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non skidding knives – 2D marks invalid if essential characteristics perform a technical function

13 March 2014

It is an absolute ground of refusal for a trade mark to be registered wherever its essential characteristics perform a technical function (Article 7 (1) (e) of CTMR). The CJEU has now held in Yoshida Metal Industry Co v Pi-Design AG that the analysis of those technical functions will apply to both two dimensional as well as three dimensional signs.

The CJEU stated that in assessing whether the ‘essential characteristics’ of a two dimensional sign could be held to involve a technical function the court might go further than a simple visual analysis of the sign and consider other relevant material such as surveys or expert opinions. It is also acceptable to consider material from after the application date if it helps conclusions to be drawn on the situation at the time of the application.

This decision gives greater freedom to examiners and courts in assessing trade mark validity and could lead to different interpretations and therefore uncertainty. It will be interesting to see how this decision is interpreted in the future.

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