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BACKGROUND

The applicant, Pirelli Typre SpA, filed an application for a registration of an EU trademark on the 23rd of July 2001, for the following figurative sign in class 12:

‘Tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds, vehicle wheels of all kinds, inner tubes, wheel rims, parts, accessories and spare parts for vehicle wheels of all kinds’

In September 2012, Yokohama Rubber Co. Ltd, the intervener, filed a request for declaration of invalidity of the above trademark application before the Cancellation Division of EUIPO, which rejected Pirelli Tyre SpA’s application for the goods applied for, as well as ‘rims and covers for vehicle wheels of all kinds’ on the basis of Article 7(1)(e)(ii) of Regulation No 40-94.

Following an appeal by the latter, the Board of Appeal of EUIPO upheld the appeal in part, though confirming the decision to reject the trademark application for ‘Tyres, solid, semi-pneumatic and pneumatic tyres, rims and covers for vehicle wheels of all kinds’. The applicant appealed this decision.

 

DECISION

 The applicant based their appeal on three pleas: first, they contested the reliance of the Board of Appeal on Article 7(1)(e)(ii), stating it not applicable ratione temporis. Second, the applicant considered that there were irregularities and infringement regarding the obligation of the Board to state reasons. The third plea alleged infringement of Article 7(1)(e)(ii) of Regulation No 40/94. The Court considered the first and third pleas.

Regarding the first plea, the applicant claimed that the Board of Appeal wrongfully applied Article 7(1)(e)(ii) of Regulation No 207/2009, as opposed to the version of the article from Regulation No 40/94, which is broader in nature. The Court confirmed the Board was obliged to apply the latter, as Regulation No 207/2009, resulting from Regulation 2015/2424, was not applicable as the registration application was filed in 2001. Although it was recognised that the Board of Appeal was wrong in drawing attention to the wording of Article 7(1)(e)(ii) of Regulation No 207/2009, the Court held that the Board formed its assessment by relying upon applied Article 7(1)(e)(ii) of Regulation No 40/94. Thus, the first plea was rejected.

The applicant claims, through its third plea, that the Board of Appeal was wrong in its consideration that the sign in question composed a crucial part of a tyre’s tread and thus of the goods covered by the trademark application (that is, ‘tyres, solid, semi-pneumatic and pneumatic tyres for vehicle wheels of all kinds’). Moreover, the Applicant considered that the sign had acquired distinctive character through use, as per Article 7(3) of Regulation No 40/94.

The Court reminded that if a sign is refused protection under Article 7(1)(e) of the Regulation, it can never acquire distinctive character under Article 7(3), thereby highlighting the importance of first undertaking an examination under the former Article.

Next, the Court noted the interest of Article 7(1)(e) to prevent monopoly rights from being granted the trademark applications. Indeed, established case-law was invoked to highlight the importance of preventing the registration of signs that offer protection to shapes of goods necessary to obtain a technical result, taking into consideration that the refusal in Article 7(1)(e)(ii) pertains only to signs consisting ‘exclusively’ of the shape that is ‘necessary’ to achieve a technical result. It was further reminded that the ‘essential characteristics’, namely those that are ‘the most important elements of the sign’ must be considered in the course of evaluation, taking place on a case-by-case basis.

In its assessment, the Court reminds two established principles: first, that graphic representations must be self-contained, easily accessible and intelligible. Second, that the aim of the requirement of graphic representability is to establish the mark itself to determine the object of protection.

Thus, the Court considered that the first requirement is fulfilled. Indeed, the sign was not considered to represent either the shape of a tyre or a tyre tread, nor that it is destined for use on those two objects. Moreover, the representation of the sign did not result in the conclusion that it performs a technical function.

The Court then proceeded to carry out a detailed examination of the sign itself. It was established that the nature of a tyre itself is complex, as it is composed of numerous elements. However, the contested sign forms part of only a limited element of a tyre tread. Therefore, it cannot be said that it represents the object in general.

When taking into account established case-law, the Court reminded that the EUIPO cannot add to that shape characteristics that do not form part of the sign. Thus, the Court acknowledged that the Board of Appeal departed from the represented shape in the sign in question, which it was not entitled to do. In addition, on reliance upon established case-law, the Board of Appeal was not entitled to qualify the sign in question as ‘a tyre or as a representation of a tyre’.

This resulted in the Court stating the conditions that must be met to establish what the sign actually represents: its essential characteristics and any possible functionality to be determined. Thus, when the Board of Appeal included elements within its evaluation that did not form part of the contested sign, this was deemed capable of invalidating the finding that Article 7(1)(e)(ii) of Regulation No 40/94 was met.

Finally, the Court held that whilst signs consisting of part of products that are needed to obtain a technical result can be refused, in the present situation, the sign represents a singly groove. Thus, a tyre tread is not designated by the sign since other elements of the latter are not incorporated in the contested sign. Indeed, the Board of Appeal and EUIPO had not demonstrated that a single groove can produce a technical result.

In light of the above, the Court considered that as the shape represented is not needed to produce a technical result, and does not create a monopoly right, the appeal is upheld, without the need to consider the second plea.

 

COMMENT

This decision demonstrates the importance of trademark applicants taking into consideration the entire impact of their shape trademark applications. Indeed, it is necessary to take account what the essential characteristics of the sign represent, and whether the shape itself is capable of fulfilling a function. Thus, applying for protection of a mere elements of a global shape, as in the present case, can allow for registration of the trademark to succeed.

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