JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
7 June 2023 (*)
(EU trade mark – Invalidity proceedings – EU figurative trade mark representing a blue square containing eight concentric black circles – absolute ground of invalidity – Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(ii) of Regulation (EC) No 40/94 (now Article 7(1)(e)(ii) of Regulation (EU) 2017/1001))
In Joined Cases T‑218/22 and T‑219/22,
Roxtec AB, established in Karlskrona (Sweden), represented by J. Olsson and J. Adamsson, lawyers,
applicant in Case T‑218/22,
Wallmax Srl, established in Milan (Italy), represented by F. Ferrari, L. Goglia and G. Rapaccini, lawyers,
applicant in Case T‑219/22,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court in Case T‑218/22, being
Wallmax, established in Milan, represented by F. Ferrari, L. Goglia and C. Rapaccini, lawyers,
and
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court in Case T‑219/22, being
Roxtec, established in Karlskrona, represented by J. Olsson and J. Adamsson, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure, in particular the decision of 26 August 2022 joining Cases T‑218/22 and T‑219/22 for the purposes of the oral part of the procedure and the decision closing the proceedings,
further to the hearing on 16 February 2023,
gives the following
Judgment
1        By their actions based on Article 263 TFEU, the applicant in Case T‑218/22, Roxtec AB, and the applicant in Case T‑219/22, Wallmax Srl, seek annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 February 2022 (Case R 1093/2021-2) (‘the contested decision’).
Background to the dispute
2        On 7 November 2008, Roxtec filed an application for registration of an EU trade mark with EUIPO pursuant to 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 (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)).
3        Registration as a mark was sought for the following figurative sign:
4        The goods in respect of which registration was sought are in Classes 6, 17 and 19 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 6: ‘Cable and pipe penetration seals, made from metal; sealing frames made from metal’;
–        Class 7: ‘Sealing frames, made from plastic or rubber’;
–        Class 19: ‘Non-metallic rigid pipes for building; non-metallic cable and pipe penetration seals; non-metallic sealing frames; cable and pipe penetration seals, made of plastic or rubber’.
5        The trade mark application was published in Community Trade Marks Bulletin No 7/2009 of 20 February 2009 and the mark was registered on 21 July 2009 under number 7376023 in respect of the goods referred to in paragraph 4 above.
6        Roxtec develops and markets sealing modules which were protected by patent until 2010.
7        On 17 April 2018, Wallmax filed an application for a declaration that the contested mark was invalid under Article 59(1) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) and (d) of that regulation and with Article 7(1)(e)(i) and (ii) of Regulation 2017/1001.
8        By decision of 23 April 2021, the Cancellation Division declared the contested mark invalid in respect of all the goods for which it had been registered. It stated that, given that the contested mark had been declared invalid pursuant to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(e)(ii) of that regulation, it was not necessary for it to examine the merits of the other grounds for invalidity relied on, namely those referred to in Article 7(1)(b), (d) and (e)(i) of that regulation.
9        On 22 June 2021, Roxtec filed a notice of appeal with EUIPO against the decision of the Cancellation Division.
10      By the contested decision, the Second Board of Appeal of EUIPO:
–        upheld the Cancellation Division’s decision in so far as it declared the contested mark invalid for ‘non-metallic cable and pipe penetration seals; cable and pipe penetration seals, made of plastic or rubber’ in Class 19;
–        annulled the Cancellation Division’s decision in so far as it declared the contested mark invalid for ‘cable and pipe penetration seals, made from metal; sealing frames made from metal’ in Class 6, ‘sealing frames, made from plastic or rubber’ in Class 17 and ‘non-metallic rigid pipes for building; non-metallic sealing frames’ in Class 19;
–        referred the case back to the Cancellation Division for further examination;
–        ordered each party to bear its own costs incurred in the appeal proceedings.
Forms of order sought
11      In Case T‑218/22, Roxtec claims that the Court should:
–        annul the contested decision and refer the case back to the Board of Appeal for reconsideration;
–        in the alternative, amend that decision by deleting the last sentence of paragraph 31;
–        order EUIPO to pay the costs.
12      In Case T‑218/22, Wallmax contends that the Court should:
–        dismiss the action;
–        order Roxtec to pay the costs incurred in that case.
13      In Case T‑219/22, Wallmax claims that the Court should:
–        annul the contested decision in so far as it did not uphold its claims;
–        annul the contested decision in so far as it ordered the two parties before the Board of Appeal to bear their own costs;
–        order EUIPO to pay the costs.
14      In Case T‑219/22, Roxtec contends that the Court should:
–        dismiss the action;
–        order Wallmax to pay the costs.
15      In both of the joined cases, EUIPO contends that the Court should:
–        dismiss the actions;
–        in the event that an oral hearing is scheduled, order Roxtec to pay the costs incurred in Case T‑218/22;
–        in the event that an oral hearing is scheduled, order Wallmax to pay the costs incurred in Case T‑219/22.
16      At the hearing, Roxtec stated, in Case T‑218/22, that it was withdrawing its head of claim seeking annulment of the contested decision and referral of the case back to the Board of Appeal for re-examination, formal note of which was taken in the minutes of the hearing.
Law
Admissibility of the action in Case T‑218/22
17      Since Roxtec withdrew its principal head of claim at the hearing, it must be held that it no longer claims that the second sentence of paragraph 31 of the contested decision should be deleted.
18      In that regard, it should be noted that, whatever the grounds on which a decision is based, only the operative part of that decision is capable of producing legal effects and, consequently, of adversely affecting a person’s interests. By contrast, the assessments made in the grounds for a decision are not in themselves capable of forming the subject of an action for annulment (see, to that effect, order of 28 January 2004, Netherlands v Commission, C‑164/02, EU:C:2004:54, paragraph 21).
19      In the present case, it should be noted that in its forms of order sought, Roxtec seeks to have a sentence deleted from the grounds of the contested decision.
20      Consequently, Roxtec’s action must be dismissed as manifestly inadmissible.
Substance in Case T‑219/22
21      Wallmax puts forward a single plea in law, alleging infringement of Article 7(1)(e)(ii) of Regulation No 2017/1001. In particular, Wallmax claims that the Board of Appeal misinterpreted Article 7(1)(e)(ii) of Regulation 2017/1001, in so far as it stated that the question whether a shape was necessary to fulfil a specific technical function had to be assessed with regard to the goods for which the mark was registered. Wallmax claims that EUIPO must simply determine whether or not a shape mark represents the shape of a product which has a specific technical function, regardless of the goods or services concerned. Otherwise, the contested trade mark would be detrimental to competition, in so far as it would allow Roxtec to argue that there is a likelihood of confusion between that trade mark and the sealing modules produced and marketed by Wallmax.
22      EUIPO and Roxtec dispute those arguments.
23      Given the date on which the application for registration at issue was filed, namely 7 November 2008, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (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).
24      In the present case, in paragraph 13 of the contested decision, the Board of Appeal recalled the wording of Article 7(1)(e)(ii) of Regulation No 40/94 in the version applicable on the date on which the application for registration at issue was filed. That provision provides for registration of ‘signs which consist exclusively of … the shape of goods which is necessary to obtain a technical result’.
25      It thus follows from the scheme of the contested decision that it is based on the provision that was applicable at the time, namely Article 7(1)(e)(ii) of Regulation No 40/94. Consequently, as regards the substantive rules, the references to the applicable substantive law made by the Board of Appeal in the contested decision and by the parties in their pleadings should be understood as referring to Article 7(1)(e)(ii) of Regulation No 40/94.
26      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.
27      Contrary to what Wallmax claims, there is nothing in the wording of Article 7(1)(e)(ii) of Regulation No 40/94 to support the conclusion that the examination of the absolute ground for invalidity based on that provision should be carried out regardless of the goods for which the mark was registered.
28      By contrast, it follows from the case-law that each of the grounds for refusal to register listed in Article 7(1) of Regulation No 40/94 must be interpreted in the light of the public interest underlying them (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43).
29      The underlying rationale of 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 which a user is likely to seek in competitors’ products (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43).
30      In order for there to be a risk that an undertaking may monopolise, through trade mark law, technical solutions or functional characteristics of a product, that product must be covered by the trade mark concerned.
31      Therefore, Wallmax’s assertion that EUIPO must confine itself to determining whether or not a shape mark represents the shape of a product which has a specific technical function, regardless of the goods or services concerned, is not convincing.
32      In the light of the foregoing, the Board of Appeal was right to find, in the contested decision, that its examination of the absolute ground for invalidity referred to in Article 7(1)(e)(ii) of Regulation No 40/94 had to be carried out in relation to each of the goods for which the contested mark was registered.
33      It is therefore in the light of those considerations that the Court must examine whether the Board of Appeal was right to find that the contested mark was not caught by the ground for invalidity set out in Article 7(1)(e)(ii) of Regulation No 40/94 in respect of ‘cable and pipe penetration seals, made from metal; sealing frames made from metal;’ in Class 6, ‘sealing frames, made of plastic or rubber’ in Class 17 and ‘non-metallic rigid pipes for building; non-metallic sealing frames’ in Class 9.
34      In that regard, it should be noted, first, that the correct application of Article 7(1)(e)(ii) of Regulation No 40/94 requires that the essential characteristics of a sign be properly identified by the authority deciding on the application for registration of the sign as a trade mark. The expression ‘essential characteristics’ must be understood as referring to the most important elements 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 68).
35      In the present case, the essential characteristics of the contested mark were defined by the Board of Appeal as being ‘seven black concentric circles placed against a blue square background separated from each other by a distance that is the same as their width’ and ‘the smallest, innermost, circle encloses a larger black circle in its middle.’ That assessment by the Board of Appeal is not contested by the parties.
36      Secondly, according to the case-law, as soon as the essential characteristics of the sign are identified, it is necessary to ascertain whether they all perform a technical function in relation to the actual goods concerned. Article 7(1)(e)(ii) of Regulation No 40/94 cannot be applicable where the application for registration as a trade mark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 72).
37      In the present case, it is common ground that the contested mark, as represented in paragraph 3 above, consists of the shape of an actual product and not of an abstract shape. The actual product represented is a sealing module, which consists of a square shape from which the ends of the removable concentric sealing layers lining the inside of the cylindrical cavity can be seen. More specifically, the contested trade mark represents the frontal section of this sealing module.
38      As regards the technical result sought by the actual product concerned in the present case, it should be noted that the Board of Appeal defined it, without being challenged by the parties, as that of ensuring ‘a perfect fit for cables and pipes of different sizes’ and of allowing ‘a tight sealing of the cable or pipe irrespective of their external dimensions’.
39      As regards the analysis of the functionality of the essential characteristics of the contested mark, the Board of Appeal found that the series of concentric circles at issue was necessary to obtain the intended technical result. Those circles were the visible consequence of the plurality of removable concentric sealing layers that characterised the sealing module. Each of the concentric circles corresponded to an end view of the removable sealing layer. That plurality of sealing layers, represented by the series of concentric circles, enabled the user to peel the layers one by one in order to reach the diameter sought to insert the cable or pipe concerned and thus performed a technical function of the actual goods concerned.
40      It is apparent from the documents before the Court that, in order to function, the sealing layers, represented by the concentric circles, must show a certain elasticity, which is not disputed by the parties. In that regard, it should be noted, as observed by the Board of Appeal, that plastic and rubber have the required elasticity to ensure a perfect fit for cables or pipes of different sizes, by simply peeling the individual layers off the sealing module until the inner diameter of the module is adapted to the outer diameter of that cable or pipe.
41      In the contested decision, the Board of Appeal found, having regard to the technical result sought by the actual product concerned and the essential characteristics of the contested mark, that that mark consisted exclusively of the shape necessary to obtain the technical result for which the ‘non-metallic cable and pipe penetration seals; cable and pipe penetration seals, made of plastics or rubber’ in Class 19 were intended.
42      The parties do not dispute that finding of the Board of Appeal.
43      On the other hand, as regards ‘cable and pipe penetration seals, made from metal; sealing frames made from metal’ in Class 6, ‘sealing frames, made from plastic or rubber’ in Class 17 and ‘non-metallic rigid pipes for building; non-metallic sealing frames’ in Class 19, the Board of Appeal considered that the contested mark did not consist exclusively of the shape which is necessary to obtain a technical result for which these goods were intended, which Wallmax disputes.
44      First, as regards the ‘cable and pipe penetration seals, made from metal’ in Class 6, the Board of Appeal found that it had not been established that the plurality of concentric circles shown in the contested mark could constitute a functional feature of a metal seal. According to the Board of Appeal, the concentric circles, namely the sealing layers, only fulfilled their function if they were elastic. Wallmax did not establish that the concentric circles of the contested mark performed a technical function with regard to ‘cable and pipe penetration seals, made from metal’.
45      Next, as regards the ‘sealing frames made from metal’ in Class 6, ‘sealing frames, made from plastic or rubber’ in Class 17 and ‘non-metallic sealing frames’ in Class 19, the Board of Appeal noted that they related to the arrangements of bars between which the sealing modules are fitted and that this arrangement gave the modules their strength and shape. The Board of Appeal found that those frames were different from the sealing modules and that the modules were also not part of the frames.
46      Lastly, as regards the ‘non-metallic rigid pipes for building’ in Class 19, the Board of Appeal found, in essence, that they were held in place by the sealing modules, but were not part of those modules.
47      However, it must be stated, as observed by EUIPO, that Wallmax has neither claimed nor demonstrated, in the application, that even one of the goods referred to in paragraphs 44 to 46 above could take the shape of the contested mark and produce, in that shape, the technical result sought.
48      In those circumstances, it must be held, for the reasons set out by the Board of Appeal and recalled in paragraphs 44 to 46 above, that the concentric circles of the contested mark do not correspond to functional characteristics of the goods referred to in those paragraphs.
49      Therefore, it must be concluded, as the Board of Appeal did, that the contested mark does not consist exclusively of the shape necessary to obtain the technical result for which ‘cable and pipe penetration seals, made from metal; sealing frames made from metal’ in Class 6, ‘sealing frames, made from plastic or rubber’ in Class 17 and ‘non-metallic rigid pipes for building; non-metallic sealing frames’ in Class 19 are intended.
50      The argument based on the possible likelihood of confusion which could be relied on by Roxtec, on the basis of the contested trade mark, against the sealing modules produced and marketed by Wallmax, goes beyond the scope of this examination. It follows from a reading of the various provisions of Article 7(1) of Regulation No 40/94 as a whole that they refer to the intrinsic qualities of the contested mark and not to circumstances relating to a possible likelihood of confusion, such as that relied on by Wallmax in the present case. There is therefore no need to review the lawfulness of the contested decision in respect of a possible likelihood of confusion and the corresponding argument must, in any event, be rejected.
51      Moreover, EUIPO has yet to assess the other absolute grounds for invalidity relied on against the contested mark.
52      In the light of all the foregoing, the single plea in law relied on by Wallmax in the action in Case T‑219/22 must be rejected. Consequently, the action must be dismissed in its entirety in Case T‑219/22.
Costs
53      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. However, pursuant to Article 135(1) of those rules, the Court may, if equity so requires, decide that an unsuccessful party is to bear its own costs, but is to pay only part of the costs incurred by the other party, or even that it is not to be ordered to pay any costs.
54      In Case T‑218/22, Roxtec has, admittedly, been unsuccessful. However, EUIPO stated at the hearing that the last sentence of paragraph 31 of the contested decision was the result of an error on the part of the Board of Appeal and that it was in the interests of legal clarity and certainty that the Court should ‘strike out’ that sentence. In those circumstances, it is appropriate to apply Article 135(1) of the Rules of Procedure and to order each party to bear its own costs.
55      In Case T‑219/22, since Wallmax has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and Roxtec.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the actions;
2.      Orders Roxtec AB, the European Union Intellectual Property Office (EUIPO) and Wallmax Srl to bear their own costs in Case T‑218/22;
3.      Orders Wallmax to pay the costs in Case T‑219/22.
Kowalik-Bańczyk
Buttigieg
Hesse
Delivered in open court in Luxembourg on 7 June 2023.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.