5

The facts behind the dispute are set out in paragraphs 1 to 15 of the judgment under appeal as follows: ‘1 On 3 and 5 November 1999, [Yoshida] filed applications for registration of [EU] trade marks with [EUIPO, pursuant to Regulation No 40/94]. 2 The trade marks for which registration was sought are the signs reproduced below: 3 The goods in respect of which registration was sought are in Classes 8 and 21 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended (“the Nice Agreement”), and correspond to the following description: — Class 8: “Cutlery, scissors, knives, forks, spoons, whetstones, whetstone holders, knife steels, fish bone tweezers”; — Class 21: “Household or kitchen utensils and containers (not of precious metal or coated therewith), turners, spatulas for kitchen use, knife blocks for holding knives, tart scoops, pie scoops”. 4 By decisions of 14 September and 23 November 2000, the examiner rejected those applications for registration on the ground that the signs at issue were devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 40/94 ... 5 Following the annulment of 31 October 2001 by the Second Board of Appeal of [EUIPO] of one of the abovementioned rejection decisions, the examiner on 11 July 2002 withdrew the objection concerning the other application for registration. The trade marks at issue were registered on 25 September 2002 and 16 April 2003. 6 On 10 July 2007, [Pi-Design and Others] applied for those trade marks to be declared invalid pursuant to Article 51(1)(a) of Regulation No 40/94 ..., on the ground that they had been registered in breach of Article 7(1)(e)(ii) of that regulation ... In their observations of 17 December 2007, [they] added that the registration should also be declared invalid on the ground that the trade marks lacked distinctive character. 7 By decisions of 15 and 21 July 2008, the Cancellation Division of [EUIPO] rejected, in their entirety, the applications for a declaration of invalidity. 8 On 25 August 2008, [Pi-Design and Others] filed a notice of appeal against each of those decisions of the Cancellation Division. 9 By [the decisions at issue], the First Board of Appeal of [EUIPO], on the basis of the absolute ground for refusal set out in Article 7(1)(e)(ii) of Regulation No [40/94], upheld the appeals and annulled the decisions of the Cancellation Division. 10 In paragraphs 24 to 28 of the [decisions at issue], the Board of Appeal observed, first, that, at the time the applications for registration were filed, the signs were simply classified as “figurative”, and no description was provided. Following the objections raised by the examiner, the applicant stated that the sign was a two-dimensional representation of the “shape of a product”, namely, the handle of a knife (Case R 1235/2008-1), or that it represented the “design of knife handles” (Case R 1237/2008-1). In correspondence subsequent to the application for a declaration of invalidity filed by [Pi-Design and Others], the sign was, however, described by the applicant as “an arbitrary geometrical figure” or a “pattern of dots” (Case R 1235/2008-1). 11 According to the Board of Appeal, that latter description was made with the specific aim of avoiding the application of Article 7(1)(e)(ii) of Regulation No [40/94], the photographs of the knives marketed by the proprietor confirming that the frame surrounding the black dots represented the contour of a knife handle and that those dots represented dents. 12 The Board of Appeal stated in that context, in paragraph 29 of the [decisions at issue], that “a trade mark must be examined in accordance with the circumstances of the case. Among these circumstances are, of course, the information and the documents voluntarily submitted by the trade mark owner in support of its application.” 13 Next, in paragraphs 30 and 31 of the [decisions at issue], the Board of Appeal stated that “the sign is a figurative mark consisting of the two-dimensional representation of the handle of the products for which registration is sought”. Nevertheless, according to the Board of Appeal, the classification of a mark as figurative did not always rule out the application of Article 7(1)(e)(ii) of Regulation No [40/94]. 14 Last, in paragraphs 33 to 41 of the [decisions at issue], the Board of Appeal considered whether the black dots representing dents performed a technical function. Based on the information relating to existing patents, it concluded that the dents were necessary to obtain a non-skid effect and that the fact that the same result could be obtained by other shapes did not preclude the applicability of the ground for refusal in question from applying. 15 Having declared the registrations invalid on the basis of Article 7(1)(e)(ii) of Regulation No [40/94], the Board of Appeal did not consider it necessary to rule on the other ground for invalidity relied on by [Pi-Design and Others], the admissibility of which was disputed by the applicant.’