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…

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