62018TJ0261_RES
Case T‑261/18
Roxtec AB
v
European Union Intellectual Property Office
Judgment of the General Court (Second Chamber), 24 September 2019
(EU trade mark — Invalidity proceedings — EU figurative trade mark depicting a black square containing seven concentric blue circles — Absolute ground for refusal — Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result — Article 7(1)(e)(ii), of Regulation (EU) 2017/1001)
EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Concept — Interpretation in the light of the underlying public interest
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(e)(ii))
(see paragraphs 26-29)
EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Identification of the essential characteristics of a sign — Distinctive character of the elements of a sign or distinctive character acquired through the use of a sign — Irrelevant
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(e)(ii) and (3))
(see paragraphs 30-33, 38, 51, 53, 58-64)
EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Assessment of the essential characteristics in the light of the technical function of the goods
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(e)(ii))
(see paragraphs 34, 35)
EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(e)(ii) of Regulation 2017/1001 — Figurative mark depicting a black square containing seven concentric blue circles
(European Parliament and Council Regulation 2017/1001, Arts 7(1)(e)(ii) and 59(1)(a))
(see paragraphs 45, 65, 74-77, 86, 92)
EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Exception — Distinctive character acquired through use — Not applicable
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(e)(ii) and (3))
(see paragraph 52)
EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Perception of the average consumer — Relevance
(European Parliament and Council Regulation 2017/1001, Art. 7(1)(e)(ii))
(see paragraphs 54-56)
Résumé
By its judgment of 24 September 2019 in Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles) (T‑261/18), the General Court dismissed the action brought against the decision of the European Union Intellectual Property Office (EUIPO), by which the latter declared a figurative mark depicting a black square containing seven concentric blue circles to be invalid.
In this case, Roxtec had had that mark registered in respect of ‘cable and pipe penetration seals, made from plastic or rubber’. Following an application for a declaration of invalidity from Wallmax, EUIPO upheld that application, on the ground that the mark consisted exclusively of the shape necessary to obtain a technical result.
In those proceedings, the Court ruled on the concept of ‘essential characteristics’ of a sign consisting of a shape, for the purposes of the application of the absolute ground for refusal in Article 7(1)(e)(ii) of Regulation 2017/1001. (
1
)
As a preliminary point, the Court noted that the correct application of that article 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. In that regard, the Court held that the concept of ‘essential characteristics’ of the sign does not refer to the ‘distinctive elements’ of the sign, but only to the ‘most important elements of the sign’, which should be identified on a case-by-case basis.
Next, the Court pointed out that, during that identification, the perception of the relevant public is neither necessary nor decisive and, at most, may constitute a relevant, but not decisive, criterion of assessment for the competent authority in identifying the essential characteristics of the sign. When identifying the essential characteristics of a sign consisting of a shape, (
2
) unlike when assessing the distinctive character of a sign, (
3
) the perception of the relevant public merely serves to determine which elements are perceived as most important, with the specific aim of examining the functionality of the shape at issue.
Furthermore, the Court stated that even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, (
4
) it is prohibited from being registered as a trade mark. Moreover, the Court held that whether an essential characteristic is ‘decorative’, ‘imaginative’ or ‘arbitrary’ is assessed only in the second step of the analysis concerning the functionality of the essential characteristics, not as part of the first step on the identification of the essential characteristics of the sign.
Accordingly, the Court concluded that neither the distinctive character of the elements of a sign nor the distinctive character acquired through the use of a sign are relevant in determining its essential characteristics for the purposes of Article 7(1)(e)(ii) of Regulation 2017/1001.
In the case at hand, the Court upheld, in the first place, EUIPO’s finding that the essential characteristic of the contested sign corresponds to the concentric circles. In the second place, the Court held that EUIPO was correct in finding that the contested trade mark consisted of the actual shape of the product at issue, namely a two-dimensional depiction of the leading surface of the sealing module which shows the end of the removable concentric sealing layers that make up the inside of the cylindrical cavity of that module. Finally, the Court rejected the applicant’s argument that the contested trade mark did not have the necessary and indispensable characteristics for the product at issue to function and be used.
(
1
)	Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
(
2
)	Within the meaning of Article 7(1)(e)(ii) of Regulation 2017/1001.
(
3
)	Within the meaning of Article 7(1)(b) of Regulation 2017/1001.
(
4
)	Within the meaning of Article 7(3) of Regulation 2017/1001.