May 28, 2015

Cut up - Yoshida's Trade Mark Appeal Dismissed

The Court of Justice of the European Union ("CJEU") remitted to the General Court a joined case concerning the invalidity of Community Trade Mark ("CTM") registration in the name of Yoshida Metal Industry Co. Limited with the General Court rejecting Yoshida's registrations.


Yoshida Metal Industry Co. Ltd, owned registrations for CTM's for figurative marks consisting of representations resembling knife handles.

The registrations covered class 8 "Cutlery, scissors, knives, forks, spoons, whetstones, whetstone holders, knife steels, fish bone tweezers" and Class 21 "Household or kitchen utensils and containers (not of precious metal or coated therewith), turners, spatulas for kitchen use, knife blocks for holding knives, tart scoops, pie scoops".

Although Yoshida's marks attracted objections during the examination stage, Yoshida successfully argued around the objections and obtained registrations.

Pi-design AG, Bodum France and Bodum Logistics A/S ("Applicant's") subsequently applied for the marks to be declared invalid on the grounds that they had been registered in breach of Article 7(1)(e)(ii) of Regulation No 40/1994  (replaced by Regulation No 207/2009).  This Article is aimed at prohibiting the registration as trade marks of designs which consist exclusively of the shape of goods which is necessary to obtain a technical result.  The reason for this is to ensure that technical solutions and functional characteristics are free for use on part of the trade mark proprietor's competitors. Moreover, the mark still must be a commercial badge of origin.

The Applicants argued that Yoshida's marks were representations of knives which included concave dots to prevent slipping and that Yoshida's US patents confirmed this.

In the appeal to the General Court, the General Court ruled on a single plea raised by Yoshida which it divided this plea into three parts 1. that the scope of the provision had been misinterpreted, 2. that the subject matter of the trade marks was incorrectly assessed and 3. that the grounds for refusal had been misapplied. The General Court concluded as follows:

  1. That the scope of that provision was misinterpreted.  The court held that Article 7(1)(e)(ii) applies not only to three-dimensional marks but also to two-dimensional marks representing the shape of a product, when all its features serve a technical function.

  2. That the subject-matter of the trade marks at issue was incorrectly assessed. The shape of the handles is ordinary and may be regarded as the most likely shape for such goods. The General Court held that the pattern of black dots was not a negligible element of the mark and represented the handle of the knives or other cutlery. The General Court recognised that black dots featured on the marks were knife indentations and nothing else.

  3. That the ground for refusal laid down by that provision was misapplied. The General Court considered the relationship between Yoshida's patents, design rights and trade marks including IP rights holders' strategies for extending or replacing the protection given by one with another.  The General Court held that the indentations included in the marks were there to obtain the technical result of providing the knives with a non-skid structure. Although the dots could not be patented as a non-skid structure, they were relevant in assessing the marks.

The marks did not have any ornamental character and the registration of the marks would reduce the possibility of competitors using the same non-skid technical solution.

In summation, Yoshida's marks were found capable of preventing other competing businesses from using similar or identical shapes which were considered to be a purely functional shape for a technical result.  Yoshida were ordered to pay their own costs as well as those incurred by OHIM and the applicant's for invalidity.


in: Case Law, Designs, News, Patents, Trade Marks

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