What sort of shapes can be protected as trade marks?
Trade marks come in all shapes and sizes – words, slogans, colours, shapes, animations and more. One of the more unusual is a figurative EU trade mark registered by Pirelli for “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 class 12.
It's a tyre tread!
The mark, as depicted, is a little abstract. In case it’s not clear, it represents a single groove of a tyre tread. The EUTM was registered in 2002.
In 2012, Yokohama filed a declaration of invalidity, and the mark was declared invalid on the ground that it consisted exclusively of the shape of the goods concerned necessary to obtain a technical result within the meaning of Article 7(1)(e). This finding was upheld by the Board of Appeal for all of the goods specified except “rims and covers for vehicle wheels of all kinds”.
However, the EU General Court overturned that decision, and the Court of Justice of the EU (CJEU) has recently upheld its ruling in favour of Pirelli (Joined Cases C-818/18 P and C-6/19 P), rejecting appeals by Yokohama and EUIPO. The case provides useful guidance on the registrability of shapes, particularly where the shape does not represent a significant part of the relevant goods.
Part of a part
The General Court had found that “[the type of tyre tread in issue] is formed of multiple interlacing elements and is itself a part which, together with other parts, particularly sidewalls, constitutes the goods covered by the mark at issue”.
The CJEU said the General Court was entitled to find that the mark did not represent the goods covered by it or a tyre tread and that “that sign is only a very limited part, namely a single groove, of another part, namely a tyre tread”.
The CJEU said that the correct application of Article 7(1)(e)(ii) is to identify the essential characteristics of the sign at issue and then ascertain whether those characteristics all perform the technical function of the product. In this case, the Board of Appeal was wrong to add to the shape of the mark elements which did not form part of it.
Moreover, the CJEU said the General Court did not make an error of law in finding that “the registration of the mark at issue is not liable to prevent Pirelli’s competitors from marketing tyres which incorporate an identical or similar shape to the shape of that mark when that shape, combined with other elements, creates a different shape” stating: “Since, ultimately, it is a question of a shape different from the mark at issue, Pirelli cannot rely on that mark to prevent the marketing of tyres which incorporate that different shape.”
The finding that the shape which the mark represents does not necessarily feature on a tyre tread in a manner that enables that mark to be identified was a factual finding by the General Court, which cannot be overturned by the CJEU.
What does this mean?
The case is good news for Pirelli, and will provide some reassurance for other applicants seeking trade mark registrations for shapes which are part of complex products. Having said that, the truism that every case depends on its facts is particularly apposite when dealing with non-traditional trade marks, given the many factors that need to be taken into account!