ORDER OF THE GENERAL COURT (Tenth Chamber)
15 July 2021
(*)
(EU trade mark – Invalidity proceedings – EU figurative mark depicting an orange square containing seven concentric black circles – Absolute ground for refusal – Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(ii) of Regulation (EC) No 207/2009 (now Article 7(1)(e)(ii) of Regulation (EU) 2017/1001)
In Case T‑455/20,
Roxtec AB, established in Karlskrona (Sweden), represented by J. Olsson and J. Adamsson, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Wallmax Srl, established in Milan (Italy), represented by A. Bergmann, F. Ferrari and L. Goglia, lawyers,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 20 April 2020 (Case
R 2385/2018‑2), relating to invalidity proceedings between Wallmax and Roxtec,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 14 July 2020,
having regard to the response of EUIPO lodged at the Court Registry on 16 October 2020,
having regard to the response of the intervener lodged at the Court Registry on 12 October 2020,
makes the following
Order
Background to the dispute
1        On 11 November 2015, the applicant, Roxtec AB, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Class 17 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Cable and pipe penetration seals, made from plastic or rubber’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 2015/229 of 2 December 2015 and the mark at issue was registered on 10 March 2016 under No 14784375 in respect of the goods referred to in paragraph 3 above.
5        The applicant develops and markets sealing modules that were protected by patent until 2010.
6        On 29 March 2017, the intervener, Wallmax Srl, which produces and distributes similar sealing modules, filed an application for a declaration of invalidity of the contested mark on the basis of Article 52(1) of Regulation No 207/2009 (now Article 59(1) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (d) of Regulation No 207/2009 (now Article 7(1)(b) and (d) of Regulation 2017/1001) and Article 7(1)(e)(i) and (ii) of Regulation No 207/2009 (now Article 7(1)(e)(i) and (ii) of Regulation 2017/1001).
7        By decision of 16 November 2018, the Cancellation Division declared the contested mark invalid.
8        On 5 December 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
9        By decision of 20 April 2020 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(e)(ii) of that regulation.
10      In the first place, as regards the identification of the essential characteristics of the contested mark, the Board of Appeal took into account, in addition to the two-dimensional graphic representation as registered, the sealing module of the applicant, whose patent expired in 2010. In the light of those elements, it concluded that the concentric circles were the most important element of that mark. In the Board of Appeal’s view, the importance of the concentric circles was borne out, on the one hand, by the descriptions from the patent and from the applicant’s product catalogue and, on the other, by the other marks filed by the applicant, which differed from the contested mark only by their colour combination.
11      In the second place, as regards the technical function of the essential characteristics of the contested mark, the Board of Appeal considered that the concentric circles performed a technical function of the product concerned in that they represented the concentric removable sealing layers of that product, which could be stripped away one by one until the diameter adapted to the cable was obtained for perfect sealing. It further took the view that the concentric circles were necessary to obtain the technical result sought by the product, namely a tight fit for the secure insertion of a cable and perfect sealing regardless of the outside dimensions of that cable.
12      In the third place, the Board of Appeal found that the applicant had not shown that the box shape of the sealing module and the colour orange on which it relied also constituted essential characteristics of the contested mark.
13      In the fourth place, the Board of Appeal noted that the fact that the technical result could be achieved by other shapes was irrelevant. In the Board of Appeal’s view, it is clear that the contested mark, which does not have any essential ornamental characteristics, is likely unduly to impair the possibility for competitors to place on the market sealing modules whose function relies on the removal of concentric layers from a cylindrical cavity to ensure a secure connection with a pipe, tube, wire or cable.
Forms of order sought by the parties
14      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
16      The intervener contends that the Court should dismiss the action.
Law
17      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to rule by reasoned order, without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing (order of 6 October 2015, GEA Group v OHIM (engineering for a better world), T‑545/14, EU:T:2015:789, paragraph 13).
18      In the present case, the Court considers that it has sufficient information available to it from the material in the file and has decided, pursuant to that article, to give a decision without taking further steps in the proceedings.
19      Given the date on which the application for registration at issue was filed, namely 11 November 2015, which is determinative for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).
20      In this regard, it is important to note that Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), amended the wording of Article 7(1)(e)(ii) of Regulation No 207/2009, which concerns a substantive rule and, more precisely, one of the absolute grounds on which a sign may be refused registration or, in conjunction with Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), one of the absolute grounds on which a mark may be declared invalid. Regulation 2015/2424 entered into force on 23 March 2016 and it is not apparent from its wording, its objectives or its general scheme that Article 7(1)(e)(ii) of Regulation No 207/2009, in its version resulting from Regulation 2015/2424, should apply to situations existing before its entry into force.
21      In the present case, in paragraph 11 of the contested decision, the Board of Appeal stated that ‘all references made in th[at] decision should be seen as references to [Regulation 2017/1001], codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in th[at] decision’. In paragraph 15 of the contested decision, the Board of Appeal, however, recalled the wording of Article 7(1)(e)(ii) of Regulation No 207/2009 in the version applicable on the date on which the application for registration at issue was filed, namely 11 November 2015.
22      It follows from the scheme of the contested decision that, although the Board of Appeal cited Regulation 2017/1001 in paragraph 11 of the contested decision, it did not apply the amendment made by Regulation 2015/2424 to Article 7(1)(e)(ii) of Regulation No 207/2009. It must therefore be concluded that the contested decision is based on the provision that was applicable at the time, namely Article 7(1)(e)(ii) of Regulation No 207/2009, which provides for the refusal of registration of ‘signs which consist exclusively of … the shape
of goods which is necessary to obtain a technical result’.
23      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009. That plea is composed of three complaints, alleging, first, an incorrect assessment of the essential characteristics of the contested mark, secondly, an incorrect assessment of the functionality of the contested mark and, thirdly, failure to take account of other non-functional ways of using the contested mark.
24      It should be noted, in the first place, that, under Article 7(1)(e)(ii) of Regulation No 207/2009, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered.
25      The underlying rationale of Article 7(1)(e) of Regulation No 207/2009 is to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in competitors’ products (see judgment of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 26 and the case-law cited).
26      In that regard, the rules laid down by the legislature reflect the balancing of two considerations, both of which are likely to help establish a healthy and fair system of competition (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 27 and the case-law cited).
27      On the one hand, the inclusion in Article 7(1) of Regulation No 207/2009 of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 28 and the case-law cited).
28      On the other hand, by restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009 to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics. By the terms ‘exclusively’ and ‘necessary’, that provision ensures that solely shapes of goods which only incorporate a technical solution, and registration of which as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 29 and the case-law cited).
29      In the second place, it should be noted that the correct application of Article 7(1)(e)(ii) of Regulation No 207/2009 requires that the essential characteristics of a three-dimensional sign be properly identified by the authority deciding on the application for registration of that sign as a trade mark. The expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 68 and 69, and of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 30).
30      The identification of those essential characteristics must be carried out on a case-by-case basis. There is no hierarchy that applies systematically between the various types of elements of which a sign may consist. Moreover, when determining the essential characteristics of a sign, the competent authority may either base its assessment directly on the overall impression produced by the sign, or first examine in turn each of the components of the sign concerned (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 70, and of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 31).
31      Consequently, the identification of the essential characteristics of a three-dimensional sign with a view to a possible application of the ground for refusal under Article 7(1)(e)(ii) of Regulation No 207/2009 may, depending on the case, and in particular in view of its degree of difficulty, be carried out by means of a simple visual analysis of the sign or, on the contrary, be based on a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 32 and the case-law cited).
32      The possibility afforded to the competent authority to take into account relevant criteria that help to identify essential characteristics of a contested three-dimensional sign has been extended to the assessment of two-dimensional signs (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 33 and the case-law cited).
33      In the third place, it must be noted that, once the sign’s essential characteristics have been identified, EUIPO still has to ascertain whether they all perform a technical function with regard to the goods at issue. Article 7(1)(e)(ii) of Regulation No 207/2009 cannot be applicable where the application for registration as a trade mark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 34 and the case-law cited).
34      It is in the light of those principles that the Court must examine the arguments put forward in support of the single plea, alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009.
The first complaint, alleging an incorrect assessment of the essential characteristics of the contested mark
35      First, the applicant submits that, since the contested mark is a two-dimensional sign, the Board of Appeal must, as a first step, analyse it as depicted graphically in the trade mark application in order to determine its essential characteristics and then, as a second step, analyse those characteristics in relation to their functionality. The Board of Appeal incorrectly took into consideration background material in that first part of the analysis. In the applicant’s view, the Board of Appeal ought to have confined itself to determining the essential characteristics of the contested mark. However, the Board of Appeal concluded, solely in the light of the two technical drawings of the sealing module from the original patent document and of the description from the patent in question, that the contested mark depicted a sealing module and that the concentric circles were essential characteristics.
36      Secondly, the Board of Appeal gave disproportionate weight to the concentric circles in the contested mark in relation to other elements of equal importance, namely the combination of the colours orange and black, the colour orange per se, the box shape and the combination of those elements. The Board of Appeal allowed the technical information to influence the visual analysis of the contested mark. That visual analysis is, moreover, incorrect given that the orange area takes up more space than the concentric circles. In the applicant’s view, an independent observer, unaware of the product and its function, would consider that the colour combination is one of the most important elements of the sign. Similarly, for persons working in the field of maintenance and ‘classification staff’, the combination of colours would make it possible to determine who the manufacturer of that product is. The applicant submits that, since the relevant public is made up of specialist consumers, it will not perceive the contested mark as a depiction of the leading surface of a sealing module, but rather as a two-dimensional logo alluding to the product.
37      EUIPO and the intervener dispute those arguments.
38      As a preliminary point, it should be pointed out that, as the Board of Appeal correctly noted, the contested decision is subsequent to the order of 12 March 2020, Roxtec v EUIPO (C‑893/19 P, not published, EU:C:2020:209), and to the judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles (T‑261/18, EU:T:2019:674), both of which concerned the same parties and a mark, namely an EU figurative mark depicting a black square containing seven concentric blue circles, which is similar to the contested mark.
39      In the present case, it is apparent from the contested decision, as it is from the contested decision in the case referred to above, that, in order to determine the essential characteristics of the contested mark, the Board of Appeal took into account, in addition to the two-dimensional graphic representation of the contested mark as depicted in paragraph 2 above, the sealing module protected by the applicant’s patent, which expired in 2010 (paragraph 21 of the contested decision).
40      Thus, the Board of Appeal first described the applicant’s sealing module.
41      It noted that the relevant part of the description of the sealing module from the applicant’s patent indicated that the applicant’s invention, consisting of a lead through or transit seal, embodied a method to guarantee a tight fit for the secure insertion of a cable, wire, pipe or tube. The inner circular longitudinal cavity consisted of concentric removable sealing layers. The layers could be peeled away until the correct diameter was achieved for the insertion of a cable. The module consisted of high-quality rubber (paragraphs 23 and 24 of the contested decision). The Board of Appeal added that it was stated in the applicant’s product catalogue that the applicant’s module allowed for perfect sealing regardless of the outside dimensions of the cable or pipe concerned. That sealing module speeded up installation and reduced the need for stock, material and logistics. It also provided built-in spare capacity for future upgrades (paragraph 25 of the contested decision).
42      The contested decision also includes photographs of the applicant’s sealing module showing how the concentric removable sealing layers can be peeled off from each other in order to be able to insert different types of tube or cable into that sealing module (paragraphs 27 and 38 of the contested decision).
43      Next, the Board of Appeal carried out a visual analysis of the contested mark. It noted that that mark consisted of an orange square background containing seven black concentric circles. It considered, given the arrangement of the concentric circles and the colour contrast, that those circles constituted the most important element of the contested mark (paragraphs 34 and 36 of the contested decision).
44      Lastly, in the light of all those elements, the Board of Appeal concluded that the series of concentric circles making up the contested mark was the essential characteristic of that mark.
45      In so doing, the Board of Appeal did not, contrary to what the applicant submits, err in law or make an incorrect assessment.
46      In the first place, it should be borne in mind that, in accordance with the case-law set out in paragraphs 29 to 32 above, in order to identify the essential characteristics of a two-dimensional sign, such as the contested mark, the Board of Appeal may carry out a detailed examination that takes into account, in addition to the graphic representation and any descriptions filed at the time of the application for registration, relevant criteria that make it possible to assess what that mark actually represents. It is therefore necessary to reject at the outset the argument by which the applicant criticises the Board of Appeal for having used background material to determine the essential characteristics of the contested mark.
47      In the second place, a simple visual analysis of the contested mark, as depicted in paragraph 2 above, shows that that mark consists of an orange square containing several concentric circles. A black horizontal dividing line splits the square into two equal parts. Given that the concentric circles are in the centre, take up at least three quarters of the sign and stand out as a result of the contrast between the colours black and orange, it must be stated that those circles are indeed the most important element of the contested mark.
48      In the third place, a comparison between the contested mark and the photographs of the sealing module, which are taken from the applicant’s advertising materials and shown in paragraphs 27 and 38 of the contested decision, reveals that that mark hardly differs at all from the leading surface of that module, which consists of a square shape from which the ends of the concentric removable sealing layers lining the inside of the cylindrical cavity can be seen, and which is split by a thin horizontal line.
49      A more detailed examination also makes it possible to note, as the Board of Appeal did, that, first, the importance of the concentric circles in the contested mark, which depict the concentric removable sealing layers of the sealing module, is borne out by the descriptions of the invention from the expired patent and from the applicant’s product catalogue, those descriptions indicating that the sealing module is made up of concentric removable sealing layers and that it is precisely those layers which allow for ‘perfect sealing regardless of the outside dimensions of the cable or pipe’. Secondly, the importance of the concentric removable sealing layers is illustrated by the photographs of the sealing module taken from the applicant’s advertising materials and reproduced in paragraph 27 of the contested decision, all of which show the leading surface of that module and which reveal its constituent concentric removable sealing layers. Thirdly, the importance of those sealing layers is borne out by the other marks filed by the applicant and reproduced in paragraphs 13 and 40 of the contested decision, all of which contain a series of concentric circles in different colour combinations.
50      In the light of all the foregoing, the Board of Appeal was correct to conclude that the concentric circles in question were the only essential characteristic of the contested mark.
51      Contrary to what the applicant claims, the Board of Appeal did not disregard other elements of equal importance, which would be the combination of the colours orange and black, the colour orange per se, the ‘box shape’ and the combination of those elements. First of all, the visual analysis of the contested mark showed, in paragraph 47 above, that the colour combination in question served only to enable the series of concentric circles in that mark to stand out as a result of the contrast created between the colours black and orange. It is therefore not that colour combination that is the most important element of the contested mark, but rather the series of concentric circles. As regards the ‘orange-coloured area’, which, in the applicant’s view, takes up more space than the concentric circles, the finding is the same given that that ‘area’ merely accentuates the colour contrast.
52      Next, as regards the colour orange per se, it must be noted that, as stated in paragraph 48 above, the detailed examination of the contested mark showed that other marks filed by the applicant all contained the same series of concentric circles, but in different colour combinations. The Board of Appeal was therefore correct to note, in paragraph 47 of the contested decision, that the existence of those other marks, the colour combination of which is different, was such as to weaken the applicant’s argument that the colours were an important characteristic of the contested mark. In any event, the applicant has not adduced any evidence capable of demonstrating to the requisite legal standard that, in the present case, the colour orange was an essential characteristic of that mark.
53      Lastly, in order to support its view that the combination of the colours orange and black, the colour orange and the ‘box shape’ would not be of minor importance, the applicant confines itself to alleging that the Board of Appeal took into account background material, in particular the functionality of the shape at issue, in order to determine the essential characteristics of that shape. However, that argument has already been rejected in paragraph 46 above. Furthermore, it must be borne in mind that the determination of the essential characteristics of the shape at issue is made, in the context of Article 7(1)(e)(ii) of Regulation 2017/1001, with the specific aim of examining the functionality of that shape (see, to that effect, judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 55).
54      Accordingly, the applicant’s arguments relating to the combination of the colours orange and black, the colour orange per se, the box shape and the combination of those elements are not capable of calling in question the conclusion set out in paragraph 50 above and must be rejected.
55      Moreover, the presumed perception of the contested mark by the ‘independent observer unaware of the product and its function’ or by ‘specialised consumers’, as referred to by the applicant, is not a decisive element when applying the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009.
56      Article 7(1)(e) of Regulation No 207/2009 concerns certain signs which are not such as to constitute trade marks and is a preliminary obstacle liable to prevent a sign consisting exclusively of the shape of a product from being registered (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 52 and the case-law cited). If any one of the criteria listed in that provision is satisfied, a sign consisting exclusively of the shape of the product or of a graphic representation of that shape cannot be registered as a trade mark.
57      Unlike signs which come within the scope of one of the grounds listed in Article 7(1)(b) to (d) of Regulation No 207/2009 and which may, under Article 7(3) of that regulation, acquire distinctive character through the use made of them, a sign which is refused registration under Article 7(1)(e) of Regulation No 207/2009 can never acquire such distinctive character (see, by analogy, judgment of 18 June 2002, Philips, C‑299/99, EU:C:2002:377, paragraph 75).
58      Thus, unlike in the situation covered by Article 7(1)(b) of Regulation No 207/2009, where the perception of the relevant public must be taken into account, since it is essential in order to determine whether the sign filed for registration as a trade mark enables the goods or services concerned to be recognised as originating from a particular undertaking, no such obligation may be imposed when applying the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009. The presumed perception of the sign by the relevant public is not a decisive element when applying the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009, but, at most, may be a relevant criterion of assessment for the competent authority in identifying the essential characteristics of the sign. Consequently, the identification of the essential characteristics of a sign in the context of Article 7(1)(e)(ii) of Regulation No 207/2009 must not necessarily be carried out from the perspective of the relevant public (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 54 and the case-law cited).
59      In the present case, it must be recalled that the determination of the essential characteristics of the shape at issue is made, in the context of Article 7(1)(e)(ii) of Regulation No 207/2009, with the specific aim of examining the functionality of that shape (judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 55). In those circumstances, contrary to what the applicant submits, the perception of an independent observer unaware of the product and its function is not relevant to the identification of those characteristics. For that observer, who does not have the technical knowledge necessary to assess the essential characteristics of a shape, certain characteristics might appear essential even though they would not be in the context of an analysis carried out objectively on the basis of the graphic representation of the contested mark and any descriptions filed at the time of the application for the trade mark.
60      As regards the specialist consumer, who, in the applicant’s view, would determine who the manufacturer of the goods concerned is as a result of the colour combination in question and who would perceive the contested mark as a two-dimensional logo alluding to those goods, it must be borne in mind that the distinctive character of the element of a sign is not relevant for the purposes of identifying its essential characteristics when applying Article 7(1)(e)(ii) of Regulation No 207/2009 (judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 58).
61      Although, under Article 7(1)(b) of Regulation No 207/2009, the perception of the relevant public seeks to determine whether the sign at issue enables the goods or services concerned to be recognised as originating from a given undertaking, in the present case that perception merely serves, as a relevant criterion of assessment, to determine which elements are perceived as being the most important ones, with the specific aim of examining the functionality of the shape at issue. It follows from an objective analysis of the contested mark which is set out, in particular, in paragraphs 46 to 50 above that the series of concentric circles is the only essential characteristic of that mark, with the result that the applicant cannot properly rely, in order to cast doubt on that conclusion, on any perception of the specialist public.
62      In the light of all the foregoing, the Board of Appeal was correct to conclude that the concentric circles in question were the only essential characteristic of the contested mark. Accordingly, it is necessary to reject the applicant’s first complaint, alleging an incorrect assessment of the essential characteristics of the contested mark.
The second complaint, alleging an incorrect assessment of the functionality of the contested mark
63      The applicant claims that the Board of Appeal incorrectly assessed the functionality of the essential characteristics of the contested mark. It alleges that the Board of Appeal did not analyse the combination of the colours orange and black in the context of functionality. In the applicant’s view, if it had done so, it would have found that that colour combination did not fulfil a technical function. The same applies with regard to the colour orange per se. Since the colour combination in question is one of the most important characteristics of the contested mark, it is a major non-functional element that precludes the application of Article 7(1)(e)(ii) of Regulation No 207/2009.
64      EUIPO and the intervener dispute those arguments.
65      In the present case, it is apparent from the analysis of the first complaint that the contested mark is a two-dimensional representation of the leading surface of a sealing module and that the series of concentric circles of which it is composed is its essential characteristic.
66      Since the essential characteristic of the contested mark was correctly identified by the Board of Appeal, it is now appropriate to ascertain whether the Board of Appeal made an incorrect assessment, as the applicant claims, of the function that that characteristic fulfils.
67      In that regard, it should be borne in mind that, in examining the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 207/2009, which concerns only signs which consist of the shape of the actual goods, the functions performed by the essential characteristics of the shape must be assessed in the light of the actual goods concerned (see, to that effect, judgment of 10 November 2016, Simba Toys v EUIPO, C‑30/15 P, EU:C:2016:849, paragraph 46 and the case-law cited).
68      The technical functionality may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned (see judgment of 24 September 2019, Representation of a black square containing seven concentric blue circles, T‑261/18, EU:T:2019:674, paragraph 35 and the case-law cited).
69      The absolute ground for refusal provided for in Article 7(1)(e)(ii) of Regulation No 207/2009 may apply to signs consisting of the shape of goods the graphic representation of which does not reveal all the elements which are necessary for the implementation of the technical solution concerned, provided it is shown that the implementation of that technical solution cannot be effective without the essential characteristics which are visible in that graphic representation (see, to that effect, judgment of 24 October 2019, Rubik’s Brand v EUIPO – Simba Toys (Shape of a cube with surfaces having a grid structure), T‑601/17, not published, EU:T:2019:765, paragraph 96).
70      In the first place, as regards the technical result sought by the actual product concerned, it should be noted that the Board of Appeal defined it, in the light of the description of the sealing module from the expired patent, as being to guarantee ‘a tight fit for the secure insertion of a cable, tube or wire’ and to allow for ‘perfect sealing regardless of the outside dimensions of the cable or pipe’. It follows from that description that that technical result is obtained by peeling away the removable sealing layers, given that it is stated therein that ‘th[ose] layers are peeled away until the correct diameter is achieved for the insertion of a cable’.
71      The applicant does not dispute that definition of the technical result sought by the product concerned, which is, moreover, confirmed by the product catalogue. As the Board of Appeal noted, it is specified in that catalogue that the product in question is ‘based on peelable layers’, thus demonstrating that the concentric removable sealing layers are the main technical concept on which the sealing module is based.
72      In the second place, as regards the analysis of the functionality of the essential characteristic of the contested mark, it must be considered, as the Board of Appeal did, that the series of concentric circles in question is necessary to obtain the intended technical result.
73      As the Board of Appeal noted, the concentric circles on the face of the sealing module are not imaginative or purely decorative elements. They are the visible consequence of the plurality of sealing layers that are to be stripped away so that a cable,
wire, pipe,
or tube can be inserted into the unit to form a secure fit. Each concentric circle corresponds to a side view of the removable layer. The plurality of concentric removable sealing layers, represented by the concentric circles in the contested mark, enables the user to strip away the layers one by one in order to achieve the intended diameter for the insertion of the cable or pipe concerned and thus fulfils a technical function of the product. Such concentric removable sealing layers are necessary to guarantee a tight fit for the secure insertion of a cable,
wire, pipe,
or tube and to allow for perfect sealing regardless of the outside dimensions of that cable, wire, pipe or tube, as is confirmed, moreover, by the description of the sealing module and the applicant’s advertising materials, which are referred to in paragraphs 70 and 71 above.
74      As the Board of Appeal noted, in essence, in paragraph 39 of the contested decision, without the series of concentric circles in the contested mark, in other words the ‘plurality of layers’, the product concerned would not function. In order to function, it must take that form. The cross-section must be circular, since that is the shape of the cross-section of the items to be inserted into the module, namely the cables or tubes. Similarly, the layers must be concentric so that they can be stripped away one by one until the desired cavity diameter is obtained in order to securely fit a pipe, tube, wire or cable.
75      It follows from the foregoing that the characteristic of the contested mark, in the present case the concentric circles, which was correctly regarded as essential by the Board of Appeal, is necessary to obtain the technical result sought by the actual product concerned.
76      However, in the applicant’s view, the combination of the colours black and orange and, in any event, the colour orange would be major non-functional elements that preclude the application of Article 7(1)(e)(ii) of Regulation No 207/2009.
77      It must be borne in mind in that regard that, as is apparent from the case-law referred to in paragraph 33 above, in order to preclude the application of the absolute ground for refusal laid down in Article 7(1)(e)(ii) of Regulation No 207/2009, the application for registration as a trade mark must relate to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role.
78      In the present case, it is apparent from paragraphs 51 to 53 above that the applicant has failed to establish to the requisite legal standard that the combination of the colours black and orange and the colour orange per se constituted an essential characteristic of the contested mark, namely one of its most important elements. In those circumstances, those two elements must be regarded as being arbitrary and minor. The presence of one or more minor, arbitrary elements is not such as to preclude the application of Article 7(1)(e)(ii) of Regulation No 207/2009. The applicant’s arguments on that point must therefore be rejected.
79      In the light of all the foregoing, it must be stated that the Board of Appeal did not make an incorrect assessment, contrary to what was alleged by the applicant. The Board of Appeal was correct to consider that the only essential characteristic of the contested mark, in the present case the series of concentric circles representing the plurality of concentric removable sealing layers, was necessary to obtain the technical result sought by the actual product concerned. Since the essential characteristic of the contested mark is indeed necessary to obtain the technical result sought by the product concerned, it should be concluded that that mark comes within the scope of the ground referred to in Article 7(1)(e)(ii) of Regulation No 207/2009.
80      Consequently, the applicant’s second complaint, alleging an incorrect assessment of the functionality of the contested mark, cannot be accepted.
The third complaint, alleging failure to take account of other non-functional ways of using the contested mark
81      The applicant submits that the contested mark is a two-dimensional logo. The Board of Appeal thus wrongfully disregarded other ways of using the contested mark. In that regard, the applicant adduces several items of evidence intended to show that it uses a sign similar to the contested mark as a logo, in particular for its product catalogue, to enable its booth to be identified at exhibition fairs, on product packaging, for advertising and on its website. In the applicant’s view, the Court of Justice has already held that it was wrongful to preclude the registration of a mark solely because an absolute ground for refusal applied with respect to one use of that mark, while another likely use of that mark did not come within the scope of an absolute ground for refusal. It considers that the contested mark does not prevent its competitors from applying the technical solution that that mark is assumed to reflect.
82      EUIPO and the intervener dispute those arguments.
83      By its arguments, the applicant requests that the Court apply by analogy the case-law arising from the judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas ?) (C‑541/18, EU:C:2019:725), to the present case. According to that case-law, the competent authorities which have to determine the distinctive character of a sign in respect of which registration as a trade mark is sought must, when it is apparent from the customs of the economic sector concerned that several uses of the mark are practically significant, take into consideration those various uses in order to determine whether the average consumer of the goods or services covered will perceive that sign as an indication of the commercial origin of those goods or services (see, to that effect, judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas ?), C‑541/18, EU:C:2019:725, paragraphs 24 and 25). The Court of Justice thus held that all the likely types of use of the mark applied for, namely those which are practically significant in the economic sector in question, formed part of the relevant facts and circumstances for assessing the perception of the average consumer of the goods or services concerned (see, to that effect, judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas ?), C‑541/18, EU:C:2019:725, paragraph 33).
84      In that regard, it must be borne in mind that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 207/2009 must be interpreted in the light of the public interest underlying them (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43). As noted in paragraphs 25 to 28 above, the interest underlying Article 7(1)(e)(ii) of Regulation No 207/2009 is to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product.
85      Although, when applying Article 7(1)(b) of Regulation No 207/2009, the competent authority must take into consideration the various ways in which a mark is likely, if registered, to be presented to the relevant public in order to determine whether that public will perceive the sign at issue as an indication of the commercial origin of the goods or services concerned, no such obligation may be imposed when applying the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009.
86      As is correctly submitted, in essence, by EUIPO, for the purposes of applying Article 7(1)(e)(ii) of Regulation No 207/2009, the competent authority must only determine, on an objective basis, whether the sign at issue consists exclusively of the shape of the product concerned which is necessary to obtain a technical result. Furthermore, as has already been noted in paragraph 57 above, a sign which is refused registration under Article 7(1)(e) of Regulation No 207/2009 can never become distinctive, for the purposes of Article 7(3) of that regulation, through the use which has been made of it. Thus, although, when applying Article 7(1)(e)(ii) of Regulation No 207/2009, the perception of the relevant public may, at most, be a relevant criterion of assessment for the competent authority in identifying the essential characteristics of a sign, it can never preclude the application of that provision.
87      In the present case, even if the applicant were to use the contested mark as a logo and that mark were to fulfil the function of identifying the origin of the goods concerned, since it has been established that the contested mark came within the scope of the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009, those circumstances are irrelevant.
88      Furthermore, contrary to what the applicant claims, the fact that it would use the contested mark without ‘any link to a technical solution’, in particular as a logo, has no bearing on the possibility for competitors to use or adapt the technical solution in question. As the Board of Appeal observed and as the analysis of the first two complaints has established, the registration of the contested mark by the applicant actually impedes the use by other undertakings of the main technical concept on which the sealing module is based, namely the plurality of layers that can be stripped away and that are depicted visibly in the form of concentric circles.
89      Consequently, the third complaint, alleging failure to take account of other non-functional ways of using the contested mark, must be rejected.
90      It follows from all of the foregoing that the single plea raised by the applicant, alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009, is manifestly lacking any foundation in law and that the action must be dismissed in its entirety.
Costs
91      Pursuant to Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
92      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. Since the intervener has not applied for costs, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Roxtec AB shall bear its own costs and pay the costs incurred by the European Union Intellectual Property Office (EUIPO).
3.      Wallmax Srl shall bear its own costs.
Luxembourg, 15 July 2021.
E. Coulon
A. Kornezov
Registrar
President
*      Language of the case: English.