The ECJ dismissed the action against Pirelli’s protected trademark of a tyre groove. The applicants unsuccessfully argued that the Court of First Instance (CFI) had wrongly held that a single groove constituting the disputed unionmark was not in itself capable of performing a technical function.
Tyre manufacturer Pirelli successfully defended the trademark protection of a tyre groove as a Union figurative mark before the highest European court (ECJ). This tyre groove shows the representation of an L-shaped groove.
Union trademark Pirelli tyre groove
The Cancellation Division and Board of Appeal of the EUIPO had initially declared the trade mark registration of the Pirelli tyre groove invalid in relation to “tyres, solid tyres, half load tyres and pneumatic tyres for vehicle wheels of all kinds” of Nice Class 12. However, in 2018, the ECJ overturned these decisions and confirmed the disputed trade mark registration in particular also for these goods.
Competitor Yokohama (Japan) challenged this decision before the highest European court (ECJ), which has now issued a final decision in this dispute (EU:C:2021:431). The European Trademark Office (EUIPO) and the European Association of Trade Mark Owners (Marques) from the UK also participated as plaintiffs in two joined cases (C-818/18 P and C-6/19 P).
As in the previous instances, the possible technical function of the Pirelli tyre groove was once again the subject of discussion before the ECJ. Formally, both Yokohama and the EUIPO claimed infringement of Article 7(1)(e)(ii) of Regulation 40/94 in the contested 2018 CFI judgment.
The CFI wrongly held that a single groove, which constituted the disputed mark, was not in itself capable of performing a technical function within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94 because the groove appeared in a tyre tread in combination with other elements.
ECJ rejects the complaint
But the ECJ rejected all objections.
Contrary to the applicants’ view, the CFI had not ruled out the possibility that Article 7(1)(e)(ii) of Regulation No 40/94 applies to a sign whose shape is necessary to obtain a technical result contributing to the functioning of a product, even if that shape is not in itself sufficient to obtain the intended technical result of that product. The ECJ added that, on the contrary, the CFI had found, in paragraph 72 of the judgment under appeal, that the evidence submitted by Yokohama before the EUIPO did not establish that a single groove in the shape identical to that represented by the mark at issue was capable of achieving the technical result assumed in the contested decision.
And this finding, which results from the court’s (i.e. the CFI’s) free assessment of the facts and evidence, cannot in principle be called into question on appeal, the ECJ explained.
Contradiction in the CFI’s reasoning?
There was also no contradiction in the reasoning of the judgment under appeal, which the applicant Yokohama also argued. The applicant referred in particular to paragraphs 51 and 52, according to which Pirelli did not dispute that some of its tyre models had a groove on the surface of the tyre in the shape represented by the disputed mark. The CFI had also noted that it was understandable, in the light of the case-law cited, that the EUIPO had considered that it could represent a groove similar to those present on the tyres marketed by Pirelli.
However, the CFI pointed to paragraph 53 of its judgment, which is introduced by the word ‘however’. In so doing, the CFI held that the grounds set out in paragraph 51 of that judgment did not in themselves permit the conclusion that the mark at issue represented a tyre or an entire tyre tread.
This in no way constituted a contradiction, the ECJ ruled.
Allegation of distortion
The claimant Yokohama’s allegation that the ECJ’s judgment was based on a distortion of the facts also came to nothing. The ECJ emphasised that Yokohama had not specified exactly which elements had been distorted by the court. It follows that Yokohama’s claim of distortion is not in line with the case-law cited in paragraph 50 of the present judgment and must therefore be rejected as inadmissible.
Similar shape through combination with elements of the tyre tread
Finally, applicant Yokohama contested paragraph 73 of the CFI judgment, in which the CFI held that the registration of the disputed mark, the protection of which is limited to the shape it represents, is not such as to prevent Pirelli’s competitors from manufacturing and marketing tyres having an identical or similar shape when such a shape is combined with other elements of a tyre tread.
However, the ECJ ruled that this was not an error of law. Since the shape at issue was ultimately different from that of the disputed mark, Pirelli could not rely on that mark to prevent the marketing of tyres having that different shape.
And in any case, this finding of the contested judgment was an assessment of the facts by the Court of First Instance, which could not be called into question on appeal – unless there was distortion, the ECJ explained. However, neither Yokohama nor the EUIPO had raised such a claim.