A Round-Up Of The CJEU Cases In 2017

In 2017, the Court of Justice of the European Union issued 19 decisions primarily focused on trade marks. Here, I summarise the most interesting of them.

Distinctiveness

Yoshida Metal Industry Co Ltd v EUIPO (Pi-Design AG, Bodum France SAS and another intervening) (Case C-421/15) involved two marks owned by Yoshida Metal Industry, part of the Yoshikin group. The group operates a cutlery factory in Tsubame, Japan, an area renowned for metalworking since the 17th century. The marks were for the following array of black dots, used by Yoshida on the handle of its 'Global' knives, crafted by hand and inspired by Samurai swords. The marks were registered in September 2002 and April 2003 in classes 8 and 21, for knives and knife blocks (amongst others):

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In July 2007, the interveners, all part of Danish kitchenware group Bodum, applied for the marks to be declared invalid, under Article 7(1)(e)(ii) of Regulation 40/94, as it then was. The General Court concluded that the black dots represented dents which were necessary to obtain a technical result, namely preventing the user's hand from slipping accidentally. Accordingly the marks were invalid, pursuant to Article 7(1)(e)(ii), in so far as the essential characteristics of the signs at issue consisted exclusively of the shape of goods necessary to obtain a technical result. Before the CJEU, Yoshida argued that the signs represented a simple decorative pattern with no functional value. The CJEU dismissed Yoshida's appeal and upheld the General Court's approach, expressed at paragraph 64 of the General Court's judgment as follows:

"...While it is impossible to rule out any ornamental character as regards the configuration of the array of black dots, that configuration, as well as the shape of the black dots themselves, shows no significant characteristic and covers practically all of the handles represented. Similarly, the black colour of the dots, with its uniform and monochromatic nature, without being completely devoid of ornamental character, cannot make those dots a major non-functional element of the signs at issue."

In August Storck KG v EUIPO (Case C-417/16), the applicant was German confectionery producer August Storck, whose UK subsidiary Bendicks owns the Bendicks and Werthers Original brands. Storck applied in August 2013 for the following figurative mark in class 30 for chocolate amongst others:

The application represented the packaging of Storck's 'Knoppers' bar, a milk chocolate and hazelnut waffle, which is particularly popular in Germany. The CJEU upheld the General Court decision that the application was devoid of distinctive character and therefore should be refused under Article 7(1)(b) of Regulation 207/2009, as it then was. The General Court's analysis included noting that the different colours are commonplace and would be perceived only as aesthetic or presentational elements. Storck's interpretation that the figurative element represented a snow-covered mountain and a blue sky was not obvious; regarding the colours used, the white part could also bring to mind milk, a common ingredient in chocolate, which is often represented on chocolate packaging.

Marks containing a word indicating a geographical origin

In a bumper year for decisions involving marks containing words indicating a geographical place or origin, there were four judgments along these lines.

The first was Ornua Co-Operative Ltd v Tindale & Stanton Ltd España SL (Case C-93/16), a referral from the Alicante Provincial Court. Irish agri-food co-operative Ornua owns several EU marks containing the word KERRYGOLD for goods in class 29 including butter and other dairy products. Spanish importer T&S imports and distributes KERRYMAID margarine, manufactured in Ireland by Kerry Group plc.

In January 2014, Ornua brought an infringement action against T&S in Spain. The first instance court held that the only similarity between KERRYMAID and KERRYGOLD related to the element 'kerry', referring to the Irish county known for cattle breeding. It was agreed between the parties that in Ireland and the UK, Ornua's marks and T&S' sign peacefully co-exist.

In the key part of its judgment, the CJEU provided guidance on Article 12 of Regulation 207/2009, as it then was, which establishes that an EU trade mark owner cannot prohibit a third party from using a sign which indicates the geographical origin of goods or services, provided his use is in accordance with honest practices. When assessing whether a third party's use falls within this exception, relevant factors include the overall presentation of the third party product and any efforts by the third party to ensure...