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.
In 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.
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Sources:
T:2018:709 Pirelli L-shaped groove
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