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July 15, 2012 Vol. 67 No. 13 Back to Bulletin Main Page

EUROPEAN UNION: Two-Dimensional Shape Marks Revoked as Being Necessary to Obtain a Technical Result

In a recent case, the General Court of the European Union (GC) was asked to consider whether a two-dimensional shape fell within the meaning of Article 7(1)(e)(ii) of the Community Trade Mark Regulation (Council Regulation (EC) No. 207/2009) (CTMR). Yoshida Metal Industry Co. Ltd v. OHIM, Pi-Design AG, Bodum France & Bodum Logistics A/S, Cases T-416/10 and T-331/10 (GC May 8, 2012).

Applicant Yoshida Metal Industry Co. had registered a figurative Community trade mark (CTM) representing a rectangular surface covered with black dots.

Interveners Pi-Design AG, Bodum France and Bodum Logistics A/S sought to invalidate the registration. They claimed that the dots represented the recessed dents on a knife handle, which prevent it from slipping, and thus the mark consisted of a shape necessary to obtain a technical result. The interveners indentified two patents held by the applicant as evidence for supporting their argument.

The OHIM Cancellation Division rejected the application for invalidation, and the interveners appealed. The First Board of Appeal upheld the appeal and annulled the Cancellation Division’s decision.

The case was then brought before the GC on a single plea in law. Yoshida argued that as the mark at issue was a two-dimensional figurative shape, it did not fall within the meaning of Article 7(1)(e)(ii) of the CTMR, which was reserved for three-dimensional shapes only. Yoshida further claimed that examination was to be conducted only on the mark as filed and not on any further analytical basis. Its view was that the mark did not indicate a knife handle with a gripping feature and thus did not perform a technical function.

OHIM countered that its analysis “must envisage all possible conditions of use and that the existence of one specific method of use of the sign is enough for that sign to be refused or declared invalid.” Alongside the interveners to this case, OHIM claimed that the mark was a two-dimensional representation of what was ultimately a three-dimensional pattern. Last, OHIM argued that the black dots were indeed dents, which performed a non-slip function, as evidenced by the two patents held.

The GC held that, within the meaning of Article 7(1)(e), there was no distinction between three-dimensional shapes, two-dimensional shapes, and two-dimensional representations of three-dimensional shapes. Therefore, the provision could apply to two-dimensional shapes.

However, the GC further held that the Board of Appeal erred in law by referring to goods actually marketed by the applicant and not the mark as filed, meaning that it was irrelevant to determine whether the mark sought to protect a three-dimensional shape. Therefore, it annulled the Board’s decision.

The Court’s ruling means that applicants can fall afoul of Article 7(1)(e) even with a two-dimensional shape, although the analysis must be based on the mark as it is filed.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association