The matter at hand

Yoshida is the proprietor of figurative EU trade marks representing the handle of a knife with a pattern of black dots on it for inter alia cutlery and kitchen utensils (in classes 8 and 21).

Pi-Design (and others) filed applications for a declaration of invalidity in respect of these marks on the ground that the marks consisted exclusively of the shape of goods which is necessary to obtain a technical result ex Article 7(1)(e)(ii) of Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark and on the ground that the marks lacked distinctive character.

After the Cancellation Division of EUIPO had initially rejected the applications, the First Board of Appeal took the view that the marks represented the outline of a knife handle and that the black dots represented dents, necessary to obtain a technical result, namely to prevent the hand holding the handle from accidentally slipping.

In the appeal, the General Court annulled the decision of the Board of Appeal, taking the view that it should not have taken the concave character of the black dots into account, considering that there was nothing in the graphic representation of the contested mark to suggest that the black dots in question represented dents rather than a figurative pattern. Therefore, according to the General Court, the Board of Appeal had erred in departing from the graphic representation of the contested trade mark when it referred to representations of the goods actually marketed in order to conclude that the black dots appearing in that trade mark were concave in character.

By its judgments of 6 March 2014 (C-337/12 P to C-340/12 P), the ECJ set aside the judgments of the General Court and referred the cases back to the General Court, considering that “in holding that the provisions at issue preclude consideration of the actual use made of the trade mark following its registration, the General Court erred in law”.

This lead the General Court to taking the view that the marks did consist exclusively of the shape of goods which is necessary to obtain a technical result, considering that “the signs at issue not having any clear ornamental character, their registration would improperly reduce the possibilities for competitors to bring to the market alternative product shapes incorporating the same non-skid technical solution.”

Yoshida appealed this decision before the ECJ, alleging that the General Court contravened Article 7(1)(e)(ii) of Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark in: (i) not reaching the conclusion that 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 signs at issue, (ii) in holding that for it to be possible to register the signs at issue, the array of black dots had to have a ‘clear ornamental character’, and (iii) in holding that the registration of the signs at issue ‘would improperly reduce the possibilities for competitors to bring to the market alternative product shapes incorporating the same non-skid technical solution’.

In the alternative, Yoshida alleged that the General Court contravened Article 51(3) of Regulation No 40/94 in that it failed to examine whether the conditions for the application of Article 7(1)(e)(ii) of that regulation had been fulfilled in relation to each of the goods for which the signs at issue had been registered.

The judgment of the ECJ

The ECJ rejects Yoshida’s first argument, considering that this merely seeks to call into question the factual findings made by the General Court, which are not subject to the ECJ’s review, and is not supported “with elements from the file that are capable of clearly establishing that the General Court distorted the facts and evidence in not reaching the conclusion that 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 signs at issue” (paragraphs 22 and 24).

As to Yoshida’s argument that the General Court was wrong in finding that the array of black dots had to have a ‘clear ornamental character’, the ECJ holds, with reference to Lego Juris (C‑48/09 P), that “the presence of one or more minor arbitrary elements in a sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result.” The ECJ further notes that the ground for refusal under Article 7(1)(e)(ii) “is applicable only where all the essential characteristics of the sign are functional, with the result that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape” (paragraph 27). Therefore, “the fact that the sign concerned has ornamental and fanciful aspects does not preclude the ground for refusal under Article 7(1)(e)(ii) of [Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark] from applying, in so far as those aspects do not play an important role in the shape of goods at issue, all the essential characteristics of which must perform a technical function.”

Accordingly, the General Court’s assessment — “essentially intended to ascertain whether the specific configuration of the array of block dots constituted a major non-functional element of the signs at issue” — correctly reflects the principles of Lego Juris (C‑48/09 P).

The ECJ also rejects Yoshida’ plea that the distinctiveness of the signs at issue precludes the application of Article 7(1)(e)(ii) of Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, considering that “even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, it is prohibited from being registered as a trade mark (…) (paragraph 34).

As to the second ground of appeal, raised in the alternative, the ECJ holds that Yoshida did not, at any stage of the proceedings before the General Court, raise this argument. Considering that it is steady case-law that the jurisdiction of the ECJ is confined to a review of the assessment of the General Court of the pleas and arguments debated before it, the second ground of appeal is dismissed as well.