on registration laid down in article 7.1e) EUTMR it follows that the three-dimensional trademark cannot and must not act as a system for the protection of technical results. For that purpose there are other more appropriate legal instruments, such as patents or utility models, whose limitation in time is essential to the proper functioning of the system for the protection of inventions.

That prohibition seeks to draw a line between the trademark and patent systems, preventing the grant of an exclusive right without limitation in time which would in practice entail the perpetuation of a monopoly in a technical solution.

At times, however, it is not easy to pinpoint those representations whose purpose is to protect the sign which identifies the business origin of a product rather than the technical features of that product.

The case of the “Rubik’s cube”, which has reached the Court of Justice of the EU, relates to that issue.

In 1999 the British company Seven Towns Ltd registered EU three-dimensional trademark No. 162784, in the shape of the Rubik’s cube, in respect of “three-dimensional puzzles” in class 28.

Product shape and acquired distinctiveness: possible registration of the KIT KAT trademark

On 16 September 2015, the Court of Justice of the European Union (CJEU) delivered its long-awaited judgment (case C-215/14) on the referral for a preliminary ruling made by the High Court of Justice of England & Wales concerning whether it was possible to register the shape of Kit Kat chocolate wafers as a trademark: 

Nestlé had filed an application for registration of the mark with the UK Trademark Office.  However, the Office accepted an opposition lodged by Cadbury and refused the application on the grounds that it had not been sufficiently demonstrated that the mark had acquired distinctive character.  It considered that the shape that had been applied for had three features, as follows:  

• The basic rectangular slab shape; 
• The presence, position and depth of the grooves running along the length of the bar; and
• The number of grooves which, together with the width of the bar, determine the number of ‘fingers’.

According to the UK Office, the first of those features was a shape that derived from the very nature of the goods claimed (with the exception of cakes and pastries), and the other two were necessary to obtain a technical result.

That decision was appealed to the High Court of Justice, which found that there was not enough case-law from the Court of Justice in respect of the issues that had been raised, and therefore made a referral for a preliminary ruling.  In its judgment, the CJEU changes the order of the three questions that had been referred to it, and first of all examines the question concerning the possibility of cumulatively applying the bar to registration of signs consisting of the shape of goods where that shape is imposed by the nature of the product and where it is necessary to obtain a technical result.  The reasoning behind this change of order is that a sign to which that ground for refusal applies can never acquire distinctive character through use. 

In that regard, the CJEU reiterates the legal doctrine established in the recent Hauck judgment, C 205/13, EU:C:2014:2233 (Tripp-Trapp chair), in the sense that the three particular grounds for refusing to register product shapes operate independently of one another. Therefore, in the Court’s view it is irrelevant whether a certain shape could be denied registration on the basis of a number of grounds, and it will suffice for just one of those grounds to be fully applicable to the shape in question in order for registration to be denied.

As the Advocate General had explained in points 65 and 66 of his Opinion of 11 June 2015, what the CJEU had precluded in the Hauck judgment was the possibility of applying the three different grounds for refusal in combination, but not the possibility of applying them cumulatively, provided that at least one of those grounds fully affects the sign in question.

Court of Justice rules on the validity of the three-dimensional Tripp-Trapp trademark

The 18 September 2014 ruling by the Court of Justice of the European Union (CJEU) (C-205/13, "Tripp-Trapp" case) has added definition to the interpretation of specific three-dimensional shapes for registration as trademarks.

Tripp-Trapp is the name given to a children's highchair created by the Danish designer Peter Opsvik and sold by the Stokke company since 1972. The highchair is designed so that the height of the chair can be regulated as the child grows The originality of the design is not disputed, as demonstrated by the fact that the proceedings that prompted the request for a preliminary ruling as well as parallel proceedings in Germany both concluded that the chair in question fulfils the originality requirement for entitlement to copyright protection. However, the issue of trademark rights is a different matter.

As we all know, trademark protection is virtually indefinite, which is why, on occasion, rightholders of industrial designs and even copyright in product shapes may find it attractive to try to perpetuate protection by means of trademarks. Lawmakers were aware of this when the First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trademarks was drawn up to include, under Article 3(1)(e), specific grounds for the refusal or invalidity of signs consisting exclusively of:

- the shape which results from the nature of the goods themselves, or

- the shape of goods which is necessary to obtain a technical result, or

- the shape which gives substantial value to the goods.

As a result, when the German company Hauck GmbH & Co. KG ("Hauck”) began to market its Alpha and Beta chairs using a design that was very similar to that of the Tripp-Trapp chair, Stokke decided to take action on grounds not only of copyright but also of its three-dimensional trademark registered in 1998:

Hauck subsequently filed a countersuit claiming that the said trademark was invalid because the design ensues from product function rather than acting as an indicator of business origin. On appeal the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) decided to stay the proceedings to refer a series of questions dealing with how to interpret the said ground for refusal to the CJEU for preliminary rulings.

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.

Author:Marta Rodríguez

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