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2D or not 2D, that is the question

 The Yoshida knife handles cases (Yoshida Metal Industry Co. v. Pi-Design, Bodum France and Bodum Logistics) continue their long and winding road.

The cases must be an absolute godsend for the lawyers involved.  Started in 1999, the disputes have gone from OHIM’s Examination Division to the Board of Appeal, at which point the marks in question (two representations of knife handles, see CTM 1371244 and CTM 1372580) were granted.  Subsequently, invalidity actions were filed (under Article 7(1)(e)(ii) CTMR).  These were rejected by OHIM’s Invalidity Division. However, these decisions were overturned by the Board of Appeal on the basis that

•     The marks were two-dimensional representations of the handles of knives;

•     Two-dimensional (figurative) marks, as well as three-dimensional marks, could be rejected where all the essential characteristics of the mark perform a technical function; and

•     The black dots shown in both marks represented dents, the purpose of which were to prevent the knives accidentally slipping when being held by users.  Yoshida’s ownership of patents claiming such dents on knife handles were said to confirm this analysis.

Not to be deterred, Yoshida applied to the General Court (T-331/10 and T-416/10) which annulled the Board of Appeal’s decisions and (re) allowed the CTM registrations.

Further appeals were lodged to the (European) Court of Justice (CJEU; C-338/12P and C-340/12P) requesting that the CJEU set aside the decisions of the General Court and refer the cases back to the General Court.  This the CJEU duly did in decisions dated 6 March 2014.

So, once again, the parties found themselves before the General Court (T-331/10 RENV and T-416/10 RENV) discussing whether the essential characteristics of the two marks consisted exclusively of the shape of the goods necessary to obtain a technical result which would be contrary to Article 7(1)(e)(ii).

The General Court found in favour of Pi-Design and Bodum, commenting that the prohibition on such shapes was NOT limited to three-dimensional marks and that, accordingly, Yoshida’s two-dimensional representations of knife handles were also subject to the provisions of Community trade mark law.   Yoshida tried to argue that their trade marks (as applied for) were somehow not representations of its knife handles, but rather were “abstract geometrical figures including black dots”, and thus did not constitute “shapes”.  Unsurprisingly, this argument was given short shrift by the General Court, who stated categorically that “…the contour of the signs at issue…does represent the shape of the handle of some of the utensils marketed by the latter (Yoshida), particularly that of the knives”.

Yoshida went on to argue that the dots in the representations of its marks were abstract and decorative, and had no practical purpose.  This appears to have been a further attempt to take its trade marks away from the “function” test, and thus rendering the trade marks registrable.  Again, this argument failed.   They then suggested that the “non-skid” function of the knife handles were provided by the shapes of the handles and not by the dents in the handles of the knives.  This argument had already been brought before the Board of Appeal, which had already dismissed it, preferring the argument of Pi-Design and Bodum that the dots represented a non-slip function, and that they were therefore necessary to obtain a technical result. 

The General Court considered that even if the shapes of the handles were taken into account when considering the non-slip function of the handles, it could not be denied that the array of dents present on each knife handle were aimed at obtaining a technical result, and that, as the arrays are an essential characteristic of the signs, the only assessment necessary was to determine whether the arrays performed a technical function of the products. 

The General Court found no difficulty in dismissing the argument that the dots were purely decorative, and found that they did have a technical function, and thus the two CTM registrations were invalid under Article 7(1)(e)(ii). 


The outcome of these cases is not, in this writer’s view, particularly surprising.   It is, however, worth considering what Yoshida might have been able to do if their CTM registrations had been found to be valid.  Bearing in mind the huge amount of evidence which was filed in these cases relating to the technical function (or otherwise) of the dots represented in the marks as filed, one wonders whether the scope of protection granted by the registrations would have been particularly useful.  Let us say, for example, that a competitor of Yoshida commenced the manufacture and sale of knives with indentations or raised dots on the handle and Yoshida brought infringement proceedings.   Would Yoshida be successful, or would the alleged infringer simply be able to state that their use was not trade mark use, but rather merely functional?  It is submitted that Yoshida might have struggled to succeed in any such infringement action.

Another interesting point brought up by these cases is the approval of case law from the Lego v Mega Brands case (C-48/09P), in which it was found 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”.  Here, therefore, the decision of OHIM not to take into account use subsequent to a mark’s registration was criticised by the General Court. 

This line of case law seems flawed. As practitioners, we need to be able to rely on the state of the trade mark register when advising a client about the scope of protection of a particular trade mark, without having to consider subsequent use which has not been relied on to claim acquired distinctiveness.  This case law appears to fly against all rulings of the Court which require “certainty” and “clarity” in a trade mark application, and would require practitioners to carry out far more investigations into the “essential characteristics” of a trade mark when carrying out pre-filing clearance searches, or considering infringement.

We await the (almost inevitable) further appeals in the continuing saga of Yoshida and its knife handles. The sale of Yoshida’s Global branded knives (which feature such non-slip indentations) must be seriously impressive in order to justify the costs of these extraordinary cases.