A tacit assumption about shape marks has generally been that shapes are 3-D. In Europe at least, that premise has now been swept away, however, by a ruling of the General Court on a 2-D figurative mark consisting of knife handle representations (Yoshida Metal Industry Co. Ltd. v OHIM, Case T-416/10). The Court's finding that shape marks can be two-dimensional as well as three-dimensional signals a potential sea change in examination practice, with knock-on effects on how brand owners seek to protect non-traditional marks.
On the Knife-Edge
The facts of the case were simple. Yoshida, a Japanese stainless steel knife manufacturer, applied to register the below image of a knife handle with a pattern of black dots as a CTM (no.1372580), covering inter alia "cutlery".
The mark was described as a two-dimensional figurative mark. Although it was initially rejected for non-distinctiveness, the objection was overturned on appeal and the mark was registered in 2002.
Yoshida did not long enjoy the fruits of its success, however. Five years after registration was granted, three European competitors applied to invalidate Yoshida's registration on the ground that the mark, despite being two-dimensional, nonetheless consisted exclusively of the shape of goods necessary to achieve a technical result, in contravention of Article 7 (1) (e) CTMR.
The action failed at first instance but succeeded on appeal. What turned the tide against Yoshida appears to have been evidence that in the knives that it actually manufactured, small dents in the handles corresponding to the black dots appearing in the registered mark were intended to serve the technical function of preventing the knives from slipping in the hands of users.
Yoshida mounted a further appeal to the General Court, arguing that the Board had been wrong to regard its two-dimensional mark as a shape and to take account of extraneous matter when assessing the nature of the mark.
For the Chop
On appeal, the General Court noted that European law required trademarks to be graphically represented in a manner that was, inter alia, clear, precise and self-contained. Consequently, an examining authority could not look beyond the information provided in an application form to determine the nature of a mark.
In this case, the Board of Appeal had erred in taking into account matter extraneous to the representation of the mark and the accompanying description in determining validity. The mark as applied for bore a pattern of black dots, it was true, but there was no indication on the application form that the dots were indentations. Consequently, they had to be construed as they actually appeared, namely as a visual pattern.
In taking into account extraneous matter relating to Yoshida's actual use in order to "find out what the trademark really represents", the Board of Appeal had wrongly applied a form of "reverse engineering", which vitiated its decision to invalidate Yoshida's CTM.
Yoshida therefore won on the central factual issue in its case. However, in relation to the more general issue of principle, namely the definition of "shape mark", the General Court made findings likely to have a wider impact.
In particular, the General Court noted that there was no definition of "shape" in the CTMR. In particular, Article 7 (1) (e) CTMR, which sets out the specific types of shape marks not eligible for registration, did not distinguish between three-dimensional shapes, two-dimensional shapes, or two-dimensional representations of three-dimensional shapes, which was essentially what Yoshida had registered. Consequently, since the CTMR did not distinguish between the different types of shapes, the Court concluded that Article 7 (1) (e) had to apply not only to three-dimensional shapes, but also to two-dimensional shapes as well.
In consequence, Article 7 (1) (e) must be taken to bar the registration of both three-dimensional shapes and two-dimensional shapes and images of shapes that result from the nature of the goods, which are necessary to obtain a technical result, or which give substantial value to the goods.
There is some sense in the Court's definition of "shape" as including both the three-dimensional and the two-dimensional. In common parlance "shape" can refer to two-dimensional outlines or silhouettes just as aptly as to three-dimensional shapes. It arguably makes sense, therefore, for the definition of "shape" not to be too narrowly drawn.
The reason this ruling is so important, however, is that, unusually among absolute ground objections, the prohibitions on the registration of shape marks in Article 7 (1) (e) CTMR cannot be overcome through evidence of acquired distinctiveness. Three-dimensional shapes are notoriously difficult to protect as CTMs without evidence of acquired distinctiveness, and when objections are raised under Article 7 (1) (e) instead of, or in addition to, distinctiveness objections, evidence of acquired distinctiveness would not help in any event.
As a result, some brand owners, including well-known names like Louis Vuitton (on whose buckle design we reported in our Spring 2012 issue) and of course Yoshida itself, have developed a strategy of applying for two-dimensional representations of three-dimensional shapes, in order to avoid Article 7 (1) (e) objections and to fly below the radar with regard to the normal distinctiveness objections that dog the registration of many three-dimensional shapes.
This strategy has always been problematic since it is unclear to what extent a two-dimensional registration confers protection on a three-dimensional mark, and, moreover, whether such a registration could be defended in non-use revocation proceedings based on three-dimensional use. This decision, however, demonstrates that this strategy is not only problematic in these ways, but also that it does not necessarily offer the advantages some perceived, since shape mark objections can still apply.
Yoshida may have successfully fended off the invalidity challenge, therefore, but there is still a question mark over the extent to which its two-dimensional shape registration confers protection and can be maintained on the basis of purely three-dimensional use. Those considering protection for three-dimensional shapes may be better off considering how to protect what they are actually using, rather than trying to design around the problem by protecting something else.