62022TJ0297
JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 December 2023 (
*1
)
(EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of a toy figure with a protrusion on its head – Absolute grounds for invalidity – Sign consisting exclusively of the shape which results from the nature of the goods themselves – Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(i) and (ii) of Regulation (EC) No 40/94 (now Article 7(1)(e)(i) and (ii) of Regulation (EU) 2017/1001))
In Case T‑297/22,
BB Services GmbH, established in Flörsheim am Main (Germany), represented by M. Krogmann, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Nicolás Gómez and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Lego Juris A/S, established in Billund (Denmark), represented by V. von Bomhard and J. Fuhrmann, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and E. Tichy-Fisslberger, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 16 March 2023,
gives the following
Judgment
1
By its action under Article 263 TFEU, the applicant, BB Services GmbH, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 March 2022 (Case R 1355/2021-5) (‘the contested decision’).
Background to the dispute
2
On 25 June 2020, the applicant applied to EUIPO for a declaration of invalidity of the EU trade mark which had been registered on 18 April 2000 under number 50450, on the basis of distinctive character acquired through use, following an application for registration filed on 1 April 1996 by Kirkbi A/S, the predecessor in title of the intervener, Lego Juris A/S, in respect of the following three-dimensional sign:
3
The goods covered by the contested trade mark in respect of which invalidity was sought fell within Classes 9, 25 and 28 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 corresponded, for each of those classes, to the following description:
–
Class 9: ‘Magnets (Decorative -); Computer games programs; Downloadable computer games, recorded data and information carriers’;
–
Class 25: ‘Clothing, footwear, headgear’;
–
Class 28: ‘Games and playthings’.
4
The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 59(1)(a) of 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), read in conjunction with Article 7(1)(e)(i) and (ii) of that regulation.
5
On 25 June 2021, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
6
On 3 August 2021, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7
By the contested decision, the Board of Appeal dismissed the appeal in its entirety. In essence, it found that it had not been shown that the contested trade mark, in the shape of a toy figure with a protrusion on its head, fell within the grounds for invalidity of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(e)(i) and (ii) of that regulation, in respect of all the goods in Classes 9, 25 and 28.
Forms of order sought
8
The applicant claims that the Court should:
–
annul the contested decision;
–
declare the contested trade mark invalid;
–
order EUIPO to pay the costs.
9
EUIPO and the intervener contend, in essence, that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
Law
10
Having regard to the date of filing of the application for registration at issue, namely 1 April 1996, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation 2017/1001) (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).
11
Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision, and by the parties in their written pleadings, to Article 7(1)(e)(i) and (ii) and Article 59(1)(a) of Regulation 2017/1001 must be understood as referring, respectively, to Article 7(1)(e)(i) and (ii) and Article 51(1)(a) of Regulation No 40/94, the wording of which is essentially identical so far as the present dispute is concerned.
12
Moreover, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the present dispute is governed by the procedural provisions of Regulation 2017/1001.
The claim for a declaration of invalidity of the contested trade mark
13
By its second head of claim, the applicant requests the Court to declare the contested trade mark invalid.
14
In that regard, it must be held that, by requesting the Court to declare the contested trade mark invalid, the applicant has made an application for alteration, under Article 72(3) of Regulation 2017/1001, asking the Court to adopt the decision which the Board of Appeal ought to have taken (see, to that effect, judgment of 21 March 2012, Feng Shen Technology v OHIM – Majtczak (FS), T‑227/09, EU:T:2012:138, paragraph 54 and the case-law cited).
Admissibility
Admissibility of the action as regards the goods in Classes 9 and 25
15
EUIPO and the intervener contend that the action is inadmissible as regards the goods in Classes 9 and 25. In particular, EUIPO contends that the observations set out in the application are limited to the lack of ability of the contested trade mark to protect in respect of games and playthings in Class 28, but that, by contrast, the application does not contain any argument calling into question the legality of the contested decision as regards the other goods in Classes 9 and 25.
16
Under Article 177(1)(d) of the Rules of Procedure of the General Court, each application must state, inter alia, the subject matter of the proceedings, the pleas in law and arguments relied on. That statement must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if appropriate, without other information in support. In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, even if only stated briefly, provided that the statement is coherent and comprehensible (see judgment of 7 December 2022, Borussia VfL 1900 Mönchengladbach v EUIPO – Neng (Fohlenelf), T‑747/21, not published, EU:T:2022:773, paragraph 17 and the case-law cited).
17
In the present case, it must be stated that the application does not contain any specific argument with regard to the goods in Classes 9 and 25 and, in particular, does not set out the reasons why Article 7(1)(e)(i) or (ii) of Regulation No 40/94 should apply to those goods. Accordingly, the application does not satisfy the minimum requirements of Article 177(1)(d) of the Rules of Procedure as regards those goods.
18
It follows that the action must be dismissed as inadmissible in so far as it concerns the goods in Classes 9 and 25.
The applicant’s general reference to its written submissions before EUIPO
19
In paragraphs 18, 54 and 68 of the application, the applicant refers to all the evidence which it previously set out before the Cancellation Division and the Board of Appeal. It seeks to include that evidence in the grounds of the present action.
20
In that regard, it should be recalled that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure, the application must contain the pleas in law and arguments relied on and a summary of those pleas in law. According to settled case-law, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself. It is not for the Court to take on the role of the parties by seeking to identify the relevant material in the documents to which they refer (see judgments of 8 July 2010, Engelhorn v OHIM – The Outdoor Group (peerstorm), T‑30/09, EU:T:2010:298, paragraphs 18 and 19 and the case-law cited, and of 2 March 2022, Distintiva Solutions v EUIPO – Makeblock (Makeblock), T‑86/21, not published, EU:T:2022:107, paragraph 22 and the case-law cited).
21
It follows that the application, to the extent that it refers to the written submissions to EUIPO, is inadmissible in so far as the general reference which it contains cannot be connected to pleas and arguments developed in that application itself.
Substance
22
In support of the action, the applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 7(1)(e)(i) of Regulation No 40/94, read in conjunction with Article 51(1)(a) of that regulation, and, second, infringement of Article 7(1)(e)(ii) of Regulation No 40/94, read in conjunction with Article 51(1)(a) of that regulation. It submits, first, that the contested trade mark consists exclusively of a shape which results from the nature of the goods themselves and, second, that that mark consists exclusively of a shape which is necessary to obtain a technical result.
23
It is apparent in particular from Article 51(1)(a) of Regulation No 40/94 that an EU trade mark is to be declared invalid on application to EUIPO where that mark has been registered in breach of the provisions of Article 7 of that regulation.
24
Under Article 7(1)(e)(i) and (ii) of Regulation No 40/94, signs which consist exclusively of the shape which results from the nature of the goods themselves or of the shape which is necessary to obtain a technical result are not to be registered.
25
The immediate aim of the prohibition on registering the shapes referred to in Article 7(1)(e) of Regulation No 40/94 is to prevent the exclusive and permanent right conferred by a trade mark from serving to extend, indefinitely, the life of other rights which the EU legislature sought to make subject to limited periods (see, to that effect and by analogy, judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 45, and of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraphs 19 and 20).
26
The EU trade mark enjoys a presumption of validity, with the result that it is for the applicant for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (see, to that effect, judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraphs 27 and 28).
27
In the present case, in order to show that the contested trade mark falls within the grounds for invalidity set out in Article 7(1)(e)(i) and (ii) of Regulation No 40/94, the applicant submitted to EUIPO the following evidence, referred to in paragraph 38 of the contested decision:
–
BDR 1: extract from the register of the contested trade mark;
–
BDR 2: overview of the history and evolution of the ‘minifigure’ since 1975;
–
BDR 3: extract from Lego Minifigure year by year – A Visual History (Dorling Kindersley, London, 2013);
–
BDR 4: extract from Das Lego Buch (Dorling Kindersley, Munich, 2020);
–
BDR 5: extract from Lego Minifiguren, eine Erfolgsgeschichte von 1978 bis heute (Dorling Kindersley, Munich, 2010);
–
BDR 6: US patent No 3005282 of 24 October 1961 for the Lego brick (Toy Building Brick);
–
BDR 7: United Kingdom patent specification No 866557 of 26 April 1961 on improvements relating to toy building sets;
–
BDR 8: extract from Lego Minifigure year by year – A Visual History (Dorling Kindersley, London, 2013);
–
BDR 9: German patent specification No DE 28 36971 C2 relating to the design of joinable elements enabling the legs of the figure at issue to be rotated.
28
As a preliminary point, it should be noted that the contested trade mark has already been the subject of the judgment of 16 June 2015, Best-Lock (Europe) v OHIM – Lego Juris(Shape of a toy figure with protrusion) (T‑396/14, not published, EU:T:2015:379), confirmed by the order of 14 April 2016, Best-Lock (Europe) v EUIPO (C‑452/15 P, not published, EU:C:2016:270). In that judgment, the General Court dismissed an application for a declaration of invalidity based on the same grounds as those relied on in the present case, but brought by a separate applicant from the applicant in the present case. Since the parties are not identical, that judgment does not have, therefore, the force of res judicata with regard to the present case.
The first plea, alleging infringement of Article 7(1)(e)(i) of Regulation No 40/94
29
The applicant submits that the Board of Appeal made errors of assessment in applying the ground for refusal set out in Article 7(1)(e)(i) of Regulation No 40/94.
30
In the first place, as regards the nature of the goods at issue, the applicant submits that they are ‘interlocking building figures’ compatible with the intervener’s modular building system. It criticises the Board of Appeal for not basing its assessment on the actual goods, but more generally on a ‘toy figure’ in the category of games and playthings in Class 28.
31
In the second place, as regards the essential characteristics of the contested trade mark, the applicant submits that they should be assessed in the light of the specific shape of that mark. In the applicant’s view, a characteristic may be essential within the meaning of the case-law, although not one of the most important. It submits that those characteristics include not only the head, body, arms and legs, but also the protrusion on the figure’s head, the hands equipped with hooks and the hollow parts at the back of the legs and under the feet, in order to be joined with other building bricks of the intervener.
32
In the third place, as regards the generic function of the goods, the applicant submits that it demonstrated that the contested trade mark and its individual elements, in particular the head, torso, arms and legs, were also designed in all respects in such a way that the interlocking building figure at issue and its individual elements reproduced in that trade mark were compatible and capable of being joined with other interlocking building figures and other building bricks of the intervener. None of the characteristics of that trade mark, still less any essential characteristic thereof, or the contested trade mark as a whole has any decorative or imaginative element that goes beyond the functionality described. The decisive factor is that all the visible features of that trade mark, that is to say the shape given to the head, body, arms and legs, serve exclusively to ensure the disassemblable nature, stackable nature or compatibility of that figure within the intervener’s modular building system and thereby have been given a functional shape. Thus, the shape of the head is entirely designed to enable it to be joined immediately with other bricks of the intervener and the same is true of all the other elements of that mark, in particular the torso, arms and legs.
33
The applicant concludes that each of the technical and functional characteristics of the contested trade mark forms, in that regard, a ‘generic’ characteristic, for the purposes of Article 7(1)(e)(i) of Regulation No 40/94, for an interlocking building figure, and results from the nature of the goods. It emphasises that the question whether the goods may also take on an alternative shape is of little importance in the context of that provision.
34
EUIPO and the intervener dispute the arguments put forward by the applicant.
35
Under Article 7(1)(e)(i) of Regulation No 40/94, signs which consist exclusively of the shape which results from the nature of the goods themselves are not to be registered.
36
In order to apply Article 7(1)(e)(i) of Regulation No 40/94 correctly, it is necessary to identify the essential characteristics, that is, the most important elements of the sign concerned, on a case-by-case basis, that assessment being based either on the overall impression produced by the sign or on an examination of each of the components of that sign in turn (see, to that effect and by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 21 and the case-law cited).
37
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)(i) of Regulation No 40/94 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 that sign or, on the other hand, be based on a detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions (see, by analogy, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 71).
38
Thus, the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration (see, by analogy, judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 54).
39
It follows that, while the identification of the essential characteristics of the sign at issue must, in principle, begin with the assessment of the graphic representation of that sign, the competent authority may also refer to other useful information that allows it to correctly identify those characteristics, such as the perception of the relevant public (see, by analogy, judgment of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraphs 30, 31 and 37).
40
It is thus apparent from the case-law cited in paragraphs 37 to 39 above, relating to Article 7(1)(e)(ii) of Regulation No 40/94 and applicable by analogy, mutatis mutandis, to paragraph 1(e)(i) of that same article, that information other than the graphic representation alone, such as the perception of the relevant public, may be used to identify the essential characteristics of the sign at issue.
41
In order to analyse the shape which results from the nature of the goods within the meaning of Article 7(1)(e)(i) of Regulation No 40/94, the essential characteristics of the sign must, as far as possible, be assessed in the light of the nature of the actual goods represented. Such an analysis cannot be carried out without taking into consideration, where appropriate, the additional elements relating to the nature of the actual goods, even if they are not visible in the graphic representation (see, by analogy, judgments of 10 November 2016, Simba Toys v EUIPO, C‑30/15 P, EU:C:2016:849, paragraphs 46 and 48, and of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraph 33).
42
When applying the ground for refusal set out in Article 7(1)(e)(i) of Regulation No 40/94, account should be taken of the fact that the concept of a ‘shape which results from the nature of the goods themselves’ means that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration (see, by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 25).
43
Moreover, it is clear that those are essential characteristics which consumers will be looking for in the goods of competitors, given that they are intended to perform an identical or similar function (see, by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 26).
44
However, Article 7(1)(e)(i) of Regulation No 40/94 cannot apply where the trade mark application relates to a product shape in which another element, such as a decorative or imaginative element, which is not inherent to the generic function of the goods, plays an important or essential role (see, to that effect and by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 22 and the case-law cited).
45
It follows that the ground for refusal set out in Article 7(1)(e)(i) of Regulation No 40/94 cannot apply where there is at least one essential characteristic of the shape which does not result from the nature of the goods themselves, with the result that the contested trade mark does not consist ‘exclusively’ of the shape which results from the nature of the goods themselves.
46
It is in the light of those principles that the merits of the first plea in law must be examined.
– The determination of the nature of the goods
47
As regards the nature of the goods at issue, the Board of Appeal stated, in paragraphs 41 to 44 of the contested decision, that it was ‘undoubtedly’ apparent, both from the evidence adduced by the applicant and from practical experience, that this was the Lego toy figure and not an interlocking building figure as the applicant claimed. According to the Board of Appeal, while it was admittedly undeniable that the Lego toy figure was compatible with the intervener’s modular building system (of which it was not necessarily a ‘part’, unlike the Lego brick), it was nevertheless also well known that it was, as a matter of principle, possible to play with that toy figure in the same way as with any toy figure (that is to say, by holding it, moving it, disassembling it, and so forth), without necessarily having to combine it with the modular building system. The Board of Appeal therefore established that the present case concerned a toy figure included in the category of ‘games and playthings’ in Class 28.
48
In the context of the first plea in law, the applicant first of all criticises the Board of Appeal for having defined the nature of the goods as being that of a ‘toy figure’. According to the applicant, the goods are clearly ‘interlocking building figures’ compatible with the intervener’s modular building system. It is, therefore, necessary to assess the essential characteristics of the contested trade mark in relation to the actual goods constituted by such interlocking building figures. Those characteristics cannot be limited in the abstract to the head, torso, arms and legs of the toy figure.
49
It must be stated at the outset that the figure at issue constitutes, inter alia, a ‘toy figure’ which can be perceived and used for play purposes without hindrance or constraint, independently of other goods or toys in general and, more particularly, of the intervener’s modular building system. By way of evidence, in paragraph 74 of the contested decision, the Board of Appeal rightly referred to Annex BDR 3, produced by the applicant, according to which the figure at issue was created to participate in ‘role-play’ and ‘storytelling’.
50
There is nothing in the file to suggest that the toy figure at issue could be used only in combination with the intervener’s building bricks. The presence of a protrusion or holes on that toy figure cannot be decisive in that regard. Accordingly, the play purpose of that toy figure cannot be restricted to that of an ‘interlocking building figure’.
51
The Board of Appeal was therefore right to find, in paragraph 44 of the contested decision, that the figure at issue was a toy figure included in the category of ‘games and playthings’ in Class 28.
52
That being so, it must be held that the figure at issue also constitutes an ‘interlocking building figure’ compatible with the intervener’s building bricks system and included in a generic subcategory of ‘games and playthings’ in Class 28.
53
In the present case, unlike the earlier invalidity proceedings which gave rise to the judgment of 16 June 2015, Shape of a toy figure with protrusion (T‑396/14, not published, EU:T:2015:379), it must be held, on the basis of the applicant’s specific account in the present proceedings, that the interlocking nature of the figure at issue in the context of a modular building system may be inferred from the contested trade mark in the light of its graphic representation; that interlocking nature may also be inferred, however, from other useful information, in particular the public’s knowledge of modular building systems such as that of the intervener, as is apparent from the documents placed on the file by the applicant (see paragraph 27 above), in so far as they relate to the pleas and arguments which the applicant develops before the Court (see paragraph 21 above).
54
Thus, it is apparent from Annex BDR 3, consisting of an extract from the book Lego Minifigure year by year – A Visual History, that Lego figures ‘have connectors on their bodies that are compatible with Lego bricks and other elements’ and that they ‘can be disassembled and combined with parts of other minifigures to create an entirely new character’.
55
Furthermore, the public’s knowledge of modular building systems, such as that of the intervener, is well known within the meaning of the case-law, that is to say, a fact which is likely to be known by anyone or which may be learnt from generally accessible sources, without evidence being required in that regard (see, to that effect, judgments of 10 November 2011, LG Electronics v OHIM, C‑88/11 P, not published, EU:C:2011:727, paragraphs 27 to 29 and the case-law cited, and of 24 October 2018, Bayer v EUIPO – Uni-Pharma (SALOSPIR), T‑261/17, not published, EU:T:2018:710, paragraph 42 and the case-law cited). Thus, the Court of Justice has held that it is not necessary to establish the accuracy of facts which are well known and that, in addition, the finding, by the General Court, as to whether or not the facts concerned are well known is a factual assessment (see, to that effect, judgment of 17 September 2020, EUIPO v Messi Cuccittini, C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722, paragraph 57 and the case-law cited).
56
It therefore follows from the ability of the figure at issue to be assembled and disassembled and from its compatibility with the intervener’s building bricks that that figure is also included in the category of ‘interlocking building figures’. Contrary to what the intervener claims, that category is not specifically limited to the figure at issue, but may contain many other figures.
57
The Board of Appeal therefore erred, in paragraph 43 of the contested decision, in suggesting that the possibility of playing with the toy figure at issue without necessarily having to combine it with the intervener’s modular building system could prevent it from being classified as an interlocking building figure. The possibility of using the figure at issue to play independently of the intervener’s modular building system does not constitute a characteristic of the shape given to the contested trade mark and has no effect on its nature as an interlocking building figure.
58
The Board of Appeal also erred in finding, in paragraph 48 of the contested decision, that the contested trade mark, having regard to its graphic representation, did not clearly and unambiguously reproduce an ‘interlocking building figure’. The applicant’s account and the evidence which it produced, considered in the light of the public’s knowledge of the intervener’s modular building system, make it possible to understand that the shape at issue has the generic functions of an interlocking building figure. Such an understanding of that shape does not make it necessary to envisage additional characteristics which do not form part of that trade mark.
59
It follows that the Board of Appeal, in paragraphs 41 to 44 of the contested decision, made an error of assessment by merely finding that the nature of the goods constituted by the contested trade mark was only that of a ‘toy figure’ and by thereby failing to find that that nature was also that of an ‘interlocking building figure’.
60
In that regard, it must be held that the goods concerned are of a dual nature, both that of a ‘toy figure’ with human traits, as the Board of Appeal decided following the judgment of 16 June 2015, Shape of a toy figure with protrusion (T‑396/14, not published, EU:T:2015:379), and that of an ‘interlocking building figure’ presenting a technical result of an interlocking nature and of modularity with the intervener’s building system, as the applicant repeatedly claims. Accordingly, the goods consist of an ‘interlocking toy figure’ with two purposes, namely playing, which is of a non-technical nature, and enabling assembly or combination, which is of a technical nature.
61
It must, therefore, be concluded that although the Board of Appeal was right to find that the nature of the goods concerned fell within the category of toy figures, it did, however, make an error of assessment by failing to find that the nature of those goods also fell within the category of interlocking building figures.
– The determination of the essential characteristics of the sign
62
As regards the essential characteristics of the contested trade mark, the Board of Appeal found, in paragraphs 45 to 47 of the contested decision, that that mark constituted a three-dimensional sign in the form of a toy figure or a figure in human form, and therefore resembled a human being. Relying on the judgment of 16 June 2015, Shape of a toy figure with protrusion (T‑396/14, not published, EU:T:2015:379, paragraphs 30 and 32), it found that, having regard to its graphic representation and the fact that it is in the shape of a figure having a human appearance, the head, body, arms and legs, which are necessary in order for such appearance to be conferred on it, constitute the essential characteristics of that trade mark. By contrast, according to the Board of Appeal, the graphic representation of the hands of the toy figure at issue, the protrusion on its head and the holes under its feet and at the back of its legs could not be regarded, either in the light of the overall impression produced by the contested trade mark or the result of the analysis of its components, as being the most important elements of that trade mark and did not, therefore, constitute an essential characteristic of the shape at issue.
63
In paragraphs 48 to 50 of the contested decision, the Board of Appeal found that the contested trade mark did not clearly and unambiguously reproduce an ‘interlocking building figure’, as claimed by the applicant, but that it was clear from the graphic representation, the overall impression produced by that trade mark and the analysis of its elements that it was the shape of a toy figure representing a human being. According to the Board of Appeal, it was not undoubtedly apparent either from the overall impression or from the examination of the elements of the sign at issue that the essential or most important characteristics of that sign were the disassemblable or stackable nature or the compatibility of that figure, as claimed by the applicant. The applicant’s argument amounted, according to the Board of Appeal, to adding to the shape of the contested sign additional elements which did not actually belong to it and such an arbitrary addition would be unlawful. The Board of Appeal added that while it was indeed possible that the Lego toy figure could be disassembled and was compatible with the intervener’s modular building system, it had not, however, been shown that those characteristics were the most important in the present case in such a way as to be capable of being classified as essential characteristics of the contested sign. According to the Board of Appeal, the disassemblable nature, stackable nature or compatibility was not of fundamental importance to the function of the Lego toy figure as such, that is to say, as a toy figure in the shape of a human being with which it was possible to play independently of those characteristics.
64
In paragraph 51 of the contested decision, the Board of Appeal found that the contested trade mark showed a small toy figure representing a character with a special configuration, but did not consist of ‘exclusively generic characteristics of games or playthings’. According to the Board of Appeal, that trade mark referred, rather, to a product shape (toy figure) for which other decorative and imaginative elements, which did not have the ‘typical generic function of those goods’, were important or essential. In the present case, such elements were those which the applicant itself had identified in detail, namely:
–
a cylindrical head with a protrusion fixed at the centre (with eyes and a mouth; without nose or ears);
–
a short rectangular neck;
–
a trapezoidal torso which, viewed from the side, tilted forwards and backwards;
–
slightly inclined arms at the level of the elbow ending with hands in the shape of hooks;
–
legs with bulges under the feet and two round holes at the back and
–
the fact that the legs and the torso were proportionally of approximately the same length.
65
The applicant submits that the essential characteristics of the figure at issue include not only the head, torso, arms and legs, but also the protrusion on the figure’s head, the hands equipped with hooks and the hollow parts at the back of the legs and under the feet, for the purposes of joining with other building bricks of the intervener.
66
It should be noted at the outset that, contrary to what the applicant claims, 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, paragraph 69, and of 30 March 2022, Établissement Amra v EUIPO – eXpresio, estudio creativo (Shape of a rebound shoe), T‑264/21, not published, EU:T:2022:193, paragraph 33).
67
According to settled case-law, the correct application of Article 7(1)(e)(i) of Regulation No 40/94 requires that the essential characteristics of the sign concerned, namely its most important elements, be properly identified on a case-by-case basis, based on the overall impression produced by that sign or on an examination of each of the components of that sign in turn (see paragraph 36 above).
68
Furthermore, it is apparent from the recent case-law relating to Article 7(1)(e)(ii) of Regulation No 40/94, applicable by analogy mutatis mutandis to paragraph 1(e)(i) of that article, that information other than the graphic representation alone, such as the perception of the relevant public, may be used to identify the essential characteristics of the sign at issue (see paragraph 40 above).
69
In the present case, it is true that the Board of Appeal was right in finding, in paragraph 46 of the contested decision, that the characteristics which give the toy figure at issue a human aspect, namely the head, torso, arms and legs, were essential characteristics of that toy figure.
70
In that regard, it is important to point out that the Board of Appeal was also right, in paragraph 51 of the contested decision, to find that the decorative and imaginative elements of the figure at issue were essential, namely the cylindrical shape of the head, the short and rectangular shape of the neck and the trapezoidal shape of the torso. The design’s rectangular and compact shapes and the general proportions are also important graphic elements of that figure.
71
However, the Board of Appeal erred, on the basis of the mark’s graphic representation in the form of a toy figure with human traits, in limiting the essential characteristics of the contested trade mark to the characteristics referred to in paragraphs 69 and 70 above; it further erred in finding, in essence, that the protrusion on the head of that toy figure, the hooks on the hands and the holes under its feet and at the back of its legs, whose function could not be inferred from that trade mark, did not contribute to the generic function of a toy figure merely having human traits and intended to participate in role-play and storytelling, with the result that those elements could not be included among the essential characteristics of that toy figure.
72
The essential characteristics resulting from the protrusion on the head, the hooks under the hands and the holes under the feet and at the back of the legs of the figure at issue may be inferred from the contested trade mark, in the light of its graphic representation, but also from other information, in particular the public’s knowledge of the intervener’s modular building system; this is apparent from the documents placed in the file by the applicant (see paragraphs 27, 53 and 54 above) – in so far as they are related to the pleas and arguments which the applicant develops before the Court (see paragraph 21 above) – and such knowledge is also well known (see paragraph 55 above).
73
Thus, it must be held that the protrusion on the head, the hooks on the hands and the holes at the back of the legs and under the feet of the figure at issue constitute essential characteristics of the contested trade mark, in the light of its nature as an ‘interlocking building figure’. Those elements are important for the compatibility of that figure and its ability to be joined with other goods.
74
The Board of Appeal, in paragraphs 45 to 52 of the contested decision, therefore made an error of assessment in only regarding as essential the ‘non-technical’ characteristics which give the figure at issue a human aspect, namely the head, torso, arms and legs, and by thereby failing to regard as essential characteristics the ‘technical’ characteristics of the contested trade mark envisaged as an interlocking building figure, namely the protrusion on the head, the hands equipped with hooks and the holes at the back of the legs and under the feet.
75
In so doing, the Board of Appeal erred, for the purposes of establishing the essential characteristics of the contested trade mark, in only taking into consideration the graphic representation of that mark and in failing to take into consideration other useful information relating to the nature of the actual goods, in particular the public’s knowledge of the intervener’s modular building system.
76
The Board of Appeal also erred in finding, in paragraph 49 of the contested decision, that the applicant’s line of argument would amount to adding to the shape of the contested sign additional elements which did not actually belong to it and that such an arbitrary addition would be unlawful. The protrusion on the head, the hooks on the hands and the holes at the back of the legs and under the feet of the figure at issue are clearly characteristics belonging to that figure, considered on the basis not only of its graphic representation, but also on the basis of other useful information such as the public’s knowledge of the intervener’s modular building system. Those characteristics do not therefore in any way constitute an ‘arbitrary addition’ to the actual goods of elements which do not form part of them.
77
It must be concluded that although the Board of Appeal was right to find that the characteristics accepted in paragraph 51 of the contested decision were essential characteristics of the contested trade mark, it did, however, make an error of assessment by failing to regard as essential the additional characteristics invoked by the applicant, namely the protrusion on the head, the hooks on the hands and the holes at the back of the legs and under the feet.
– Whether or not the shape results from the nature of the goods themselves
78
In paragraphs 51 to 54 of the contested decision, the Board of Appeal identified the decorative and imaginative elements listed in paragraph 64 of the present judgment and established that the combination of those elements was designed in such a way as to give the toy figure at issue an original or imaginative appearance in the overall impression it produced. It also found that a toy figure therefore belonged to a type of goods for which there was, as a matter of principle, a wide freedom of design. According to the Board of Appeal, a toy figure or figurine in Class 28 could thus be designed by actually taking any shape, different from the specific shape of the contested sign, and could be altered and configured with the widest creativity. For example, at the discretion of the designer, the legs could be configured with a rounded shape other than the registered rectangular shape and the torso could take on another shape, rectangular or rounded, instead of the trapezoidal shape actually registered. While it is true that a toy figure or a figurine in human form must have a head, body, two arms and two legs giving it its human appearance, those essential characteristics could actually take any shape.
79
In paragraphs 55 and 56 of the contested decision, the Board of Appeal found that such freedom of design applied not only to the goods at issue in Class 28 but also mutatis mutandis to the other goods concerned in Classes 9 and 25 (for which the applicant lacked substantive explanations) in the same way whether they were manufactured in the form of a toy figure or a figurine in human form and, a fortiori, if they were designed with any other shape. According to the Board of Appeal, it was not clear from the applicant’s explanations that the contested sign consisted ‘exclusively’ of the shape which results from the nature of the goods, and the reasons for which the goods at issue were ‘necessarily’ designed in the form of the registered toy figure were not clear either. Furthermore, the applicant had not proved that the shape of those goods contained elements dictated by their nature, and the contested sign as a whole did not have such an inevitable shape which necessarily corresponded to the category of those same goods.
80
In paragraphs 57 to 59 of the contested decision, the Board of Appeal found that the mere fact that the actual figure represents a human being is not sufficient to preclude the suitability for protection of the contested trade mark, in accordance with Article 7(1)(e)(i) of Regulation No 40/94, given that, otherwise, the scope of the protection conferred by that provision ‘would be extended indefinitely’ as soon as that trade mark has an initial natural shape, such as, in the present case the human body. According to the Board of Appeal, the contested sign simply did not represent a shape of the goods at issue in Classes 9, 25 or 28, whose essential characteristics form an integral part of the generic functions of those goods. It concluded that the conditions of that article were not met.
81
The applicant submits, in essence, that all the visible characteristics of the figure at issue (in particular the head, torso, arms and legs), whether or not essential, are designed in all respects so as to fulfil the generic function of the goods, by interlocking with the building bricks and other figures of the intervener.
82
It should be recalled that shapes of which all the essential characteristics are inherent to the generic function or functions of the goods must, in principle, be denied registration (see, to that effect and by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 25).
83
It must also be pointed out that, in accordance with the case-law cited in paragraph 44 above, Article 7(1)(e)(i) of Regulation No 40/94 cannot apply where the contested trade mark relates to a product shape in which another decorative or imaginative element, which is not inherent to the generic function of the goods, plays an important or essential role (see, to that effect and by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 22 and the case-law cited).
84
Thus, Article 7(1)(e)(i) of Regulation No 40/94 cannot apply once the contested trade mark represents a product shape having at least one essential characteristic which is not inherent to the generic function of those goods or, in other words, as long as there is at least one essential characteristic of the shape which does not result from the nature of the goods themselves, with the result that the contested trade mark does not consist ‘exclusively’ of the shape which results from the nature of the goods themselves (see paragraph 45 above).
85
In the present case, the shape at issue is, therefore, appropriate for protection as an EU trade mark if at least one of its essential characteristics is not inherent to the generic function of a toy figure or the generic function of an interlocking building figure.
86
It must be stated that the cylindrical or ‘barrel’ shape of the head of the figure at issue is not inherent either to the generic function of a toy figure or to the generic function of an interlocking building figure. The same applies to the short, rectangular shape of the neck and the flat and angular trapezoidal shape of the torso, and the specific shapes of arms with hands and legs with feet.
87
The specific design of those essential characteristics of the shape at issue is, therefore, merely a possible expression of the actual application of the generic function of a toy figure or of that of an interlocking building figure.
88
Thus, the decorative and imaginative characteristics referred to in paragraph 51 of the contested decision (see paragraphs 64 and 78 above) and listed in paragraph 86 above, result from the freedom of the designer of the toy figure and of the interlocking building figure. While the presence of human traits and joints for assembly fundamentally results from the dual nature of the goods, there is wide freedom as to the configuration of those elements. In the light of that wide freedom of design as regards interlocking building toy figures, those characteristics may take many forms other than that of the contested trade mark.
89
The Board of Appeal was, therefore, right to find, in paragraph 53 of the contested decision, that those essential characteristics, given their decorative and imaginative nature, could be modified and configured with, in principle, a ‘wide freedom of design’.
90
In that regard, the applicant’s claim that ‘no characteristic of the contested trade mark nor, a fortiori, any essential characteristic of it, nor the contested trade mark as a whole, has any decorative or imaginative element that goes beyond the functionality described’ is unfounded and must be rejected. Indeed, the essential characteristics listed in paragraph 86 above constitute such elements.
91
It follows that the applicant, who bears the burden of proof in the present invalidity proceedings (see paragraph 26 above), has not refuted the finding that at least one essential characteristic of the goods at issue is not inherent to its generic function as a toy figure or as an interlocking building figure.
92
In the light of the principles set out in paragraphs 83 and 84 above, that finding is sufficient to preclude the application of Article 7(1)(e)(i) of Regulation No 40/94.
93
It must be concluded that, notwithstanding the errors of assessment found in paragraphs 59 and 74 above, which, in the light of the foregoing, have no bearing on the lawfulness of the contested decision, the Board of Appeal was right to confirm that the contested trade mark was eligible for registration in the light of Article 7(1)(e)(i) of Regulation No 40/94.
94
The first plea in law must, therefore, be rejected as unfounded.
The second plea, alleging infringement of Article 7(1)(e)(ii) of Regulation No 40/94
95
The applicant submits that the Board of Appeal made errors of assessment in applying the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94.
96
In the first place, as regards the function of the goods at issue and their essential characteristics, the applicant argues that those characteristics should be assessed not in an abstract way, but in the light of the specific way in which they are respectively arranged in the representation of the contested trade mark. According to the applicant, the fact that the interlocking building figure may also theoretically be used as a toy figure independently of the intervener’s modular building system is not a characteristic of the shape given to that mark and does not, above all, deprive it of its character as an interlocking building figure. In addition, it submits that, according to recent case-law, the assessment of the technical function cannot be based solely on the graphic representation of the trade mark at issue.
97
In the second place, as regards the functionality of the essential characteristics of the contested trade mark, the applicant criticises the Board of Appeal for not having ‘considered at all’, in paragraphs 78 to 80 of the contested decision, the evidence which it set out. It submits that the technical result of the interlocking building figure, reproduced in that trade mark, including its elements, is its stackable nature and its modularity in the intervener’s building system. That interlocking building figure and its various elements are designed in all respects so that they can be stacked and combined with other interlocking building figures and other building bricks of the intervener. A large number of building variants are possible only in the specific form of the interlocking building figure reproduced in that trade mark. All the characteristics of the contested trade mark are intended exclusively to guarantee the stackability and modularity of that trade mark and of its elements in the intervener’s modular building system. Not only the protrusion on the head, the hands equipped with hooks and the holes under the feet and at back of the legs, but, more specifically, the size and dimensions of the head, its cylindrical shape, the flat and angular shape of the torso, its slightly reduced sides, the slight curvature of the arms, the wrists, the hands equipped with hooks and the pivoting legs – the length of which allows the figure to be seated on four protrusions – are also exclusively intended to enable joining of the figure reproduced in that trade mark. The same is true for the figure as a whole, whose proportions and height, which correspond exactly to the height of four of the intervener’s building bricks, are intended exclusively to enable the figure to be joined with such bricks. The compatibility of interlocking building figures is lost or restricted if they have different shapes. The Board of Appeal was unable to indicate which allegedly essential characteristics of that trade mark were supposed to be imaginative and not exclusively linked to their technical function. According to the applicant, it follows that the shape of the contested trade mark and of its elements is intended ‘exclusively’ to obtain the technical results described, within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94. The existence of other shapes which could achieve the same technical result is irrelevant and cannot preclude the application of that article.
98
Lastly, the applicant submits that the Board of Appeal’s analysis, in paragraph 79 of the contested decision, that the contested trade mark ‘does not have lines or models that clearly and unambiguously reveal its stackability and modularity in the context of the [intervener’s] building system’ is incomprehensible. In that regard, the Board of Appeal again departs from the current case-law, according to which it is no longer acceptable, for the purpose of determining the technical result of the characteristics of a trade mark, for limitation solely to the registration of that trade mark and to its external presentation. The applicant has demonstrated in detail, with the help of illustrations, that beyond the graphic representation the contested trade mark has the functionalities described in the application for a declaration of invalidity.
99
EUIPO and the intervener dispute the arguments put forward by the applicant.
100
Under Article 7(1)(e)(ii) of Regulation No 40/94, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered.
101
The interest underlying Article 7(1)(e)(ii) of Regulation No 40/94 is to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43).
102
The correct application of Article 7(1)(e)(ii) of Regulation No 40/94 requires that the essential characteristics of the three-dimensional sign at issue be properly identified. The expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 68 and 69).
103
The identification of the essential characteristics of a sign must be carried out on a case-by-case basis, there being no hierarchy that applies systematically between the various types of elements of which a sign may consist. It may be carried out either directly on the basis of the overall impression produced by the sign, or by first examining in turn each of the components of the sign (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 70).
104
Consequently, the identification of the essential characteristics of a three-dimensional sign 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 other hand, 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 (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 71, and 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 49).
105
Thus, the competent authority may carry out a detailed examination that takes into account material relevant to identifying appropriately the essential characteristics of a sign, in addition to the graphic representation and any descriptions filed at the time of the application for registration (judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry, C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129, paragraph 54).
106
Therefore, while the identification of the essential characteristics of the sign at issue must, in principle, begin with the assessment of the graphic representation of that sign, the competent authority may also refer to other useful information that allows it to correctly identify those characteristics, such as the perception of the relevant public (judgment of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraphs 30, 31 and 37).
107
It is thus apparent from the case-law cited in paragraphs 104 to 106 above that information other than the graphic representation alone, such as the perception of the relevant public, may be used to identify the essential characteristics of the sign at issue.
108
Neither the distinctive character of the elements of a sign nor the distinctive character acquired through use of a sign are relevant in determining its essential characteristics for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94 (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 64).
109
The essential characteristics of the shape at issue, in the context of Article 7(1)(e)(ii) of Regulation No 40/94, are determined with the specific aim of examining the functionality of that shape (judgment of 30 March 2022, Shape of a rebound shoe, T‑264/21, not published, EU:T:2022:193, paragraph 41).
110
Once the sign’s essential characteristics have been identified, EUIPO still has to ascertain whether those characteristics all perform the technical function of the goods at issue (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 72) or, more specifically, a technical function of the product (see judgment of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraph 28 and the case-law cited).
111
In order to analyse the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94, the essential characteristics of the shape necessary to obtain a technical result must, as far as possible, be assessed in the light of the technical function of the actual goods represented. Such an analysis cannot be made without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods, even if they are not visible in the representation (judgment of 10 November 2016, Simba Toys v EUIPO, C‑30/15 P, EU:C:2016:849, paragraphs 46 and 48).
112
Thus, for the analysis of the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 40/94, the Courts of the European Union are not bound solely by the functions visible from the graphic representation of the trade mark, but must take into consideration the other elements of the actual goods, such as the rotation mechanism in the case of the ‘Rubik’s Cube’ (see, to that effect, judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraphs 85 and 86), the underside of the brick in the case of the ‘Lego brick’ (judgment of 12 November 2008, Lego Juris v OHIM – Mega Brands (Red Lego brick), T‑270/06, EU:T:2008:483, paragraph 78) and, for a medical dressing, its mode of action (judgment of 31 January 2018, Novartis v EUIPO – SK Chemicals (Representation of a transdermal patch), T‑44/16, not published, EU:T:2018:48, paragraph 37). However, the Courts of the European Union cannot add to the shape of the actual goods elements which do not form part of it (judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre, C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431, paragraphs 62 to 66).
113
While information which is not apparent from the graphic representation of the sign may be taken into consideration in order to establish whether those characteristics perform a technical function of the goods at issue, such information must originate from objective and reliable sources and may not include the perception of the relevant public (judgment of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraph 37).
114
The condition according to which registration of a shape of goods as an EU trade mark may be refused under Article 7(1)(e)(ii) of Regulation No 40/94, only if the shape is ‘necessary’ to obtain the technical result intended, does not mean that the shape at issue must be the only one capable of obtaining that result (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 53).
115
The existence of other shapes which could achieve the same technical result does not constitute, for the purposes of the application of Article 7(1)(e)(ii) of Regulation No 40/94, a circumstance such as to preclude the ground for refusal of registration (see judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 58 and 83 and the case-law cited).
116
In other words, Article 7(1)(e)(ii) of Regulation No 40/94 precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution (judgment of 12 November 2008, Red Lego brick, T‑270/06, EU:T:2008:483, paragraph 43).
117
In examining the functionality of a sign consisting of the shape of goods, once the essential characteristics of the sign have been identified, it is only necessary to assess whether those characteristics perform the technical function of the goods concerned. Clearly, that examination must be carried out by analysing the sign filed with a view to its registration as a trade mark or contested, and not signs consisting of other shapes of goods. 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 (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 84 and 85).
118
Solely product shapes which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 48; of 19 September 2012, Reddig v OHIM – Morleys (Knife handle), T‑164/11, not published, EU:T:2012:443, paragraph 24, and of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 45). Registration as a trade mark of a purely functional product shape is likely to allow the proprietor of that trade mark to prevent other undertakings not only from using the same shape, but also from using similar shapes (judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 56; of 19 September 2012, Knife handle, T‑164/11, not published, EU:T:2012:443, paragraph 22, and of 24 October 2019, Shape of a cube with surfaces having a grid structure, T‑601/17, not published, EU:T:2019:765, paragraph 46).
119
The presence of one or more minor arbitrary elements in a sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result. In addition, the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential characteristics of the sign are functional, with the result that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape (see judgments of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 52 and the case-law cited, and of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 27 and the case-law cited).
120
Thus, Article 7(1)(e)(ii) of Regulation No 40/94 cannot apply when the trade mark applied for, or which is contested, relates to a product shape in which a non-functional element, such as a decorative or imaginative element, plays an important role. In that case, competitor undertakings easily have access to alternative shapes with equivalent functionality, so that there is no risk of impairing the availability of the technical solution. That solution may, in that case, be incorporated without difficulty by the competitors of the mark’s proprietor in shapes which do not have the same non-functional element as that contained in the proprietor’s shape and which are therefore neither identical nor similar to that shape (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 52 and 72).
121
It follows from the foregoing that the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 can apply only if each of the essential characteristics of the sign at issue is necessary to obtain a technical result for which the goods concerned are intended. On the other hand, that ground does not apply where there is a major non-functional element, such as a decorative or imaginative element, which constitutes an essential characteristic of that sign, but which is not necessary to obtain such a technical result.
122
In other words, the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 cannot apply when there is at least one essential characteristic of the shape which is not necessary to obtain a technical result, with the result that the contested trade mark does not consist ‘exclusively’ of the shape necessary to obtain a technical result.
123
It is in the light of those principles that the merits of the second plea in law must be examined.
– The determination of the functionality of the goods
124
As regards the nature of the goods at issue, in paragraph 67 of the contested decision, the Board of Appeal noted that the sign at issue showed a small toy figure representing a character with a special configuration (see paragraph 47 above). In paragraph 77 of that decision, it therefore established that the present case concerned a toy figure included in the category of ‘games and play things’ in Class 28.
125
Regarding the technical functionality of the goods concerned, in paragraphs 71 to 74 of the contested decision the Board of Appeal found that toy figures or games as such were objects to play with and that using them was therefore supposed to entertain and relax, or serve as a hobby and recreation. It conceded that it was indeed possible that both the design of the essential characteristics (head, torso, arms and legs) and that of all the non-essential elements (for example, the hands and the holes) made it possible to join the toy figure at issue with building bricks and other Lego elements and that it was indisputable that the Lego toy figure was compatible with the intervener’s modular building system. However, the Board of Appeal noted that it was also well known that one could, as a matter of principle, play with the Lego toy figure exactly as with any toy figure (that is to say, by holding it, moving it, disassembling it, and so forth), without necessarily combining it with that modular building system. In its view, both the fact that the toy figure at issue is, in principle, intended to encourage role-play and storytelling and the fact that the compatibility with that modular building system is a reason for contributing to the improvement and imaginative use of that toy figure were apparent from the arguments and evidence put forward by the applicant itself, for example in Annex BDR 3.
126
In paragraphs 78 and 79 of the contested decision, the Board of Appeal also found that the ‘result’ of the shape of the toy figure at issue was simply to confer human traits on it and that the fact that the toy figure represents a character and may be used in an appropriate play context was not a ‘technical result’. Unlike the judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure (T‑601/17, not published, EU:T:2019:765, paragraph 88), which specifically concerned ‘three-dimensional puzzles’ in Class 28, there was no need, in the present case, to take into consideration additional elements (such as the ability of individual elements to rotate and invisible elements), as regards ‘games and playthings’ in the same class.
127
It should be recalled that the functions performed by the essential characteristics of the shape at issue must, as far as possible, be assessed in the light of the actual goods represented (see paragraph 111 above).
128
In the present case, it is true that the Board of Appeal was right to find, in essence, that the actual goods were a toy figure in Class 28 (see paragraphs 49 to 51 above) and that a non-technical result of the shape of those goods was to confer human traits on that toy figure in order to enable the ‘manikin’ to participate in role-play and storytelling.
129
From that perspective, it must be held that the function of certain essential characteristics of the contested trade mark, namely the head, torso, arms and legs, is to confer human traits on the figure at issue. Since the ‘toy figure’ goods are intended for playing without hindrance or constraint, all the humanoid characteristics of that figure are intended to enable it to be played with in its own right, that is to say, independently of any other element of a modular building system. The fact that that figure represents a character and can be used in any appropriate play context is not a ‘technical result’ (see, to that effect, judgment of 16 June 2015, Shape of a toy figure with protrusion, T‑396/14, not published, EU:T:2015:379, paragraphs 31, 32 and 34).
130
That said, it must be found that the actual goods also constitute an interlocking building figure (see paragraph 52 above), whose technical functionality is also its interlocking character and modularity, that is to say its ability to be joined with other elements of the intervener’s building system, such as building bricks.
131
In the present case, unlike the earlier invalidity proceedings which gave rise to the judgment of 16 June 2015, Shape of a toy figure with protrusion (T‑396/14, not published, EU:T:2015:379), on the basis of the applicant’s specific account in the present proceedings it must be held that the interlocking nature of the figure at issue in the context of a modular building system may be inferred from the contested trade mark, in the light of its graphic representation; that interlocking nature may also be inferred, however, from other useful information, in particular the public’s knowledge of modular building systems such as that of the intervener, as is apparent from the documents included in the file by the applicant (see paragraph 27 above), in so far as they relate to the pleas and arguments which the applicant develops before the Court (see paragraph 21 above).
132
Thus, it is apparent from Annex BDR 3, consisting of an extract from the book Lego Minifigure year by year – A Visual History, that Lego figures ‘have connectors on their bodies that are compatible with Lego bricks and other elements’ and that they ‘can be disassembled and combined with parts of other minifigures to create an entirely new character’.
133
Furthermore, the public’s knowledge of modular building systems, such as that of the intervener, is well known within the meaning of the case-law (see paragraph 55 above).
134
The Board of Appeal therefore erred, in paragraph 73 of the contested decision, in suggesting that the possibility of playing with the toy figure at issue without necessarily having to combine it with the intervener’s modular building system could prevent its technical functionality of being interlocking and modular. The possibility of using the figure at issue to play independently of the intervener’s modular building system has no bearing on its technical functionality of being interlocking and modular.
135
The Board of Appeal also erred in finding, in paragraph 79 of the contested decision, that the contested trade mark, which had the shape of a toy figure, ‘[did] not have lines or models that clearly and unambiguously reveal its stackability and modularity in the context of the [intervener’s] building system’.
136
It follows that the Board of Appeal, in paragraphs 67 to 79 of the contested decision, made an error of assessment by merely finding that the functionality of the goods constituted by the contested trade mark consisted solely of the non-technical results of the capacity for play and the evocation of a ‘manikin’ by human traits, and by thus failing to find that that functionality also included the technical results of the goods’ interlocking nature and their modularity, or their ability to be joined and interlocked.
137
In that regard, it must be held that the goods at issue have a twofold purpose, both that of a ‘toy figure’ that can be played with, with human traits, as the Board of Appeal decided following the judgment of 16 June 2015, Shape of a toy figure with protrusion (T‑396/14, not published, EU:T:2015:379), and that of an ‘interlocking building figure’ having a technical result of being interlocking and modular with the intervener’s building system in particular.
138
It must be concluded that although the Board of Appeal was right to find that the non-technical result of the goods consisted of the capacity for play and the evocation of a ‘manikin’ by human traits, it did, on the other hand, make an error of assessment by failing to find that the technical result of those goods also included its interlocking nature and its modularity.
– The determination of the essential characteristics of the sign
139
As regards the essential characteristics of the sign, in paragraphs 69 and 70 of the contested decision, the Board of Appeal relied on the judgment of 16 June 2015, Shape of a toy figure with protrusion (T‑396/14, not published, EU:T:2015:379, paragraphs 30 and 32). It found, having regard to the sign’s graphic representation and the fact that it had the shape of a figure with a human appearance, that the essential characteristics of the sign at issue, which gave it such a human appearance, were the head, body (torso), arms and legs. By contrast, the Board of Appeal took the view that the precise graphic representation of the hands of the toy figure at issue, the protrusion on its head and the holes under its feet and at the back of its legs – whether as regards the overall impression produced by the contested sign or concerning the result of the analysis of its various elements – did not constitute one or more of the essential characteristics of the sign in question.
140
In paragraphs 75 and 76 of the contested decision, the Board of Appeal noted, in addition, that the Court had established, in respect of the same mark as that contested in the present case, that the graphic representation of the hands of the figure at issue, of the protrusion on its head and of the holes under its feet and at the back of its legs did not enable it to be known, on its own and a priori, whether those elements had any technical function or, if so, what that function was (judgment of 16 June 2015, Shape of a toy figure with protrusion, T‑396/14, not published, EU:T:2015:379, paragraph 32). In any event, the Board of Appeal added, even accepting – as did the applicant – that the shape of the abovementioned elements could have a technical function consisting of enabling them to be joined with other elements, in particular interlocking bricks, those elements cannot be regarded as the most important of that trade mark, either in the light of the overall impression produced by that mark or following the analysis of its elements. According to the Board of Appeal, those elements did not constitute an essential element of the shape at issue for the purposes of the case-law and, moreover, there was nothing to indicate that the essential functional characteristics of the shape of those elements were attributable to the claimed technical result.
141
According to settled case-law, the correct application of Article 7(1)(e)(ii) of Regulation No 40/94 requires that the essential characteristics of the sign concerned, namely its most important elements, be properly identified on a case-by-case basis, on the basis of the overall impression produced by the sign or by examining each of the components of the sign in turn (see paragraphs 102 and 103 above).
142
Furthermore, it is apparent from the recent case-law relating to Article 7(1)(e)(ii) of Regulation No 40/94 that information other than the graphic representation alone, such as the perception of the relevant public, may be used to identify the essential characteristics of the sign at issue (see paragraph 107 above).
143
In the present case, it is true that the Board of Appeal was right to find, in paragraph 69 of the contested decision, following the judgment of 16 June 2015, Shape of a toy figure with protrusion (T‑396/14, not published, EU:T:2015:379), that the characteristics which confer human traits, namely the head, torso, arms and legs, were essential characteristics of the toy figure at issue.
144
In that regard, it is important to point out that the Board of Appeal was also right, in paragraph 51 of the contested decision, to find that decorative and imaginative elements of the figure at issue were essential, namely the cylindrical shape of the head, the short and rectangular shape of the neck and the trapezoidal shape of the torso. The design’s rectangular and compact shapes and the general proportions are also important graphic elements of that figure.
145
However, the Board of Appeal erred, in paragraph 70 of the contested decision, in limiting the essential characteristics of the contested trade mark, on the basis of its graphic representation in the form of a toy figure with human traits, to the characteristics referred to in paragraphs 143 and 144 above; it also erred in finding, in essence, that the protrusion on the head of that toy figure, the hooks on its hands and the holes under its feet and at the back of its legs, the function of which could not be inferred from that trade mark, did not contribute to a technical result of a toy figure which merely had human traits and was intended for participation in role-play and storytelling, with the result that those elements could not be included among the essential characteristics of that toy figure.
146
The essential characteristics resulting from the protrusion on the head, from the hooks on the hands of the figure at issue and from the holes under its feet and at the back of its legs can be inferred from the contested trade mark, in the light of its graphic representation; they can, however, also be inferred from other information, in particular the public’s knowledge of the intervener’s modular building system, as is apparent from the documents included in the file by the applicant (see paragraphs 27, 131 and 132 above), in so far as they are related to the pleas and arguments which the applicant develops before the Court (see paragraph 21 above), and such knowledge is also well known (see paragraph 133 above).
147
Thus, it must be held that the protrusion on the head, the hooks on the hands and the holes at the back of the legs and under the feet of the figure at issue constitute essential characteristics of the contested trade mark, in the light of its nature as an ‘interlocking building figure’ and its technical functionality of being interlocking and modular. Those elements are important for the figure’s compatibility and its ability to be joined with other goods.
148
The Board of Appeal, in paragraphs 69 to 76 of the contested decision, therefore made an error of assessment in only regarding as essential the ‘non-technical’ characteristics which give the figure at issue a human aspect, namely the head, torso, arms and legs, and by thus failing to regard as essential characteristics the ‘technical’ characteristics of the contested trade mark, envisaged as an interlocking building figure, namely the protrusion on the head, the hooks on the hands and the holes at the back of the legs and under the feet.
149
In so doing, the Board of Appeal erred, for the purposes of establishing the essential characteristics of the contested trade mark, in only taking into consideration the graphic representation of that mark and in failing to take into consideration other useful information, in particular additional elements relating to the nature of the actual goods, namely the public’s knowledge of the intervener’s modular building system.
150
It must be concluded that although the Board of Appeal was right to find that the characteristics accepted in paragraphs 51 and 69 of the contested decision were essential characteristics of the contested trade mark, it did, however, make an error of assessment by failing to consider as essential the additional characteristics invoked by the applicant, namely the protrusion on the head, the hooks on the hands and the holes at the back of the legs and under the feet.
– Whether or not the shape is necessary to obtain a technical result
151
As regards the functionality of the essential characteristics of the sign, the Board of Appeal found, in paragraphs 78 to 81 of the contested decision, that there was no evidence to support the conclusion that the shape of the figure at issue was necessary, as a whole, to obtain a specific technical result. In particular, it found that it had not been proved that that shape was, as such and as a whole, necessary to enable it to be joined with interlocking building bricks. According to the Board of Appeal, the ‘result’ of that shape was simply to confer human traits on the figure in question and the fact that the toy figure at issue represents a character and may be used in an appropriate play context was not a ‘technical result’. Unlike the judgment of 24 October 2019, Shape of a cube with surfaces having a grid structure (T‑601/17, not published, EU:T:2019:765, paragraph 88), which specifically concerned ‘three-dimensional puzzles’ in Class 28, the Board of Appeal found that it was not necessary, in the present case, to take into consideration additional elements (such as the ability of individual elements to rotate as well as invisible elements), as regards ‘games and play things’ in the same class. It found that the contested trade mark, which was in the shape of a toy figure, did not have lines or models which clearly and unambiguously reveal its stackable and modular nature in the context of the intervener’s building system. The examples put forward by the applicant concerning the various functional characteristics of that mark did not, according to the Board of Appeal, demonstrate either ‘modularity’ or any technical result. Furthermore, according to the latter, it was expressly apparent from German patent specification DE 28 36971 C2 relating to the design of the interlocking elements enabling the legs of the toy figure at issue to be rotated (Annex BDR 9), that not all its elements had a technical result, but only its legs.
152
In paragraphs 82 to 86 of the contested decision, the Board of Appeal noted that, by imposing ‘the two restrictions’ provided for in Article 7(1)(e)(ii) of Regulation No 40/94 (‘exclusively’ and ‘necessary’), the legislature had taken due account of the fact that each shape of goods was functional to a certain extent 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 had functional characteristics (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 48). In order to reject the applicant’s arguments that the design of the contested trade mark and its elements would ‘exclusively’ serve to ensure compatibility with the intervener’s building bricks, the Board of Appeal observed that other undertakings were permitted to sell toy figures with protrusions and holes adaptable to other building bricks, but which had a different appearance – that is to say, a different design of the legs, arms, torso and head – to the design of that trade mark and the figure which it represented. According to the Board of Appeal, that mark did not confer on the intervener the right to prohibit third parties or its competitors from marketing interlocking toys or building figures which, although technically compatible with its building systems, had a different shape from that registered (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 72). The possible compatibility of a toy figure with any building block system could not in any event be monopolised within the meaning of trade mark law. Lastly, the Board of Appeal again noted that, as the applicant set out its arguments in respect of games and playthings in Class 28 and there was a lack of substantive explanations for the other goods in Classes 9 and 25, freedom of design applied not only to the goods at issue in Class 28 but also mutatis mutandis to the other goods concerned in Classes 9 and 25. Consequently, it concluded that the conditions of Article 7(1)(e)(ii) of Regulation No 40/94 were not satisfied.
153
The applicant submits, in essence, that all the visible features of the figure (in particular, the head, torso, arms and legs), whether or not essential, are designed in all respects so as to perform the technical function of the goods, by interlocking with the building bricks and other figures of the intervener.
154
It should be recalled that shapes of which all the essential characteristics are necessary to obtain a technical result of the goods must, in principle, be refused registration (see paragraph 119 above).
155
It must also be pointed out that, in accordance with the case-law cited in paragraph 120 above, Article 7(1)(e)(ii) of Regulation No 40/94 cannot apply where the contested trade mark relates to a product shape in which a non-functional element, such as a decorative or imaginative element, plays an important role (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 72).
156
Thus, Article 7(1)(e)(ii) of Regulation No 40/94 cannot apply where there is at least one essential characteristic of the shape which is not necessary to obtain a technical result, with the result that the contested trade mark does not consist ‘exclusively’ of the shape which is necessary to obtain a technical result (see paragraphs 121 and 122 above).
157
In the present case, the shape at issue is therefore capable of protection as an EU trade mark if at least one of its essential characteristics does not stem directly from the technical result of the interlocking nature or modularity of the goods envisaged as an interlocking building figure. Incidentally, it should be noted that the non-technical results of the goods envisaged as a toy figure are irrelevant to Article 7(1)(e)(ii) of Regulation No 40/94 and cannot preclude registration of the contested trade mark.
158
It must be stated that the cylindrical or ‘barrel’ shape of the head of the figure at issue does not stem directly from the technical result of joining and combining an interlocking building figure in the intervener’s modular building system. The same applies to the short and rectangular shape of the neck and the flat and angular trapezoidal shape of the torso, and the specific shapes of arms with hands and legs with feet.
159
Thus, the decorative and imaginative characteristics referred to in paragraphs 51 to 54 of the contested decision (see paragraphs 64 and 78 above), and listed in paragraph 158 above, result from the freedom of the designer of the toy figure and of the interlocking building figure. Whereas the presence of human traits and joints for assembly is fundamentally dictated by the dual functionality of the goods, there is a wide freedom as to the configuration of those elements.
160
The Board of Appeal was, therefore, right to find in paragraphs 53 and 84 of the contested decision, in essence, that those essential characteristics, in view of their decorative and imaginative nature, could be modified and configured with, in principle, a wide freedom of design.
161
In that regard, the applicant’s claim that ‘no characteristic of the contested trade mark nor, a fortiori, any essential characteristic of it, nor the contested trade mark as a whole, has any decorative or imaginative element that goes beyond the functionality described’ is unfounded and must be rejected. Indeed, the essential characteristics listed in paragraph 158 above constitute such decorative and imaginative elements.
162
It follows that although the technical purpose linked to the interlocking nature and modularity is achieved by essential characteristics (listed in paragraph 146 above), there are also other essential characteristics (listed in paragraph 158 above) which are not necessary to achieve a technical purpose.
163
As the Board of Appeal correctly found in paragraph 81 of the contested decision, German patent specification DE 28 36971 C2 produced by the applicant as Annex BDR 9 cannot lead to a different result. Admittedly, in so far as the Board of Appeal found that it was apparent from that patent that only the legs of the figure had technical functionality, given that that patent did not relate to other characteristics of the contested trade mark, it must be held that such a finding cannot, in itself, be extrapolated in order to deny technical functionality to other characteristics. Strictly speaking, since the patent in question concerns only the legs, it does not allow any conclusion one way or the other regarding the other characteristics of the shape at issue.
164
However, it is true that German patent specification DE 28 36971 C2 shows a technical result only for the elements of the leg of the figure at issue, but not for the other essential characteristics of the contested trade mark. That patent relates to the backs of the legs and the hollow parts therein and therefore concerns only that essential characteristic of that trade mark. As regards the characteristics of the appearance given to the figure’s head, torso, arms and legs, that patent contains no indication as to a possible technical result.
165
Nor does the Board of Appeal’s assessment run counter to the interest underlying Article 7(1)(e)(ii) of Regulation No 40/94, which is to prevent trade mark law from granting an undertaking a monopoly on technical solutions or functional characteristics of a product (see paragraph 101 above). The Board of Appeal took due account of that interest in paragraph 84 of the contested decision (see paragraph 160 above). The contested trade mark does not make it impossible for competitors to place on the market figures with typical characteristics of that category of toys. Nor does it prevent the distribution of figures of a different design which are compatible with the intervener’s modular building system. As the Board of Appeal observed, in essence, in paragraph 53 of the contested decision, there is a wide freedom of design for such figures.
166
Lastly, as regards the applicant’s complaint that the Board of Appeal had not ‘considered at all’ the arguments set out and the evidence adduced by it, first of all, it should be noted that the fact that the Board of Appeal did not follow the applicant’s point of view does not mean that it did not take its arguments into account or that it did not examine the applicant’s evidence. In paragraph 80 et seq. of the contested decision, the Board of Appeal expressly examined the applicant’s statement, the examples produced and German patent specification DE 28 36971 C2.
167
Furthermore, it must be borne in mind that the Board of Appeal, in paragraph 7 of the contested decision, summarised the applicant’s arguments relating to the present plea and, in paragraph 38 of that decision, identified the evidence adduced by it. It follows that those arguments and that evidence were taken into consideration by the Board of Appeal in its assessment (see, to that effect, judgment of 29 June 2022, bet-at-home.com Entertainment v EUIPO (bet-at-home), T‑640/21, not published, EU:T:2022:408, paragraph 26 and the case-law cited).
168
In that regard, it should also be borne in mind that the EUIPO authorities are not obliged to adopt a position on all the arguments put forward by the parties. It is sufficient for them to set out the facts and the legal considerations which are of essential importance in the context of their decisions. It follows that the fact that a Board of Appeal did not reproduce all of the arguments of one party or did not respond to each of those arguments does not in itself lead to the conclusion that that Board of Appeal refused to take them into consideration. In other words, the reasoning may be implicit on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power (see judgment of 29 June 2022, bet-at-home, T‑640/21, not published, EU:T:2022:408, paragraph 21 and the case-law cited). That is the case here.
169
It follows that the applicant, who bears the burden of proof in the present invalidity proceedings (see paragraph 26 above), has not refuted the finding that at least one essential characteristic of the goods is not necessary to obtain a technical result.
170
In the light of the principles set out in paragraphs 155 and 156 above, that finding is sufficient to preclude the application of Article 7(1)(e)(ii) of Regulation No 40/94.
171
It must be concluded that, notwithstanding the errors of assessment found in paragraphs 136 and 148 above, which, in the light of the foregoing have no bearing on the legality of the contested decision, the Board of Appeal was right to confirm that the contested trade mark was eligible for registration in the light of Article 7(1)(e)(ii) of Regulation No 40/94.
172
The second plea in law must, therefore, be rejected as unfounded.
173
It follows that the contested decision is not vitiated by any ground for annulment or alteration.
174
In the light of the foregoing considerations, the action must be dismissed in its entirety.
Costs
175
Under 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.
176
Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.
Dismisses the action;
2.
Orders BB Services GmbH to pay the costs.
Costeira
Kancheva
Tichy-Fisslberger
Delivered in open court in Luxembourg on 6 December 2023.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
Law
The claim for a declaration of invalidity of the contested trade mark
Admissibility
Admissibility of the action as regards the goods in Classes 9 and 25
The applicant’s general reference to its written submissions before EUIPO
Substance
The first plea, alleging infringement of Article 7(1)(e)(i) of Regulation No 40/94
– The determination of the nature of the goods
– The determination of the essential characteristics of the sign
– Whether or not the shape results from the nature of the goods themselves
The second plea, alleging infringement of Article 7(1)(e)(ii) of Regulation No 40/94
– The determination of the functionality of the goods
– The determination of the essential characteristics of the sign
– Whether or not the shape is necessary to obtain a technical result
Costs
(
*1
)	Language of the case: German.