Analysis: “CJEU clarifies when a shape must be considered necessary to obtain a technical result for the purposes of trademark invalidation” by Bernd Justin Jütte
In two appeal proceedings (Joined Cases C-818/18 P and C-6/19 P) against a judgment by the General Court (T-447/16), the European Intellectual Property Office (EUIPO) and the Yokohama Rubber Co. Ltd challenge the interpretation of Article 7(1)(e)(ii) of Regulation No 40/94 on the Community Trademark.
Besides certain procedural issues the appeal sought to clarify the interpretation of the absolute ground of refusal provided for in the stated provision, which stipulates that a sign cannot be registered as a trademark if the sign consists exclusively of ‘the shape of goods which is necessary to obtain a technical result’.
In 2001, Pirelli had filed for the registration of a trademark in the shape that of what has been described as an ‘L’ or a hockey stick for goods including ‘tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds’. The sign was registered in 2002 and subsequently successfully challenged on the basis of Article 7(1)(e)(ii) of the Community Trademark Regulation. The Cancellation Division of the EUIPO declared the mark invalid in 2014, against which Pirelli appealed before the EUIPO’s Fifth Board of Appeal. The Board confirmed the invalidity for tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds but annulled the decision of the Cancellation Division for the remaining classes of goods. Pirelli further appealed to the General Court which annulled the decision of the Fifth Board of Appeal that had declared the registration invalid for tyres and such related goods.
In essence the appellants challenged the interpretation of the General Court given to Article 7(1)(e)(ii) on how to assess whether the sign in question forms part of the product. The product in question in this case is a tyre with a tread that is composed of several grooves, including an L-shaped groove. The sign Pirelli applied to have registered represented in its shape one of the grooves that make up the tyre tread.
The Court of Justice dismissed the appeals and clarified, in part, the scope of Article 7(1)(e)(ii). It rules that a single groove of a tyre tread is only a part of a ‘good’. Accordingly, the General Court had been right to overrule the Board of Appeal which had, in its own assessment of the facts, taken into account elements which were not part of the mark at issue. Furthermore, the Court ruled that although the sign in question did form part of the good in question it could by itself not achieve a technical result and its shape did not ‘quantitatively and qualitatively’ represent a significant part of the product in question. The Court did not exclude, however, confirming the interpretation of the General Court, that a shape that contributes to a specific technical result can come within the scope of Article 7(1)(e)(ii). The facts in this case as presented before and interpreted by the General Court, and which are not reviewable by the Court of Justice, did not support such a finding.
Although the Court was limited in its review to points of law, it clarified that a registered trademark that corresponds to a part of a good but is not in itself solely necessary to obtain a specific technical result is not subject to invalidation under Article 7(1)(e)(ii) and its successors. The Court did not address the interesting argument, which is a question of fact, rather than a question of law. It can be conceived that, for example in this case, Pirelli would use its trademark which resembles a groove in a tyre tread to prevent competitors from using similarly shaped grooves in their tyre threads. This is, however, a question of factual similarity and not a point of law.
Bernd Justin Jütte is Assistant Professor at UCD Sutherland School of Law and holds a PhD from the University of Luxembourg. His expertise is in European copyright law, specifically on transformative uses and the conflict between copyright and fundamental rights. He is the author of the book ‘Reconstructing European Copyright Law for the Digital Single Market’ (Nomos, Hart, 2017).