JUDGMENT OF THE GENERAL COURT (Second Chamber)
13 November 2024 (*)
( EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of an inhaler – Absolute ground for invalidity – Sign which consists exclusively of the shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(ii) and Article 51(1)(a) of Regulation (EC) No 40/94 (now Article 7(1)(e)(ii) and Article 59(1)(a) of Regulation (EU) 2017/1001) – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 )
In Case T‑524/23,
Boehringer Ingelheim Pharma GmbH & Co. KG, established in Ingelheim (Germany), represented by I. Fowler and C. Stöber, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Glenmark Pharmaceuticals Europe Ltd, established in Harrow (United Kingdom), represented by R. Dissmann and L. Jones, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, J. Schwarcz and W. Valasidis, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 30 May 2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Boehringer Ingelheim Pharma GmbH & Co. KG, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 June 2023 (Case R 1558/2021-4) (‘the contested decision’).
Background to the dispute
2        On 1 August 2019, the intervener, Glenmark Pharmaceuticals Europe Ltd, filed with EUIPO an application for a declaration of invalidity of the EU mark registered following an application filed by the applicant on 16 July 1999 for the following three-dimensional sign:
3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought were in Class 10 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, following the restriction made during the proceedings before EUIPO, to the following description: ‘Instruments and apparatus for the inhaling of pharmaceutical preparations, namely dry powder inhalers for the treatment of COPD [(chronic obstructive pulmonary disease)]’.
4        The ground relied on in support of the application for a declaration of invalidity was that set out 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)(a), (b) and (e)(i) and (ii) of that regulation.
5        On 31 August 2021, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 7(1)(e)(ii) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).
6        On 10 September 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, finding that the contested mark infringed Article 7(1)(e)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). In particular, it took the view that the contested mark presented four essential characteristics, namely, the container, the lid, the mouthpiece and the button, which were all technically indispensable elements of the product at issue. Moreover, the Board of Appeal found that the overall convex shape could not be defined as a major arbitrary, decorative or aesthetic element to a degree that it could exclude the application of the abovementioned provision, that shape also being functional.
Forms of order sought
8        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
9        EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
10      The intervener contends that the Court should:
–        dismiss the action and uphold the contested decision;
–        order the applicant to pay the costs, including those incurred before EUIPO.
Law
11      As a preliminary point, it should be observed that, having regard to the date on which the application for registration at issue was filed, namely 16 July 1999, which is decisive for the purpose 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). Consequently, in the present case, as regards the substantive rules, the references made by the parties in their submissions to Article 7(1)(e)(ii) and Article 59(1)(a) of Regulation 2017/1001 must be understood as referring to Article 7(1)(e)(ii) and Article 51(1)(a) of Regulation No 40/94, which are identical in content.
12      In addition, in so far as, in accordance with 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 dispute is governed by the procedural provisions of Regulation 2017/1001.
13      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(e)(ii) of that regulation and, second, infringement of Article 94 of Regulation 2017/1001.
The first plea, alleging infringement of Article 51(1)(a) of Regulation No 40/94, read in conjunction with Article 7(1)(e)(ii) of that regulation
14      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.
15      The public interest underlying Article 7(1)(e)(ii) of Regulation No 40/94 is to prevent trade mark law 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).
16      Article 7(1)(e)(ii) of Regulation No 40/94 thus constitutes an obstacle that may prevent a sign consisting exclusively of the shape of goods which is necessary to obtain a technical result from being registered as a trade mark, even though that sign is capable of performing the essential function of a trade mark, that of guaranteeing the identity of the origin of the goods or services in question to the consumer by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin (judgment of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 35).
17      Given that Regulation No 40/94 provides no definition of the concept of ‘shape’, the meaning and scope of that concept must be determined by considering its usual meaning in everyday language, while also taking into account the context in which it occurs and the purposes of the rules of which it is part. In the context of trade mark law, the concept of ‘shape’ is usually understood as a set of lines or contours that outline the product concerned (see judgment of 14 March 2019, Textilis, C‑21/18, EU:C:2019:199, paragraphs 35 and 36 and the case-law cited).
18      In order to apply Article 7(1)(e)(ii) 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 (see, by analogy, judgment of 18 September 2014, Hauck, C‑205/13, EU:C:2014:2233, paragraph 21 and the case-law cited). The identification of those characteristics 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 (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 71).
19      Once the sign’s essential characteristics have been identified, EUIPO still has to ascertain whether they 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). Clearly, that examination must be carried out by analysing the sign filed with a view to its registration as an EU trade mark, and not signs consisting of other shapes of goods (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 84). The technical functionality of the characteristics of a shape 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, paragraph 85).
20      By the terms ‘exclusively’ and ‘necessary’, Article 7(1)(e)(ii) of Regulation No 40/94 ensures that solely shapes of goods 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 (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 48).
21      However, the condition that registration of a shape of goods as a 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).
22      In addition, 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 (see judgment of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 27 and the case-law cited).
23      However, 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. 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, paragraph 72).
24      The six parts of the first plea, alleging, first, an error in failing to identify the overall convex shape as an essential characteristic, second, failure to apply the two-step test, third, an error in the identification of a technical result of the overall convex shape, fourth, an error in the identification of a technical result of the container, the lid and the button, fifth, an error in the assessment of the relevance of the patents and, sixth, an error in failing to identify the overall convex shape as a major arbitrary element, must be examined in the light of those principles.
25      First, it is necessary to examine the first part, next, the second, third, fourth and fifth parts together and, lastly, the sixth part.
The first part of the first plea, alleging an error in failing to identify the overall convex shape as an essential characteristic
26      The Board of Appeal identified four essential characteristics in the contested mark, namely, the container, the lid, the mouthpiece and the button.
27      The applicant criticises the Board of Appeal for not also having identified the overall convex shape of the inhaler, which consists of upper and lower parts of that inhaler, as an essential characteristic of the contested mark. It adds that those two parts and the button make that shape symmetrical and refers to prizes which the product marketed in that shape has won, namely an inhaler marketed under the name ‘HandiHaler’.
28      EUIPO and the intervener dispute the applicant’s arguments.
29      From the outset, it must be stated that the applicant does not dispute the identification of the container, the lid, the mouthpiece and the button as essential characteristics of the contested mark. However, it criticises the Board of Appeal for not also having identified the overall convex shape as an essential characteristic of the contested mark.
30      In that regard, it must be observed that, although there is nothing to prevent the overall shape of a product from constituting an essential characteristic of a mark presenting the shape of that product, the identification of the essential characteristics must be carried out on a case-by-case basis, without there being any hierarchy that applies systematically between the various types of elements of which a sign may consist (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 70). Moreover, since the average consumer may not have the technical knowledge necessary to assess the essential characteristics of a shape, they must be determined objectively, in particular, on the basis of its graphic representation (see judgment 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 41 and the case-law cited) or patents granted in relation to the product concerned (see paragraph 18 above).
31      In the present case, it must be stated that the overall convex shape of the inhaler follows the contour of three of the essential characteristics identified by the Board of Appeal, namely, the container, the lid and the button. Although the answer to the question whether the applicant’s intention was to protect the shape of the inhaler as such is not clear from the graphic representation of the contested mark, it argued in the application and clarified at the hearing that the overall convex shape did consist of the three elements referred to above. Those elements were identified by the Board of Appeal as all being essential characteristics, on the basis of the patents in the administrative file, which do not make it possible, however, to regard the overall convex shape as being an essential characteristic, inasmuch as they do not make any reference to that shape as such. Accordingly, it may be held that the overall convex shape is indistinguishable from all or part of those essential characteristics without any of the applicant’s arguments making it possible to find that, in addition to being taken into account through those three elements, it should have been taken into account independently.
32      First, the applicant’s arguments that the overall convex shape is symmetric or that it presents a particular design which has been awarded prizes attributed to the ‘HandiHaler’ cannot confer on that shape the status of essential characteristic of the sign. By invoking those elements, the applicant relies merely on an alleged distinctive character of that shape. However, the distinctive character of the elements of a sign is irrelevant for the purposes of identifying its essential characteristics (see judgment of 30 March 2022, Shape of a rebound shoe, T‑264/21, not published, EU:T:2022:193, paragraph 44 and the case-law cited).
33      Second, although the applicant claims that an essential characteristic may at the same time include other essential characteristics, this cannot be sufficient to regard the overall convex shape as an essential characteristic of the contested mark. In support of its argument, the applicant relies in its application on the judgment of 31 January 2018, Novartis v EUIPO – SK Chemicals (Representation of a transdermal patch), (T‑44/16, not published, EU:T:2018:48), in which, unlike in the present case, none of the essential characteristics consisted exclusively of other essential characteristics. In addition, as already noted in paragraph 30 above, the identification of the essential characteristics must be carried out on a case-by-case basis, on the basis of an objective examination of the graphic representation but also of the other items of evidence which are adduced in that regard.
34      It follows from the foregoing that the Board of Appeal was right in not identifying the overall convex shape as being an essential characteristic and, accordingly, that the first part of the first plea must be rejected.
The second, third, fourth and fifth parts of the first plea, alleging, in essence, errors vitiating the examination of the technical result
35      The Board of Appeal found that the four characteristics which it had previously identified as being essential, namely, the container, the lid, the button and the mouthpiece, were technically indispensable for inhaling a medical substance. To arrive at that conclusion, it relied on, inter alia, patents which described the functionality of those characteristics. Furthermore, the Board of Appeal took the view that the overall convex shape also performed a function, in so far as it allowed consumers to comfortably hold, use and store the product concerned.
36      The applicant submits, first, that the Board of Appeal concluded prematurely, in the analysis of the four essential characteristics of the contested sign, that those characteristics had a technical function, thus failing to carry out a ‘two-step test’.
37      Second, it disputes the examination of the technical functionality of the container, the lid and the button, carried out by the Board of Appeal, as well as that of the overall convex shape.
38      As regards the technical function of the container, the lid and the button, the applicant submits, first, that the Board of Appeal examined the technical function without taking account of the specific shape of those elements. In essence, it argues that, in the present case, the claims in the patents do not attribute a particular shape to those essential characteristics, which does not make it possible to conclude that their shape is necessary to the technical solution claimed in the patents. Next, it found that, given that those characteristics may be presented in alternative shapes, the contested mark will not impede the use of a technical solution by other undertakings. Lastly, it adds that the protective function attributed to the lid cannot be regarded as a technical result, as it does not fall within the field of technology.
39      Concerning the overall convex shape, the applicant takes the view that that overall convex shape is not necessary to obtain a technical result, that it does not present the functions identified by the Board of Appeal and that those functions are not technical functions falling within the field of technology. It also argues that the patents attribute no technical advantage to that shape.
40      EUIPO and the intervener dispute the applicant’s arguments.
41      In the first place, as regards the alleged lack of the ‘two-step’ test, it must be stated that the Board of Appeal first identified, in paragraphs 62 to 65 of the contested decision, the container, the lid, the button and the mouthpiece as being essential characteristics of the contested mark and next assessed, in paragraphs 66 to 75 of that decision, whether those characteristics all performed the technical function of the product at issue.
42      The fact that the contested decision refers to the ‘essential technical elements’ in the first step, that is to say in the identification of the essential characteristics, cannot be interpreted as an anticipation of the examination as to whether those elements are necessary to obtain a specific technical result pursued by the product at issue, in so far as that analysis appears subsequently.
43      In the second place, the applicant disputes the examination of the technical function of three of the four essential characteristics, namely, the container, the lid and the button. More specifically, it disputes, first, the fact that the Board of Appeal relied on the patents which have been placed in the administrative file for the purpose of determining the technical function of the elements in question and, second, the conclusions which the Board of Appeal has drawn from those patents.
44      In that respect, it must be recalled that the examination of the technical function of an element must be assessed in the light of the technical result of the product at issue (see paragraph 19 above), which is, in the present case, inhaling a medical substance. It must therefore be assessed whether the Board of Appeal was right in confirming, by relying on those patents, that the three abovementioned elements were necessary for achieving such a result.
45      First, it must be noted that nothing precludes the Board of Appeal, as in the present case, from using the documents relating to the patents, both in respect of those which are in force and in respect of the earlier patents, which describe the functional elements of the shape to assess the technical functionality of the characteristics of the shape concerned (see paragraph 19 above). In addition, the applicant does not dispute that the inhaler represented in the patents examined by the Board of Appeal are very similar, even identical to that represented in the contested mark. In those circumstances, the applicant cannot criticise the Board of Appeal for having relied on those patents for the purpose of examining whether the essential characteristics of the contested mark were necessary for inhaling a medical substance.
46      Second, it must be noted that the patents examined by the Board of Appeal require the presence, in addition to the mouthpiece, the technical function of which is not disputed by the applicant, of a container, a lid and a button. As regards the function of the container, it is clear from those patents that it contains the capsule chamber for the insertion of the medicine. As for the button, it also follows from the patents that the button makes it possible to open the lid and to pierce the capsule containing the medicine to release it. Lastly, according to those patents, the lid makes it possible to cover the mouthpiece and thus serves to prevent dust and dirt from entering the device, which is not disputed by the applicant. Although the applicant maintains, however, that such a protective function does not fall within the field of technology, this is irrelevant, since, in order to establish that the lid has a technical function, it is sufficient that it is necessary for the function of safely inhaling a medical substance by protecting the user from hygienic risks, and that function is performed by the lid.
47      Accordingly, to the extent that it has been established that the patents attribute to the container, the lid and the button – in the same shapes as in the contested mark – technical functions, the Board of Appeal could rightly find that those elements were necessary for inhaling a medical substance.
48      Lastly, although the applicant argues that the technical result sought could also be obtained in alternative shapes, it is sufficient to state, as follows from the case-law referred to in paragraph 21 above, that the possible existence of shapes of other dimensions or other designs, and making it possible to obtain the same technical result, is irrelevant. Such a fact does not mean that the technical solution which those shapes incorporate remains available to other economic operators. In that regard, first, possible registration as a trade mark of a purely functional 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, and, second, possible registrations of various purely functional shapes of goods at the same time might completely prevent other undertakings from manufacturing and marketing certain goods having a particular technical function (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 55 to 57).
49      In the third place, as regards the applicant’s arguments that the overall convex shape does not, in itself, perform a technical function necessary for the product at issue, it is not necessary to examine them, since it has been established that that shape is not an essential characteristic.
50      It follows that the second, third, fourth and fifth part of the first plea must be rejected.
The sixth part of the first plea, alleging an error in failing to identify the overall convex shape as a major arbitrary element
51      The Board of Appeal found that the overall convex shape could not be defined as a major non-functional, arbitrary, decorative or aesthetic element justifying the exclusion of the application of Article 7(1)(e)(ii) of Regulation No 40/94.
52      The applicant argues that the overall convex shape constitutes a major, arbitrary, decorative or aesthetic element. In particular, it claims that that shape is characterised by a symmetry, which results, inter alia, from the curved and rounded shape of its upper and lower parts, as well as the rounded shape of the button’s edge. According to the applicant, since the ‘HandiHaler’ was designed by an industrial design group with clear and unique design and was awarded prizes, it presents a shape which greatly attracts attention.
53      EUIPO and the intervener dispute the applicant’s arguments.
54      It must be observed that the elements presented by the applicant, which are based, in essence, on the symmetrical and curved character of the contested mark, do not make it possible to confer on that shape a particularly imaginative or decorative character. The fact that that shape may have been designed with certain aesthetic considerations and that the three elements of which it consists follow a round shape cannot be sufficient in that regard. Moreover, even if it were to be held that that shape differed from other shapes of inhalers present on the market, in that it is curved, it cannot be concluded that it is sufficiently significant and surprising to define it as a major arbitrary element.
55      In any event, since the overall convex shape consists of three of the four essential characteristics which have been regarded as necessary for the technical result of the product in question, it must be recalled that the Court has already held that the fact that the sum of the essential characteristics presenting a technical function contributed to creating an ornamental image was of no relevance to the application of the ground for refusal referred to in Article 7(1)(e)(ii) of Regulation No 40/94 (judgment of 19 September 2012, Reddig v OHIM – Morleys (Knife handle), T‑164/11, not published, EU:T:2012:443, paragraph 40).
56      It follows that the sixth part of the first plea must be rejected and, accordingly, that plea must be rejected in its entirety.
The second plea, alleging infringement of Article 94 of Regulation 2017/1001
57      The applicant submits that the contested decision is vitiated by two internal inconsistencies, concerning, first, the relevance of other shapes of inhalers to establish whether the overall convex shape is a major arbitrary element and, second, the relevance of the patents in the examination of the technical functionality.
58      EUIPO and the intervener dispute the applicant’s arguments.
59      In accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to state the reasons on which they are based. That obligation has the same scope as that which derives from the second paragraph of Article 296 TFEU which requires that the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question, without it being necessary for that reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets those requirements must, nonetheless, be assessed with regard, not only to its wording, but also to its context and to all the legal rules governing the matter in question (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 65 and the case-law cited).
60      It must also be borne in mind that the statement of reasons for a decision must be logical and, in particular, contain no internal inconsistency that would prevent a proper understanding of the reasons underlying that decision (see judgment of 21 February 2018, Laboratoire Nuxe v EUIPO – Camille and Tariot (NYouX), T‑179/17, not published, EU:T:2018:89, paragraph 21 and the case-law cited).
61      The second plea must be examined in the light of those principles.
62      As regards the first internal inconsistency relied on by the applicant, it submits that the contested decision found that the presence of other shapes of inhalers on the market was not relevant to show that the overall convex shape is a major arbitrary element, while itself relying on the customary character of such a shape on the market to establish that it was not a major arbitrary element.
63      Although the applicant claims that the Board of Appeal made such assessments when it examined whether the overall convex shape was a major arbitrary element, it must be stated that, in reality, first, since the applicant relied on examples of other inhalers in order to demonstrate the distinctive character of the contested mark and of its overall convex shape, what the Board of Appeal observed is that the alleged distinctive character of that shape was not relevant for the determination of the essential characteristics. Second, the Board of Appeal relied on other inhalers in the examination of the functionality of the overall convex shape of the contested mark. Therefore, the Board of Appeal’s reasoning contains no internal inconsistency in that regard.
64      As regards the second internal inconsistency allegedly vitiating the contested decision, the applicant submits that the Board of Appeal relied on the patents placed in the file to establish the four essential characteristics of the contested mark and their technical result, but found that those patents and the expert opinion which examined those patents were not relevant in respect of the examination of the overall convex shape.
65      It must be observed that the applicant’s arguments are the result of an incorrect reading of the contested decision. Contrary to what the applicant maintains, it is not clear from the contested decision that the Board of Appeal did not take into account the patents for the purpose of examining the overall convex shape. Moreover, the fact that the Board of Appeal relied on other elements, such as the applicant’s statements in the administrative procedure concerning the use of the inhaler or the examples of other inhalers, in order to establish the functionality of that shape, cannot be regarded as inconsistent with the fact that it relied on those patents when examining the technical function of the four essential characteristics of the contested mark.
66      As regards the expert opinion submitted by the applicant, which had analysed the patents from the perspective of patent law and had sought, inter alia, to prove that they did not make it possible to attribute a technical function to the overall convex shape, the Board of Appeal explained that it had relied on the definitions of the Convention on the Grant of European Patents, signed in Munich (Germany) on 5 October 1973 and of the European Patent Organisation (EPO). Although the EU judicature has established that the examination of patents may be regarded as relevant in the assessment of the functionality of an element (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 85), clearly it does not follow that patent law becomes applicable in the examination of a mark. It follows that the Board of Appeal did not rely on inconsistent reasoning in that regard.
67      In the light of the foregoing, the single plea must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
68      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party shall be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
69      Moreover, the intervener also claimed that the applicant should be ordered to pay the costs incurred before EUIPO. In that regard, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 April 2021, Comercializadora Eloro v EUIPO – Zumex Group (JUMEX), T‑310/20, not published, EU:T:2021:227, paragraph 45).
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Boehringer Ingelheim Pharma GmbH & Co. KG to pay the costs.
Marcoulli
Schwarcz
Valasidis
Delivered in open court in Luxembourg on 13 November 2024.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.