On 11 May 2017, the CJEU put an end to the long-standing dispute between Yoshida and Pi-Design and others about the registration as EU trademarks of 2D drawings of Toshida knife handles. The CJEU dismissed the appeal by Yoshida against the General Court’s decision that the EU trademarks were invalid because they consisted exclusively of the shape of goods which is necessary to obtain a technical result (CJEU, Yoshida/EUIPO and Pi-Design and Bodum, C-421/15 P).
Yoshida had inter alia argued that the trademarks were “hybrid signs” comprising visually significant decorative design elements that do not only incorporate a technical solution but also perform a distinguishing function. According to Yoshida, the specific configuration of the array of black dots had a sufficiently significant ornamental character for them to be considered an essential non-functional element of the trademarks.
The CJEU rejected this argument by referring to its famous Lego judgment of 14 September 2010 (C-48/09 P). The fact that a trademark has ornamental aspects does not preclude refusing trademarks on the grounds that they consist exclusively of the shape of goods which is necessary to obtain a technical result, to the extent that those ornamental aspects are not essential elements and (by contrast) all the essential elements of the trademark perform a technical function. Since (all the essential elements of) the Toshida knife handles performed a technical function, they could not be registered as trademarks, even if they also had some non-essential ornamental elements.
Furthermore, the CJEU rightly confirmed its case law that a sign consisting exclusively of the shape of goods which is necessary to obtain a technical result can never be registered as a trademark, even if it has a distinctive character. Accordingly, it does not matter whether the shape of the Toshida knife handles also performs a distinguishing function; since it is entirely functional, it cannot be registered as a trademark.