Yoshida Metal Industry v OHMI - Pi-Design and Others (Représentation d'une surface triangulaire avec des pois noirs) (Judgment) [2015] EUECJ T-331/10 (21 May 2015)

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(Community trade mark — Invalidity proceedings — Community figurative trade marks representing a surface with black dots — Absolute ground for refusal — Sign consisting exclusively of the shape of the goods which is necessary to obtain a technical result — Article 7(1)(e)(ii) of Regulation (EC) No 207/2009)

Yoshida Metal Industry Co. Ltd, established in Tsubame-shi (Japan), represented by S. Verea, K. Muraro and M. Balestriero, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

the other parties to the proceedings before the Board of Appeal, interveners before the General Court, being

ACTION brought against the decision of the First Board of Appeal of OHIM of 20 May 2010 (Cases R 1235/2008-1 and R 1237/2008-1), concerning invalidity proceedings between Pi-design AG, Bodum France and Bodum Logistics A/S, on the one hand, and Yoshida Metal Industry Co. Ltd, on the other,

composed of M. van der Woude (Rapporteur), President, I. Wiszniewska-Białecka and I. Ulloa Rubio, Judges,

having regard to the written procedure and further to the hearing on 29 January 2015,

1 On 3 and 5 November 1999, the applicant, Yoshida Metal Industry Co. Ltd, filed applications for registration of Community trade marks with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade marks for which registration was sought are the signs reproduced below:

3 The goods in respect of which registration was sought are in Classes 8 and 21 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description:

– Class 8: ‘Cutlery, scissors, knives, forks, spoons, whetstones, whetstone holders, knife steels, fish bone tweezers’;

– 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’.

4 By decisions of 14 September and 23 November 2000, the examiner rejected those applications for registration on the ground that the signs at issue were devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation No 207/2009).

5 Following the annulment of 31 October 2001 by the Second Board of Appeal of OHIM of one of the abovementioned rejection decisions, the examiner on 11 July 2002 withdrew the objection concerning the other application for registration. The trade marks at issue were registered on 25 September 2002 and 16 April 2003.

6 On 10 July 2007, the interveners, Pi-design AG, Bodum France and Bodum Logistics A/S, applied for those trade marks to be declared invalid pursuant to Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009), on the ground that they had been registered in breach of Article 7(1)(e)(ii) of that regulation (now Article 7(1)(e)(ii) of Regulation No 207/2009). In their observations of 17 December 2007, the interveners added that the registration should also be declared invalid on the ground that the trade marks lacked distinctive character.

7 By decisions of 15 and 21 July 2008, the Cancellation Division of OHIM rejected, in their entirety, the applications for a declaration of invalidity.

8 On 25 August 2008, the interveners filed a notice of appeal against each of those decisions of the Cancellation Division.

9 By its decisions of 20 May 2010 in Cases R 1235/2008-1 and R 1237/2008-1 (‘the contested decisions’), the First Board of Appeal of OHIM, on the basis of the absolute ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009, upheld the appeals and annulled the decisions of the Cancellation Division.

10 In paragraphs 24 to 28 of the contested decisions, the Board of Appeal observed, first, that, at the time the applications for registration were filed, the signs were simply classified as ‘figurative’, and no description was provided. Following the objections raised by the examiner, the applicant stated that the sign was a two-dimensional representation of the ‘shape of a product’, namely, the handle of a knife (Case R 1235/2008-1), or that it represented the ‘design of knife handles’ (Case R 1237/2008-1). In correspondence subsequent to the application for a declaration of invalidity filed by the interveners, the sign was, however, described by the applicant as ‘an arbitrary geometrical figure’ or a ‘pattern of dots’ (Case R 1235/2008-1).

11 According to the Board of Appeal, that latter description was made with the specific aim of avoiding the application of Article 7(1)(e)(ii) of Regulation No 207/2009, the photographs of the knives marketed by the proprietor confirming that the frame surrounding the black dots represented the contour of a knife handle and that those dots represented dents.

12 The Board of Appeal stated in that context, in paragraph 29 of the contested decisions, that ‘a trade mark must be examined in accordance with the circumstances of the case. Among these circumstances are, of course, the information and the documents voluntarily submitted by the trade mark owner in support of its application’.

13 Next, in paragraphs 30 and 31 of the contested decisions, the Board of Appeal stated that ‘the sign is a figurative mark consisting of the two-dimensional representation of the handle of the products for which registration is sought’. Nevertheless, according to the Board of Appeal, the classification of a mark as figurative did not always rule out the application of Article 7(1)(e)(ii) of Regulation No 207/2009.

14 Last, in paragraphs 33 to 41 of the contested decisions, the Board of Appeal considered whether the black dots representing dents performed a technical function. Based on the information relating to existing patents, it concluded that the dents were necessary to obtain a non-skid effect and that the fact that the same result could be obtained by other shapes did not preclude the applicability of the ground for refusal in question from applying.

15 Having declared the registrations invalid on the basis of Article 7(1)(e)(ii) of Regulation No 207/2009, the Board of Appeal did not consider it necessary to rule on the other ground for invalidity relied on by the interveners, the admissibility of which was disputed by the applicant.

16 By applications lodged at the General Court Registry on 12 August and 15 September 2010, Yoshida brought actions for annulment in respect of each of the contested decisions.

17 In support of those actions, the applicant relied on a single plea in law alleging breach of Article 7(1)(e)(ii) of Regulation No 207/2009. That plea was broken down into three parts, the first alleging that the scope of that provision had been misinterpreted; the second, that the subject-matter of the trade marks at issue had been incorrectly assessed; and the third, that the ground for refusal laid down by that provision had been misapplied.

18 First, the General Court rejected, in paragraphs 22 to 28 of its judgments of 8 May 2012 in Yoshida Metal Industry v OHIM — Pi-Design and Others (Representation of a triangular surface with black dots) (T‑331/10, EU:T:2012:220) and Yoshida Metal Industry v OHIM — Pi-Design and Others (Representation of a surface with black dots) (T‑416/10, EU:T:2012:222) (‘the judgments of 8 May 2012’), the first part of the single plea in law relied on by the applicant, by ruling, in paragraph 27 of the judgments of 8 May 2012, that ‘[r]egard being had to the wording of Article 7(1)(e)(ii) of Regulation No 207/2009 and to the public-policy interest which it pursues, it [had to] be concluded that it applie[d] to any sign, whether two- or three-dimensional, where all the essential characteristics of the sign perform[ed] a technical function’.

19 Next, in paragraph 30 of the judgments of 8 May 2012, the General Court stated the following:

‘[T]he concave character of the black dots is not part of the contested trade mark as filed and registered. There is nothing in the graphic representation of the contested mark to suggest that the black dots in question represent dents rather than a figurative pattern. Likewise, the registration of the contested mark was not accompanied by any description to that effect. Therefore, in concluding that the dots were concave in character, the Board of Appeal did not refer to the sign as filed, but to representations of the goods actually marketed by the applicant.’

20 Last, the General Court, in paragraph 31 of the judgments of 8 May 2012, ruled that, when assessing the characteristics of the signs at issue, ‘only the shape as reproduced in the registration application [could] be the subject-matter of the examination of the trade mark’, to the exclusion of other elements such as representations of the goods actually marketed.

21 In those circumstances, the General Court concluded, in paragraph 35 of the judgments of 8 May 2012, that ‘the Board of Appeal [had] erred in departing from the graphic representation of the contested trade mark when it [had] referred to representations of the goods actually marketed by the applicant in order to conclude that the black dots appearing in that trade mark were concave in character’.

22 Consequently, the General Court upheld the second part of the single plea in law relied on by the applicant and annulled the contested decisions.

23 By applications lodged at the Registry of the Court of Justice on 16 July 2012, the interveners brought appeals by which they asked that Court to set aside the judgments of 8 May 2012, to declare that the Community trade marks at issue were invalid, to refer the cases back to the General Court with the obligation to refer the case back to the Board of Appeal in the case of annulment of the latter’s decisions, and to order the applicant to pay the costs. In support of their appeals, the interveners put forward a single ground of appeal alleging breach of Article 7(1)(e)(ii) of Regulation No 207/2009.

24 By applications lodged at the Registry of the Court of Justice on 16 July 2012, OHIM brought appeals by which it asked the Court to set aside the judgments of 8 May 2012 and to order the applicant to pay the costs. OHIM put forward two grounds of appeal in support of its appeals alleging, first, breach by the General Court of its obligation to state reasons under Articles 36 and 53 of the Statute of the Court of Justice of the European Union and, second, like the interveners, breach of Article 7(1)(e)(ii) of Regulation No 207/2009.

25 By judgment of 6 March 2014 in Pi-Design and Others v Yoshida Metal Industry (C‑337/12 P to C‑340/12 P, EU:C:2014:129) (‘the judgment of the Court of Justice’), the Court of Justice set aside the judgments of 8 May 2012, referred the cases back to the General Court and reserved the costs.

‘54 … [I]t follows from Lego Juris v OHIM that the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration.

55 The possibility afforded in Lego Juris v OHIM to the competent authority when examining a three-dimensional sign can be extended to the examination of any sign constituted by the shape of goods within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94 (see by analogy, as regards Article 7(1)(b) of the regulation, inter alia, Henkel v OHIM, paragraph 38, and Case C‑96/11 P Storck v OHIM [2012] ECR, paragraph 33).

56 It is important to ensure that economic operators cannot improperly appropriate for themselves certain signs which only incorporate a technical solution, registration of which as a trade mark would impede the use of that technical solution by other undertakings (see, to that effect, Lego Juris v OHIM, paragraph 48).

57 It is true, according to the case-law of the Court referred to in paragraphs 31 and 32 of the judgments [of 8 May 2012], first, that the graphic representation of a mark must be self-contained, easily accessible and intelligible, in order that a sign may always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. Second, it is apparent from the case-law of the Court that the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor (see, to that effect, Case C‑273/00 Sieckmann [2002] ECR I‑11737, paragraphs 48 to 52, and Case C‑307/10 Chartered Institute of Patent Attorneys [2012] ECR, paragraph 37).

58 Nevertheless, the requirements which must be satisfied by the graphic representation in order to fulfil its function, which concern a sign’s general aptness to constitute a trade mark within the meaning of Article 4 of Regulation No 40/94, cannot restrict the competent authority’s examination under Article 7(1)(e)(ii) of the regulation in such a way as might undermine the public interest underlying the latter provision.

59 In the second place, as the General Court stated in paragraph 33 of the judgments [of 8 May 2012], the date of filing the application for registration of the Community trade mark is the material date for the examination of the ground for invalidity invoked (see order in Case C‑192/03 P Alcon v OHIM [2004] ECR I‑8993, paragraph 40, and order of 16 May 2011 in Case C‑5/10 P Torresan v OHIM, paragraph 84).

60 None the less, as OHIM has stated in the second part of its second ground of appeal, the Court has held on a number of occasions that material which, although subsequent to the date of filing the application, enables conclusions to be drawn with regard to the situation as it was on that date can, without error of law, be taken into consideration (see orders in Alcon v OHIM, paragraph 41, and Torresan v OHIM, paragraph 84).

61 It follows 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.

62 Further, it should be noted that, by the second part of their single ground of appeal, Pi-Design and Bodum claim that the General Court distorted the evidence in the files submitted to it, inasmuch as the evidence shows that OHIM did in fact take into account the actual use made of the signs at the date of filing of the applications for registration.

63 It is apparent from a reading of the documents in the files submitted to the General Court, in particular, Annexes 2 and 4 to the responses of Pi-Design and Bodum at first instance, that, at the date of filing of the applications for registration, Yoshida was already marketing goods bearing the signs at issue, including in the European Union market.

64 It follows that, contrary to what the General Court held, the taking into account by OHIM of representations of the goods actually marketed by Yoshida did not necessarily entail an analysis based on the use of the signs at issue subsequent to the date of the registrations.

65 In the light of all those considerations, the ground of appeal alleging breach of Article 7(1)(e)(ii) of Regulation No 40/64 must be upheld and the appeals must be allowed.’

27 It was in those circumstances that the Court of Justice set aside the judgments of 8 May 2012 and referred the cases back to the General Court.

28 The present cases have been assigned to the Seventh Chamber of the General Court.

29 Pursuant to Article 119(1) of the Rules of Procedure, the applicant, OHIM and the interveners have each lodged a statement of written observations.

30 Cases T‑331/10 RENV and T‑416/10 RENV were joined for the purposes of the oral procedure and the judgment, by order of the President of the Seventh Chamber of the General Court of 11 December 2014.

– confirm, in their entirety, the decisions of the Cancellation Division of 15 and 21 July 2008;

– confirm the full validity of the registrations of Community trade marks No 1371244 and No 1372580;

33 In support of its actions, the applicant raises a single plea in law alleging breach of Article 7(1)(e)(ii) of Regulation No 207/2009. As is noted in paragraph 17 above, that plea is broken down into three parts, the first alleging that the scope of that provision was misinterpreted; the second, that the subject-matter of the trade marks at issue was incorrectly assessed; and the third, that the ground for refusal laid down by that provision was misapplied.

Applicability of Article 7(1)(e)(ii) of Regulation No 207/2009 to figurative signs

34 It should be noted that Article 4 of Regulation No 207/2009 provides a relatively broad definition of signs which may constitute a Community trade mark and that this definition includes the shape of goods and their packaging. According to this definition, it is not the appearance of a sign which is decisive for its acceptance as a Community trade mark, but rather its ability to distinguish the goods or services of one undertaking from those of other undertakings.

35 It is clear from Article 7(1)(e) of Regulation No 207/2009 that not all shapes can be registered as Community trade marks. Article 7(1)(e)(ii) of that regulation thus provides that ‘[t]he following shall not be registered: … signs which consist exclusively of … the shape of goods which is necessary to obtain a technical result’.

36 However, Article 7(1)(e) of Regulation No 207/2009 does not define the signs which must be considered as shapes within the meaning of that provision. It makes no distinction between three-dimensional shapes, two-dimensional shapes, or two-dimensional representations of three-dimensional shapes. Hence, it must be held that Article 7(1)(e) of Regulation No 207/2009 may therefore apply to two-dimensional shapes.

37 Moreover, it follows from the case-law that the rationale of the ground for refusal in Article 7(1)(e) of Regulation No 207/2009 is to prevent trade mark protection from granting its proprietor a monopoly over technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. Article 7(1)(e) of Regulation No 207/2009 is thus intended to prevent the protection conferred by the trade mark right from being extended beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale goods incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark (see, to that effect, judgment of 18 June 2002 in Philips, C‑299/99, ECR, EU:C:2002:377 paragraph 78).

38 As regards, in particular, signs consisting exclusively of the shape of goods necessary to obtain a technical result, listed in Article 7(1)(e)(ii) of Regulation No 207/2009, that provision seeks to preclude the registration of shapes whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade-mark right would limit the ability of competitors to supply a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product (judgment in Philips, cited in paragraph 37 above, EU:C:2002:377, paragraph 79).

39 Regard being had to the wording of Article 7(1)(e)(ii) of Regulation No 207/2009 and to the public policy interest which it pursues, it must be concluded that it applies to any sign, whether two- or three-dimensional, where all the essential characteristics of the sign perform a technical function.

40 Consequently, the applicant’s arguments challenging the possibility for the Board of Appeal to apply Article 7(1)(e)(ii) of Regulation No 207/2009 to two-dimensional figurative marks must be rejected.

41 The applicant claims that the judgment of the Court of Justice does not refute the assessments made by the General Court in the judgments of 8 May 2012, but requires only that a more complete examination be carried out. It maintains that it sought to register figurative trade marks representing abstract geometrical figures including black dots. In the applicant’s view, as the marks at issue were presented inside a frame looking like the contour of a knife handle simply to show how the black dots were generally affixed to the goods, they were similar to position marks. Such signs cannot therefore constitute a ‘shape’ within the meaning of Article 7(1)(e)(ii) of Regulation No 207/2009. The applicant bases its arguments in particular on its American and European patent applications, and on the three-dimensional Community trade marks it holds, No 1369594 and No 1373430.

42 In that regard, it should be pointed that the Court of Justice made clear in its judgment that a correct application of Article 7(1)(e)(ii) of Regulation No 207/2009 requires that the essential characteristics of a sign for which registration as a trade mark is sought be properly identified by the authority deciding on that application (see the judgment of the Court of Justice, paragraph 46 and the case-law cited).

43 The identification of those essential characteristics must be carried out on a case-by-case basis, there being no hierarchy that applies systematically between the various types of elements of which a sign may consist. In determining the essential characteristics of a sign, the competent authority may either base its assessment directly on the overall impression produced by the sign, or first examine in turn each of the components of the sign concerned (see the judgment of the Court of Justice, paragraph 47 and the case-law cited).

44 In particular, the identification of the essential characteristics of a sign with a view to a possible application of the ground for refusal of registration set out in Article 7(1)(e)(ii) of Regulation No 207/2009 may, depending on the case, and in particular in view of the degree of difficulty of that sign, be carried out by means of a simple visual analysis of the sign or, on the contrary, be based on a detailed examination in which material relevant to the assessment is taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned (see the judgment of the Court of Justice, paragraph 48 and the case-law cited).

45 In the present case, the Board of Appeal took the view, in paragraphs 23 to 30 of the contested decisions, that the marks at issue were figurative marks consisting of the two-dimensional representation of the handle of the products for which registration is sought. In the Board of Appeal’s view, the black dots of the marks at issue represent three-dimensional elements, namely, dents. The dots are black so as to highlight the raised surface. The dark colour becomes black when the pattern is photocopied.

46 It must therefore be examined whether the Board of Appeal correctly assessed the essential characteristics of the signs at issue, in the light of all the relevant factors, in particular the American and European patents held by the applicant, and the representations of the products of the applicant, to the extent that it was already marketing on the EU market goods bearing the signs at issue (judgment of the Court of Justice, paragraphs 58, 60, 61 and 63).

47 That examination involves inter alia ascertaining the nature and essential character of the two elements making up the signs at issue, namely (i) the contour of the trapezium shape, and (ii) the arrays of black dots.

48 In the first place, it must be stated, in the light, in particular, of the representations of the applicant’s products, that the contour of the signs at issue, of trapezium shape, does represent the shape of the handle of some of the utensils marketed by the latter, particularly that of the knives.

49 Contrary to what the applicant claims, the contours of the signs at issue are indeed subject to the protection sought and are an essential characteristic thereof. It cannot be considered that that element, made up of the signs at issue, merely has an illustrative purpose and is aimed at showing how the array of dots will be affixed. In that regard, it must be stated, first, that the handle contours are not dot-printed, which would actually reinforce the applicant’s argument, and, second, that the application for registration contains no precise detail to that effect. The marks at issue cannot therefore be categorised as position marks, contrary to what the applicant claims.

50 In the second place, it is clear from the material in the case file, in particular the representations of the applicant’s products, that the black dots featured on the signs at issue actually represent dents. That finding is confirmed by reading the European and American patents held by the applicant. It should be added, as the interveners correctly observed, that the applicant set out in its submissions the process used to blacken those dents. Those black dots are thus not mere two-dimensional colouring painted onto handles, but dents, blackened, featured on the surface of handles. It is not disputed that those black dots are an important characteristic of the sign.

51 In the third place, the applicant argues in its observations, regard being had to the fact that it had previously obtained the registration of the three-dimensional Community trade marks No 1369594 and No 1373430, that, first, its mark was necessarily a two-dimensional mark, and, second, it had no interest in registering the same shapes once again.

52 In that regard, it is sufficient to find that the Board of Appeal did take the view that the marks at issue were two-dimensional figurative marks. However, the protection conferred by a two-dimensional trade mark representing a three-dimensional shape, which is not dependent, in any event, on the intention of the proprietor of the mark in question, is different to the protection conferred by three-dimensional trade marks such as trade marks No 1369594 and No 1373430. Two-dimensional trade marks such as the marks at issue may, for example, be used as logos. The applicant therefore retained, on any basis, an interest in obtaining the registration of the marks at issue.

53 It follows that the Board of Appeal was entitled to take the view that the marks at issue were two-dimensional figurative marks representing three-dimensional shapes, namely, the handles of some of the knives or utensils marketed by the applicant, and, consequently, to consider, in the light of all the relevant elements, that the black dots affixed to those handles corresponded to dents. The Board of Appeal therefore did not err in any way in taking the view that the marks at issue were made up of shapes of goods, within the meaning of Article 7(1)(e)(ii) of Regulation No 207/2009.

54 In the first place, the applicant submits that its Community trade mark applications were filed at the same time as its American and European patent applications, which indicates that it did not intend, by registering the marks at issue, to extend the monopoly of its patents. It was seeking protection for a different aspect for its goods through a different type of intellectual property right.

55 In the second place, the applicant submits that, in so far as the marks at issue are figurative marks representing abstract and decorative geometric figures, they have no practical purpose. The European and American patents show that the primary object of the patented invention is to provide a knife with excellent durability, ease of use and overall weight balance. The non-skid structure is not a technical innovation. In the applicant’s view, the feature of a non-skid structure of a handle is part of the general state of art and not subject to a monopoly. The applicant also submits that the non-skid structure is merely a secondary characteristic of the knife which contributes to the product’s ease of use.

56 In the third place, the applicant submits that the handle’s non-skid function is primarily provided by the contours of the handle. It provides, in that respect, a significant number of examples of kitchen knives which, in its view, show that dents are not necessary for a knife to provide a non-skid function. The applicant submits that, for Article 7(1)(e)(ii) of Regulation No 207/2009 to apply in this case, it would require that every knife be provided with a non-skid system and that that system be necessary to obtain the desired result, which is not the case.

57 According to paragraphs 36 to 41 of the contested decisions, the Board of Appeal regarded the dents as necessary to obtain a technical result, namely preventing the hand holding the knife from slipping accidentally. It considered that the interveners’ argument that the dots represented an array of dents necessary to obtain a technical result was convincing. It also considered that the non-skid structure of that array of dents was supported by the various invention patents held by the applicant.

58 In the first place, it should be pointed out that there is no doubt from the various patents held by the applicant that those dents do seek to incorporate a technical solution, namely, a non-skid structure. Furthermore, the applicant does not dispute the fact that such arrays of dents may have a non-skid function.

59 In that regard, first, it should be also noted that the fact that that non-skid structure is not patentable or that it is a secondary characteristic of the product patented, as the applicant argues, is of no significance for the present dispute. The fact that the dents in question are not essential to the patented invention does not mean that the black dots which represent them are not an essential characteristic of the signs at issue, or that they do not serve a technical objective. It must moreover be noted that Article 7(1)(e)(ii) of Regulation No 207/2009 is aimed at protecting the shape of goods which is necessary to obtain a technical result, and not only the innovative technical results that may be patented. In this case, those patents are relevant in that they are among the elements which allow the authority in question to examine the nature of the marks at issue, as the interveners correctly observe.

60 Second, it should be noted that equally of no significance is the fact that the patent applications and the applications for registration of the marks at issue were filed simultaneously, rather than successively, in so far as, in any event, in the system of intellectual property rights developed in the European Union, innovative technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators, whereas trade mark law confers protection without limit of time. Irrespective of the dates of the patent and trade mark registration applications, trade mark law is always capable of conferring on an undertaking a monopoly on technical solutions or functional characteristics of a product. The fact that the applicant filed its patent and trade mark registration applications at the same time therefore has no bearing on the resolution of the dispute (see, to that effect, judgment of 14 September 2010 in Lego Juris v OHIM, C‑48/09 P, ECR, EU:C:2010:516, paragraphs 43 to 46).

61 In the second place, with regard to the applicant’s argument that the shape of the handle is capable of contributing — as much as or more than the array of dents — towards obtaining a non-skid effect, it is sufficient to state that, on any basis, that argument cannot alter the fact that the array of dents, like the shape of the handle, is aimed at obtaining a technical result. The applicant’s argument in that regard also confirms the functional character of the shape of the handle itself. Additionally, it should be recalled in that respect that the handle shapes registered by the applicant have no clear non-skid characteristic. Moreover, it is clear from the American patent held by the applicant that the non-skid nature of its knives is due to the combination of the shape of the knives and the array of dents, a hierarchy between the two not being mentioned.

62 In the third place, as regards the applicant’s argument that dents are not necessary to obtain a non-skid character, it should be pointed out that the Court of Justice has already held that the existence of other shapes which could achieve the same technical result is not, for the purposes of the application of Article 7(1)(e)(ii) of Regulation No 207/2009, such as to exclude the ground for refusal of registration. In examining the functionality of a sign consisting of the shape of goods, once the essential characteristics of the sign have been identified, it is necessary only to assess whether those characteristics perform the technical function of the product concerned. Clearly, that examination must be carried out by analysing the sign filed with a view to its registration as a trade mark, and not signs consisting of other shapes of goods (see, to that effect, judgment in Lego Juris v OHIM, cited in paragraph 60 above, EU:C:2010:516, paragraphs 83 and 84). In those circumstances, the fact that other knives fulfil a non-skid function by other means or that those dents are not necessarily incorporated into all kitchen knives is of no relevance.

63 In the fourth place, it should be noted that the applicant claims that the signs at issue, in particular the array of dots, do not have a clear functional character and are, in actuality, characterised by their ornamental and fanciful nature. In addition, the marks at issue would not unfairly limit third parties’ use of other patterns, such as circular or triangular protrusions, performing a non-skid function.

64 In that regard, it should be held that the shape of the handles is ordinary and may be regarded as the most likely shape for such goods. The applicant does not moreover suggest any fanciful character as regards the shape of the handles. Additionally, while it is impossible to rule out any ornamental character as regards the configuration of the array of black dots, that configuration, as well as the shape of the black dots themselves, shows no significant characteristic and covers practically all of the handles represented. Similarly, the black colour of the dots, with its uniform and monochromatic nature, without being completely devoid of ornamental character, cannot make those dots a major non-functional element of the signs at issue.

65 In those circumstances, 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. In that regard, it should be observed that the case-law states that, under Article 9(1) of Regulation No 207/2009, registration as a trade mark of a purely functional product shape is likely to allow the proprietor of that trade mark to prevent other undertakings not only from using the same shape, but also from using similar shapes. A significant number of alternative shapes might therefore become unusable for the proprietor’s competitors. That would be particularly so if various purely functional shapes of goods were registered at the same time, which might completely prevent other undertakings from manufacturing and marketing certain goods having a particular technical function (see, to that effect, judgment in Lego Juris v OHIM, cited in paragraph 60 above, EU:C:2010:516, paragraphs 56 and 57).

66 Having regard to the findings in paragraphs 59 to 65 above, the Board of Appeal committed no error in concluding, in paragraph 42 of the contested decisions, that the registrations of the marks at issue had to be declared invalid, pursuant to Article 7(1)(e)(ii), in so far as the essential characteristics of the signs at issue consisted exclusively of the shape of goods necessary to obtain a technical result.

67 Accordingly, the single plea alleging breach of Article 7(1)(e)(ii) of Regulation No 207/2009 must be rejected.

68 It follows from the foregoing that the actions must be dismissed in their entirety.

69 In its judgment, the Court of Justice reserved the costs. It is therefore for this Court to rule in this judgment on all the costs relating to the various proceedings, in accordance with Article 121 of the Rules of Procedure.

70 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by OHIM and by the interveners, relating to the proceedings before the General Court and before the Court of Justice.

2. Orders Yoshida Metal Industry Co. Ltd to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Pi-Design AG, Bodum France and Bodum Logistics A/S before the General Court and before the Court of Justice.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Yoshida Metal Industry v OHMI - Pi-Design and Others (Représentation d'une surface triangulaire avec des pois noirs) (Judgment) [2015] EUECJ T-331/10 (21 May 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T33110.html Cite as: ECLI:EU:T:2015:302, [2015] EUECJ T-331/10, EU:T:2015:302

Court of Justice of the European Communities (including Court of First Instance Decisions)