Brands Update — April 2014: losing a grip on trademark protection for knife handles

The Court of Justice of the European Union (CJEU) has confirmed that when considering whether a sign ‘consists exclusively of the shape of goods that is necessary to obtain a technical result’, such that there can be no trademark protection, the court is not confined to looking at the sign as filed. It is permissible to look also, for example, at the actual use made of the trademark, including use made before and after registration, and any relevant patents. In this case, Yoshida registered the following figurative Community trademarks (CTMs) for products including knives.

Following registration, Pi-Design and Bodum applied for a declaration of invalidity on the basis that the marks consisted of a shape necessary to obtain a technical result. They argued that the purpose of the dots was to act as a grip to prevent the knife handle from slipping. To make this point, they relied on wording in Yoshida’s patents.

The Board of Appeal ruled that the marks should be cancelled. Based on the information in Yoshida’s patents, the Board of Appeal concluded that the dots or 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 prevent it from finding the signs invalid…

Click on the link below to read the rest of the Taylor Wessing briefing. 

Sign in or Register to continue reading this article

Sign in


It's quick, easy and free!

It takes just 5 minutes to register. Answer a few simple questions and once completed you’ll have instant access.

Register now

Why register to The Lawyer


Industry insight

In-depth, expert analysis into the stories behind the headlines from our leading team of journalists.


Market intelligence

Identify the major players and business opportunities within a particular region through our series of free, special reports.


Email newsletters

Receive your pick of The Lawyer's daily and weekly email newsletters, tailored by practice area, region and job function.

More relevant to you

To continue providing the best analysis, insight and news across the legal market we are collecting some information about who you are, what you do and where you work to improve The Lawyer and make it more relevant to you.

Briefings from Taylor Wessing

View more briefings from Taylor Wessing

Analysis from The Lawyer

  • merger deal

    Corporate crunch time: who will triumph at The Lawyer Awards 2014?

    As the equity capital markets rocketed back into favour and global M&A saw at least a partial return to form, there have been some rich pickings for The Lawyer’s Corporate Team of the Year award shortlisted firms in 2014. 

  • singapore orchid

    Singapore: Cash course

    The city-state is working hard to become a global wealth management hub, and law firms are gearing up for a prosperous new world

View more analysis from The Lawyer


5 New Street Square

Turnover (£m): 241.20
No. of lawyers: 860 (UK 200)
Jurisdiction: UK
No. of offices: 6
No. of qualified lawyers: 73 (International 50)
No. of partners: 29