Is it possible to own a European 2D trademark on a figure intended for use as part of a 3D object? That was the riddle sliced and diced in a recent judgment at Europe’s General Court (EGC) in the latest stage of a validity dispute that had lasted for 13 years.

In that time, the controversy has explored the fine lines between 2D trademarks and 3D technical features – areas of intellectual property (IP) that the Court’s judgment has aimed to pare apart.

The wrangles that threatened to blur those lines have their roots in a 1999 trademark application by Japanese cutlery maker Yoshida Metal Industry – producer of the GLOBAL range of kitchen knives. Applying through the Community trademark (CTR) route offered by the Office for Harmonisation in the Internal Market (OHIM), Yoshida sought European coverage for this sign:



Following an initial round of scrutiny, OHIM’s examiner held that the sign had no distinctive character and rejected the application. Yoshida immediately took the examiner to OHIM’s Board of Appeal, and, in 2001, the rejection was overturned. The Board was persuaded that the sign was indeed distinctive as a graphic figure, and, in 2002, the application was finally approved. From then on, the sign was protected as a CTM for use within Yoshida’s knife range – and that appeared to be that.

But, in 2007, the question of validity in the sign reared its head again.

Joining the dots

That year, a group of interveners comprising Danish kitchenware company Bodum, its overseas division, Bodum France, and its Swiss-based specialist graphics unit, Pi-Design AG, approached OHIM’s Cancellation Division to secure a declaration of invalidity on Yoshida’s sign.

In their view, the sign was invalid on the grounds that it had been designed purely for technical purposes. Crucially, to support this, the interveners supplied copies of US patents that Yoshida had secured for some of its knives, which demonstrated that the sign’s outline represented a handle shape, and that its dots stood for concave dents on the handle’s surface. The shape and dots, argued the interveners, were not a sign, but an improvement on a knife grip.

In effect, they accused Yoshida of using trademark registration as a means of protecting a technical feature by the back door. This, they argued, contravened Article 7 of European Council Regulation 207/2009, which sets out absolute grounds for refusal of a CTM application. According to point (1)(e)(ii) of the Article, ‘signs which consist exclusively of the shape of goods which is necessary to obtain a technical result’ may be refused. In July 2008, the Cancellation Division rejected that argument in its entirety.

Undeterred, the interveners pursued their case to OHIM’s First Board of Appeal – a higher appellate authority than the Board that had handled Yoshida’s distinctiveness claim. In 2010, the First Board came to the conclusion that the sign as registered was indeed devised for achieving a technical result in a 3D object, and accepted the interveners’ original production of US patent documents to support that stance. It also said that the possibility that the same technical effect could be achieved through other shapes did not exempt the sign from refusal within the meaning of Article 7(1)(e)(ii).

The First Board annulled the Cancellation Division’s ruling. But Yoshida took the matter further.

‘Reverse engineering’

In its review of the case, the EGC – a branch of Europe’s Court of Justice (CJ) with jurisdiction over CTM disputes – was required to examine questions of legal interpretation and evidence selection. In the EGC’s assessment, the interveners and First Board had been too narrow in their consideration of the first point, and too broad on the second.

The interveners’ argument had been based upon the contention that the raison d’etre behind Yoshida’s registration of the sign was to protect a 3D technical feature. However, according to the EGC, ‘the concave character of the black dots does not form part of the contested mark as filed and registered.’

It ruled: ‘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 [First] Board of Appeal did not refer to the sign as filed, but to representations of the goods actually marketed by the applicant.’

In other words, once Yoshida had been able to demonstrate the distinctive character in its sign necessary to achieve registration, the ways in which the company chose to represent that sign were entirely at its discretion. As such, ruled the EGC, the interveners’ tactic of ‘reverse engineering’ Yoshida’s thinking through patent documents, in order to find out ‘what the trademark really represents’, constituted an ‘error of law’. Put simply, the sign’s opponents had roamed outside the scope of Article 7(1)(e)(ii) in its production of patent data, forming an argument that read more into the application than could actually be gleaned from it. In the EGC’s analysis, best practice lay in taking Yoshida’s trademark information at face value.

Cutlery v Lego

There are interesting parallels between the Yoshida case and efforts on the part of toy manufacturer Lego to uphold validity of a 3D trademark in its well known brick shape. That case went all the way to the CJ – the court of last resort for Community trademark disputes appealed from the EGC – before the brick was ruled invalid in 2010.

As Matt Hervey of Wragge & Co explained on NewLegal Review that year, CJ Advocate General Paolo Mengozzi cancelled the trademark for the shape because, ‘not only its essential characteristics, but also the brick as a whole, were dictated exclusively by their functional requirements’.

In Mengozzi’s assessment, the shape of Lego’s brick was determined entirely by its need to be connected with other bricks and built up into Lego models. As with Yoshida’s case, Article 7(1)(e)(ii) provided the legal criteria.

Where the EGC differed from Mengozzi was in accepting Yoshida’s pattern of dots as just a simple mark – not a means of achieving a technical result. It was Yoshida’s decision, in the Court’s view, to represent the pattern with concave dents – but as those dents were not specified in the company’s original filing, the interveners could not use them as grounds for attacking the mark.

NewLegal Review will keep a handle on the case, and report on any developments.

For recent coverage of shape trademarks in the US, click here