EU: No trademark protection for technical Elements (ECJ – Yoshida Metal Ind.)

Marks are usually characters or images, but they can also be characterized by a three-dimensional shape, e.g. the form of a product. However, in order to ensure that product shapes with a purely technical effect cannot be monopolized by means of a 3D mark, such forms of goods are excluded from protection. Even brands, which at first sight appear like a two-dimensional pattern, cannot be protected if there is a technical function behind it.

In 1999, Yoshida Metal Industry Co. Ltd filed the trademarks

for household and kitchen utensils such as knives, forks and spoons, and other such articles. The examiner of the EU Trademark Office rejected the applications based on Article 7 (1) B of the EU Community Trademark Regulation because they would not show any distinctive character. After the Board of Appeal had revoked the refusal, the marks were registered in 2002.


In 2007, Pi-Design and Bodum France applied for the cancellation of the marks because they would consist exclusively of the shape of the goods required to achieve a technical effect (i.e. infringement of Article 7 (1) (e) ii). The invalidity division of the EU Trademark Office (EU-IPO) dismissed the attacks, but the Appeal Board of the EU-IPO decided that the applications were invalid. The reasoning of the decision, among other things, was as follows


The contested marks have been categorized as image marks when they were registered and Yoshida claimed in the present appeal that it was a "random geometric figure" or a "pattern of points". However, Yoshida had already stated in the reply of an examination certificate in the examination procedure that the mark is the "form of the product" namely a knife handle. Moreover, the photographs of the products of Yoshida, which were submitted to the Board of Appeal, confirm that the mark represents the outline of a knife handle with punctiform recesses. The Board of Appeal therefore concluded that the contested sign is “a design mark consisting of a two-dimensional representation of the handle of the claimed goods. Under such circumstances, the prohibition of registration under Article 7 (1) e (ii) also is applicable to the present image mark.


Furthermore, the Board of Appeal argues that, in view of the information obtained from existing patents, the recesses are necessary for the effect of anti-skidding. The fact that it is possible to achieve the same technical result with other forms does not mean that Article 7 (1) (e) (ii) is not applicable. Thus, the Board of Appeal upheld the invalidity of the marks.


In 2010, Yoshida appealed to the European Court of First Instance for annulment of the EUIPO decision. First, Article 7 (1) (e) (ii) was interpreted incorrectly with regard to the scope of the infringement, secondly, the subject-matter of the marks had been misjudged and, thirdly, the prohibition of registration had been misapplied. The Court of First Instance ruled in 2012 that the complaint relating to the second item (wrong assessment of the subject matter of the trade mark) was fairly reasoned and that the decision of the EUIPO be repealed.


Pi-Design appealed to the ECJ. The Court overturned the verdict of the Court of First Instance and remanded the case back for a different decision. Subsequently, the Court of First Instance rejected Yoshida's claim in its entirety. The renewed appeal of Yoshida to the ECJ remained unsuccessful.


The prohibition of registration according to Article 7 (1) (e) (ii) is limited to signs "consisting exclusively of the form of the goods required for the obtaining of a technical effect". This wording of the law takes duely into account, that any form of a product is functional to a certain extent, and that it would therefore be inappropriate to exclude a trade mark from registration as a trade mark only because it has characteristics of its use. In the words 'exclusive' and 'necessary', this provision ensures that only such forms of goods are unregistrable which are merely a technical solution. To enter such brands would hinder the use of this technical solution by competitors.


The prohibition of the protection of signs which consist "exclusively" of the form of the goods required to achieve a technical effect is also applicable where one or more minor arbitrary elements are present. The decisive factor for the protection exclusion is that all the essential characteristics of the brand are determined by the technical solution. If, on the other hand, the form of the product has in addition an important non-functional element, such as a decorative or imaginative element, which is relevant to this form, Article 7 (1) (e) (ii) is not applicable.


The fact that Article 7 (1) (e) (ii) states that the form of the goods is "required" to achieve the desired technical effect does not mean that the form in question must be the only one which allows this effect to be achieved.


As a result, the Yoshida brand has definitely been void.Note: The possibility of protecting the shape of a product as a brand is thus clearly limited to such forms, which, in addition to the technical features, also have further essential features which are purely decorative or imaginative.