In Pirelli Tyre SpA (Pirelli) v. European Union Intellectual Property Office (EUIPO)
, intervener The Yokohama Rubber Co. Ltd (Yokohama), Case T 447/16, Oct. 24, 2018, the European Union General Court annulled a decision of the Board of Appeal, in which the board upheld the decision of the EUIPO Cancellation Division. It found that the board wrongly took the view that the contested sign consisted of the “shape of the goods” within the meaning of Article 7(1)(e)(ii) of Regulation No. 40/94.
On July 23, 2001, Pirelli filed with the EUIPO an application for registration of the following figurative sign for goods in Class 12 (figurative sign pictured right). The mark was granted under Registration No. 2319176.
On September 27, 2012, Yokohama filed an application for a declaration of invalidity of Pirelli’s trademark specifically for the goods “tyres, solid, semi-pneumatic, and pneumatic tyres for vehicle wheels of all kinds,” on the ground that the contested sign consisted exclusively of the shape of the goods concerned necessary to obtain a technical result. The EUIPO Cancellation Division granted the declaration of invalidity on August 28, 2014.
Pirelli filed a notice of appeal with the Board of Appeal. In its decision of April 28, 2016, the board confirmed the contested decision considering that the sign represented a tyre tread and thus the most crucial part of the contested goods. Pirelli subsequently brought an appeal before the General Court.
The General Court noted that with regard to its graphic representation the contested sign consisted of a figurative two-dimensional sign; therefore the sign, as registered, was not capable of representing the shape of a tyre or of a tyre tread. Although it follows from the case law that the EUIPO is entitled to identify what the shape at issue actually represents, that case law cannot be interpreted as meaning that the EUIPO is permitted to define the contested sign by including characteristics which it does not possess and which it does not cover. In the contested decision the Board of Appeal departed from the shape represented by the contested sign and modified it.
The General Court held that the EUIPO and the Board of Appeal may take into account all information that makes it possible to assess the various types of elements that a sign may consist of or the components of the sign; however, they are not permitted to go beyond and to add to that shape elements that do not form part of the sign and which are therefore external.
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