A recent decision of the General Court of the European
Union raises interesting issues concerning the protection of
trademarks which are functional in nature.
Yoshida Metal Industry Co. Ltd. ("Yoshida") filed two
applications for Community trademarks in November 1999 consisting
of the signs reproduced below:
for use in association with, among other things, the handle of a
knife. Yoshida overcame adverse decisions by examiners through
administrative appeals and eventually obtained registrations in
In July 2007, three competitors applied to have the trademarks
declared invalid alleging that the trademarks related to the shapes
of goods, which was necessary to obtain a technical result,
contrary to the applicable European legislation. The validity of
the registrations was initially upheld, but on appeal it was found
that the registrations were not valid on the ground that the black
dots represented dents necessary to obtain a non-skid effect.
Yoshida appealed the decision to the General Court who agreed
with the initial decision and found that the registrations were
valid. The third party competitors then appealed to the Court of
Justice of the European Union who allowed the appeal and referred
the matter back to the General Court to rehear the appeals.
Eventually in May 2015 the General Court determined that the
registrations of the marks in issue were invalid in so far as the
essential characteristics of the signs consisted exclusively of the
shape of goods necessary to obtain a technical result.
The General Court said that the rationale relating to precluding
the registration of signs whose essential characteristics perform a
technical function was to prevent trademark protection from
granting to the owner a monopoly over technical solutions or
functional characteristics of a product which a user is likely to
seek in the products of competitors. The limitation is intended to
prevent the protection conferred by a trademark from being extended
beyond signs used to distinguish goods or services so as to form an
obstacle preventing competitors from freely offering for sale goods
incorporating such technical solutions or functional
The black dots were found by the court to actually represent
indentions; they were not mere two dimensional colouring painted
onto the handle but indentations; blackened and featured on the
surface of the handles. This finding was confirmed by a reading of
the European and U.S. patents owned by Yoshida. In fact the patents
asserted claims with respect to the dents as providing a non-skid
structure and function.
Since the signs at issue did not have any clear ornamental
character their registration would reduce the possibility of
competition as competitors would be precluded from bringing
alternative product shapes to the market that incorporated the same
non-skid technical solution. As a result of these findings, the
court confirmed that the registrations were invalid.
The Amendments to the Canadian Trademarks Act
Once the outstanding amendments to the Canadian Trademarks Act
are brought into force we will be faced with somewhat similar
wording in our trademark legislation. The concept of registration
of signs relating to the shape of goods will be incorporated into
the Act. In addition, it is provided that a trademark is not
registrable in relation to goods and services in association with
which it is to be used, if its features are dictated primarily by a
utilitarian function. Finally, the registration of a trademark does
not prevent a person from using any utilitarian feature embodied in
If a case similar to the Yoshida case was to be decided under
this legislation, a strong argument could be made that a
registration should not be granted since the signs in issue relate
to the shape of a knife handle with a non-skid feature, both of
which features are designed to be useful.
It certainly appears that the configuration of the knife handles
was important to Yoshida who obtained patent protection and then
subsequently sought to obtain trademark protection. The term of
protection of a patent is limited but as they say trademarks are
forever. Under the circumstances it seems reasonable that the
monopoly granted by the patent should not be indirectly extended by
obtaining a trademark registration.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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