In Case T-280/11, the General Court rejected the appeal presented by Rita Ewald against the decision of the OHIM which found likelihood of confusion between the following rights:

KEEN                  

Contested CTM   Earlier CTM

The relevant public is composed both of the average consumer for goods and services in Classes 3 and 35 and of the retail professionals regarding some services in Class 35.

The goods and services were found either identical or similar by the OHIM, such as “soaps, shampoo, hair dyes, which was not contested by the parties ”.

The signs are very similar from a phonetic point of view, in particular for the Danish consumer which counterbalances the visual differences. Even though for the Dutch and English-speaking consumer, conceptual differences exist, a likelihood of confusion cannot be excluded for the rest of the EU consumer.

In Cases T-331/10 and T-416/10, Yoshida Metal Industry registered the following figurative CTMs representing a surface with black dots for Classes 8 and 21, in particular ‘cutlery, knives’:

The interveners – Pi-Design AG, Bodum France and Bodum Logistics A/S – lodged an application for a declaration of invalidity on the ground that it was registered contrary to Article 7(1)(e)(ii) of Regulation No207/2009, because in fact it consisted of a shape necessary to obtain a technical result.

According to the interveners, the contested mark represents an array of dots appearing on the handles of knives, these dots constitute slightly recessed dents which serve to prevent the knife handle from slipping. In support of their arguments, the interveners referred to two patents held by the applicant (US 6195899 and EP 1116507B1).

The First Board of Appeal of OHIM upheld the appeals, reaching the same conclusion as the arguments presented by the interveners. The BoA added that the fact that the same result could be obtained by other shapes did not exclude the applicability of the ground for refusal set out in Article 7(1)(e)(ii) of CTMR.

The GC found that the dispute between the parties thus raised three issues:

1) The first issue concerns whether Article 7(1)(e)(ii) CTMR can apply to two-dimensional signs;

2) The second issue concerns whether the BoA was entitled to analyse the sign applied for as seeking, in fact, to protect a three-dimensional shape, in taking the view, by reference to the goods actually marketed by the applicant, that the dots of the pattern corresponded to dents;

3) The third issue, in the event of an affirmative reply to the two previous questions, concerns whether the contested trade mark consists exclusively of the shape of goods which is necessary to obtain a technical result.

Firstly, the Court found that with regard to the wording of Article 7(1)(e)(ii) of CTMR which does not define the signs which must be considered as shapes, and to the public-policy interest which it pursues, it must be concluded that it applies to any sign, whether two- or three-dimensional, where all the essential characteristics of the sign perform a technical function.

Secondly, as regards the character of the contested mark: the BoA took the view that all of the black dots of the contested mark actually represented dents and constituted a non-skid structure applied to the handle of a knife.

In this respect, the Court found that the concave character of the black dots does not form part of the contested mark as filed and registered. 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 CTM was not accompanied by any description to that effect. Therefore, in concluding that the dots were concave in character, the Board of Appeal did not refer to the sign as filed, but to representations of the goods actually marketed by the applicant.

Further, the examination of an application for a declaration of invalidity based on Article 7 CTMR must also relate to the situation obtaining at the time of filing, which rules out consideration of the actual use made of the trade mark following its registration.

It follows that the Board of Appeal’s finding that ‘there is nothing in the applicable regulations that prevents the Office from carrying out this sort of “reverse engineering”, i.e. finding out what the trade mark really represents’, on the basis of elements other than the relevant registration application, is contrary to the applicable legislation.

Consequently, the Board of Appeal erred in departing from the graphic representation of the contested trade mark when it referred to representations of the goods actually marketed by the applicant in order to conclude that the black dots appearing in that trade mark were concave in character.

In view of this error of law, the contested decision must be annulled, without it being necessary to examine the third issue.