The General Court has declared that the two figurative Community Trade Marks below representing knife handles were invalid.  The Court held that the marks were registered contrary to Article 7(1)(e)(ii) (i.e. that the shape of the goods were necessary to obtain a technical result and thus should not be registered), after the case was sent back from the CJEU.

Click here to view image.

The CTMs were registered in 2002 in Class 8 (cutlery etc) and 21 (household or kitchen utensils etc).  However, a declaration for invalidity was filed in 2007 on the grounds that the marks were registered contrary to Article 7(1)(e)(ii) and that the marks lacked distinctive character.  Subsequently, the case was heard by the Cancellation Division, First Board of Appeal, General Court and the CJEU, before finally returning to the General Court.

Originally the Board of Appeal's decision that the marks were invalid was annulled by the General Court, who held that only the shape as reproduced in the application could be the subject matter of the examination of the trade mark, to the exclusion of other elements such as representation of the goods actually marked. However, the case made its way back to the General Court after the CJEU overturned its decision.  In arguing that the marks were valid, the owner of the trade marks, Yoshida Metal Industry Co Ltd, said that:

  1. The scope of that provision was misinterpreted;
  2. The subject matter of the trade marks at issue was incorrectly assessed; and
  3. The ground for refusal laid down by that provision was misapplied.

However, the General Court agreed with the Board of Appeal.  In its ruling, it held that Article 7(1)(e) makes no distinction between 3D shapes, 2D shapes or 2D representations of 3D shapes.  Hence, Article 7(1)(e) may apply to 2D shapes.  Moreover, the purpose of this ground for refusal is to prevent trade mark owners gaining a monopoly over technical solutions or functional characteristics of a product.  Thus, it had to be concluded that this provision applies to any sign, whether 2D or 3D, where all the essential characteristics of the sign perform a technical function.

Yoshida argued that the representation of the mark was not a 'shape' within the meaning of Article 7(1)(e)(ii), and that the marks were merely figurative marks representing abstract and decorative geometric figures, so had no practical purpose.  However, the General Court held that it was clear from the material in the case file, in particular, the European and American patents held by Yoshida, that these were meant to represent 3D elements, namely, dents.  Furthermore, the dents were designed to incorporate a technical solution, namely, a non-skid structure.  The fact that the non-skid structure is not patentable, or that it was a secondary characteristic of the product patented was of no significance – it still fell within Article 7(1)(e)(ii).  Also, it was of no relevance that other knives fulfil a non-skid function by other means or that those dents are not incorporated into all kitchen knives.