• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Pirelli tyre grooves protected as Union figurative mark

9. November 2018

Tyre manufacturer Pirelli defended the trademark registration of its tyre grooves before the European Court of Justice. The focus was on the identification of the disputed figurative mark by the EUIPO.


grooveIn July 2001, Pirelli filed an application for a two-dimensional figurative mark representing an inclined hockey stick – or a realistic representation of a tyre tread used on real tyres and thus the most important part of the goods “tyres” in Nice Class 12 – according to the intervener The Yokohama Rubber Co. Ltd.  Therefore they filed an application for a declaration of invalidity of the contested mark with the EUIPO in September 2012.
The Opposition Division and the Board of Appeal (28 April 2016 (“the contested decision”)) declared the contested mark invalid in respect of “tyres, solid tyres, semi-restricted tyres and pneumatic tyres for all types of vehicle wheels” in Nice Class 12. The main characteristic of the mark at issue is an L-shaped groove. It is clear “that the sign is a tyre tread and therefore perhaps the most important part of the contested goods…. at least from a technical point of view”, according to the Board of Appeal of the European Union Intellectual Property Office (EUIPO).

Appropriate identification of a sign

EUIPO found that a tyre groove is not a product as it is not a separable element of a tyre. The contested sign was therefore registered for tyres, that is to say, for the product which has the L-shaped groove in question and for which that groove had a technical function. That was based on an objective test in which the EUIPO may take into account, in addition to the graphic representation of a sign, any material relevant for the proper identification of a sign under Article 7(1)(e)(ii) of Regulation No 40/94.

Identification may be made by a simple visual analysis of the sign or may also be based on a detailed examination taking into account relevant evaluation criteria. According to the EUIPO, material relevant to the identification of the essential characteristics of a contested two-dimensional sign could also be taken into account. Therefore, the EUIPO provided evidence that the groove represented by the contested sign does not appear on the applicant’s tyre alone.

European Court revokes identification of the sign

This approach was criticised by the Court of Justice of the European Union (CJEU). This case law cannot be interpreted in such a way that the EUIPO is permitted to supplement design elements, which are not part of the sign and therefore external and foreign, in order to qualify the shape represented by a contested sign. A tyre is a complex product consisting of several elements.
Even if account is taken of the fact that some of the applicant’s tyre models have a groove in the shape of the contested sign on the surface of the tyre, that does not allow the conclusion to be drawn that the contested sign constitutes a tyre or an entire tyre tread. According to the applicant, the Board of Appeal was not entitled to go beyond the contested sign in order to classify it as a “representation of a tyre tread”.

Nor is it apparent from the graphic representation of the contested sign that it is a functional shape fulfilling a technical function. Nor was it accompanied by an additional description. The sign, as registered, does not represent the shape of a tyre or the shape of a tyre tread, but the shape of an inclined “L”.

Monopoly on functional characteristics?

The EUIPO had also referred to Article 7(1)(e)(ii) of Regulation No 40/94. The grant of a monopoly on the functional characteristics of a product must be prevented. If the applicant were granted trademark rights for the contested sign, it could prevent other competitors from marketing tyres with similar grooves.
This argument was also rejected by the CJEU. Competitors, such as the intervener, may well produce tyres in an identical shape to that represented by Pirelli’s figurative mark if they combine that shape with other elements of a tyre tread.

CJEU revokes the contested decision

Taking into account all the foregoing points, the contested decision was annulled by CJEU. Pirelli successfully defended its figurative mark. For all competitors, this means planning the shape of their tyre tread with particular care.

 

Would you also like to protect your brand or trademark?

Then please do not hesitate to contact us. Our patent attorneys and attorneys at law are experienced and highly qualified in all areas of intellectual property law, both nationally and internationally.

Request your call-back without any obligations!

CAT-call_en

Sources:

T:2018:709 Pirelli L-shaped groove

Picture:

Picdream /pixabay.com / CCO License  

  • share  
  • share 
  • share 
  • tweet 
  • share 

Category iconInternational Intellectual Property,  Trademark Law Tag iconfunctional characteristics,  tyre groove,  Pirelli,  tyre,  EUIPO,  L-shaped groove,  Unionmark,  Union figurative mark,  figurative mark,  identification of the sign

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: International Intellectual Property

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

25. February 2022
CODE-X vs. Cody’s: Likelihood of confusion in drinks?

CODE-X vs. Cody’s: Likelihood of confusion in drinks?

24. February 2022
EOS lip balm no 3D trademark – appeal before ECJ not admissible

EOS lip balm no 3D trademark – appeal before ECJ not admissible

21. February 2022
CFI: Pumpkin seed oil + PGI symbol

CFI: Pumpkin seed oil + PGI symbol

15. February 2022
SPOTIFY v POTIFY – a ‘pot’ app

SPOTIFY v POTIFY – a ‘pot’ app

10. February 2022
CFI: Shoes MADE IN ITALY

CFI: Shoes MADE IN ITALY

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]