A few days ago, the European Court of Justice ("ECJ") issued a decision by which it rejected the invalidity action brought by the tire manufacturer Yokohama against the trademark application filed by Pirelli to protect a mere part of the tread of a tire as a trademark.
With this decision, the ECJ reformed an earlier ruling of the EUIPO Appellate Division, which had held that the design of a part of the tread did not in itself constitute a valid trademark in relation to class n. 12 of the Nice Classification because the groove performed a merely technical and non-distinctive function. However, in 2018, the ECJ overturned this decision and upheld the registration of the disputed mark specifically for these goods as well.
Yokohama appealed this decision before the European Court of Justice, which has now issued a final decision in this dispute (EU:C:2021:431). The European Trademark Office (EUIPO) and the European Association of Trademark Owners of the United Kingdom have also intervened in the case.
As in the previous cases, the possible technical function of a part of the Pirelli tread was once again the subject of discussion before the ECJ. Formally, both Yokohama and EUIPO claimed infringement of Article 7(1)(e)(ii) of Regulation 40/94 in the 2018 judgment of the CFI that was later appealed.
According to the ECJ, the CFI erred in holding that a single groove in a tire, which constituted the contested mark, was not in itself capable of performing a technical function within the meaning of Article 7(1)(e)(ii) of Regulation 40/94 because the groove appeared in a tire tread in combination with other elements.
Contrary to the appellant's view, the Court of First Instance had not ruled out the possibility that Article 7( 1)(e)(ii) of Regulation No. 40/94 might apply to a sign whose shape is necessary to obtain a technical result which contributes 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 Court of First Instance had found that the evidence presented by Yokohama before the EUIPO did not show that a single groove of a shape identical to that represented by the mark at issue could achieve the technical result assumed in the contested decision.
In essence, the Court upheld the General Court's assessment by which the contested mark does not represent a tread pattern and therefore does not consist exclusively of the shape of the goods in question (namely tires) within the meaning of Article 7(e)(ii) of Regulation (EC) No. 40/94. It represents at most a single groove of a tire tread and not a tire tread, since it does not incorporate the other elements of a tire tread.