The matter at hand

Pirelli filed an application for registration of a Community figurative trade mark in Class 12. On 27 September 2012 Yokohama filed, before the EUIPO, an application for a declaration of invalidity of the mark at issue for the goods ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’, arguing that the mark consists exclusively of the shape which is necessary to obtain a technical result (in the sense of Article 7(1)(e)(ii) Trade Mark Regulation 40/94Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark).

In both instances, the EUIPO declared the mark at issue invalid for those goods on this ground of invalidity. Pirelli subsequently filed an appeal before the General Court. General Court upheld the appeal and and annulled the decision in so far as it had declared the registration of the mark at issue invalid in respect of ‘Tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’.  In reaching this conclusion, it had inter alia found that the mark at issue ‘represents a single groove of a tyre tread’ and ‘is not made up exclusively of the shape of the goods in question or of a shape which, on its own, represents, quantitatively and qualitatively, a significant part of those goods’.   

Both Yokohama and the EUIPO filed an appeal before the ECJ, in which they sought to have set aside the judgment of the General Court. The two cases are joined and the grounds of appeal of Yokohama and the EUIPO are examined together.

The judgment of the ECJ

Yokohama claimed that the General Court erred in law in finding that the EUIPO had unlawfully added to the shape of the mark at issue elements which did not form part of it and which were therefore external or foreign to it. The ECJ notes, with reference to Lego Juris v OHIM (C-48/09 P) and Pi-Design and Others v Yoshida Metal Industry (C‑337/12 P to C‑340/12 P), that the correct application of Article 7(1)(e)(ii) of the Community Trade Mark Regulation requires that “the authority deciding on the application for registration of a trade mark must, first, identify the essential characteristics of the sign at issue and, second, ascertain whether those characteristics all perform the technical function of the product to which that trade mark refers” (paragraph 60).

In assessing the mark, the General had court noted that the sign of the mark at issue is only a very limited part (a single groove) of another part (a tyre tread) and that such a tyre tread, in turn, is only part of the goods covered by the mark at issue. On this basis, the General Court had held that the mark at issue does not represent the goods covered by it or a tyre tread. When determining the essential characteristics of a sign such as the mark at issue, the Board of Appeal may conduct a thorough examination, taking into account, inter alia, material enabling an assessment of what that mark actually represents. In this regard, the General Court had added that the EUIPO could not be criticised for having considered the nature of the mark at issue in the context of the goods covered by it (paragraph 64). The ECJ considers that it is without erring in law that the General Court held that the Board of Appeal of EUIPO had unlawfully added to the shape of the mark at issue elements which did not form part of it (paragraph 66).

Appellants further submitted that the General Court had misinterpreted 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 by stating that, in order for a sign to be covered by this ground for refusal of registration, the part of a product represented by that sign must be, quantitatively and qualitatively, a significant part of that product. In that regard the General Court had stated that the scope of the absolute ground for refusal of registration provided for in that provision may extend, in view of the public interest underlying that provision, to the registration of signs consisting of the shape of part of a product that is necessary to obtain a technical result, that being the case, in particular, where that shape represents, quantitatively and qualitatively, a significant part of that product (paragraph 68). On this basis, the General Court had concluded that the mark at issue does not consist exclusively of the shape of the goods in question or of a shape which in itself quantitatively and qualitatively represents a significant part of those goods. Furthermore, the evidence submitted by Yokohama before the EUIPO did not show that a single groove, identical to the shape of the contested mark, could produce the technical result accepted in the contested decision. The ECJ considers that this is a factual finding of the General Court which cannot be challenged in an appeal. It follows from the foregoing that, in any event, such a misinterpretation cannot lead to the setting aside of the judgment under appeal.

Yokohama and EUIPO also challenge the General Court’s finding that “the registration of the mark at issue, the protection of which is limited to the shape which it represents, is not liable to prevent Pirelli’s competitors from making and marketing tyres which incorporate an identical or similar shape when such a shape is combined with other elements of a tyre tread and creates, in conjunction with those other elements, a shape that is different from each of the elements taken individually, especially since that shape, as such, does not necessarily feature on a tyre tread in a manner that enables the mark at issue to be identified” (paragraph 77). The ECJ however comes to the conclusion that this finding does not constitute an error of law. As the shape in question is ultimately different from the mark at issue, Pirelli cannot rely on that mark to prevent the marketing of tyres with that different shape. In addition, the statement in the judgment under appeal that the shape represented by the contested mark does not necessarily appear on the tread of a tyre in a manner enabling that mark to be identified constitutes an assessment of fact by the General Court. It cannot be called into question on appeal, except in the event of distortion, which is in no way argued by Yokohama or the EUIPO. Accordingly, this ground of appeal was also rejected, resulting in the appeals being dismissed in their entirety.