ORDER OF THE GENERAL COURT (Second Chamber)
14 November 2023 (*)
(EU trade mark – Application for EU figurative mark representing two parallel luminous yellow bands separated by a silver grey band with transparent parallel slanted lines running through the three bands – Absolute ground for refusal – Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(ii) of Regulation (EC) No 207/2009 (now Article 7(1)(e)(ii) of Regulation (EU) 2017/1001) – Action manifestly lacking any foundation in law)
In Case T‑801/22,
3M Company, established in Saint Paul, Minnesota (United States), represented by T. de Haan and S. Vandezande, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli (Rapporteur), President, V. Tomljenović and W. Valasidis, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, 3M Company, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 October 2022 (Case R 1151/2018‑1) (‘the contested decision’).
Background to the dispute
2        On 6 March 2017, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The EU trade mark application contained the following colour claim: ‘luminous yellow (RAL: 1026) and silver grey (RAL: 7001)’, as well as the following description: ‘the mark consists of two parallel luminous yellow bands and, in between, a silver-grey band, with transparent parallel slanted lines running through the three bands.’
4        The mark applied for covered goods in, inter alia, following the restrictions made in the course of proceedings before EUIPO, Classes 9, 17 and 24 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 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Life-saving equipment, namely visual identification indicators for use by manufacturers of protective clothing for firefighters to be incorporated by the manufacturers into said clothing at the manufacturing stage’;
–        Class 17: ‘Goods made from rubber, gutta-percha, gum, asbestos or mica, not included in other classes, namely, synthetic rubber for use in manufacture, semi-finished rubber in the form of strips, mouldings, cuttings and profiles, unprocessed or semi-processed gutta-percha, semi-worked rubber; plastics in extruded form for use in manufacture; all of the above being limited to goods for use by manufacturers of protective clothing for firefighters to be incorporated by the manufacturers into said clothing’;
–        Class 24: ‘Textiles and textile goods, not included in other classes, namely textiles and textile goods for use by manufacturers of protective clothing for firefighters to be incorporated by the manufacturers into said clothing’.
5        By decision of 11 May 2018, the examiner rejected the application for registration, on the basis of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and, more specifically, Article 7(1)(b) of that regulation (now Article 7(1)(b) of Regulation 2017/1001).
6        On 20 June 2018, the applicant filed a notice of appeal with EUIPO against the examiner’s decision.
7        By communication of 5 January 2022, the applicant was informed that the examination of the absolute grounds for refusal would be reopened on the basis of the ground set out in Article 7(1)(e)(ii) of Regulation No 207/2009 (now Article 7(1)(e)(ii) of Regulation 2017/1001) and of the rapporteur’s preliminary opinion that that ground was applicable to the sign applied for. The applicant was invited to submit its observations on that preliminary opinion.
8        By the contested decision, the Board of Appeal dismissed the appeal. It found that all the essential characteristics of the sign applied for were necessary to obtain the desired technical result and had been chosen as preferred solutions to fulfil their technical function and that that sign did not contain any additional element, such as a non-functional, decorative or imaginative element that could play an important role in that sign. The Board of Appeal concluded from that finding that registration was barred by reason of Article 7(1)(e)(ii) of Regulation No 207/2009.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event of a hearing being held.
Law
11      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
12      In the present case, the Court considers that it has sufficient information from the documents before it and decides, pursuant to that Article 126, to give its decision without taking further steps in the proceedings, even though one of the parties has requested a hearing (see, to that effect, order of 23 August 2023, Nienaber v EUIPO – St. Hippolyt Mühle Ebert (BoneKare), T‑609/22, not published, EU:T:2023:478, paragraph 15 and the case-law cited).
13      In support of its action, the applicant relies on a single plea in law alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009.
14      Under Article 7(1)(e)(ii) of Regulation No 207/2009, in the version in force on 6 March 2017, the date on which the application for registration was filed, which is decisive for the purposes of identifying the applicable substantive law (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), signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result, are not to be registered.
15      The general interest underlying Article 7(1)(e)(ii) of Regulation No 207/2009 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      By restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 207/2009 to signs which consist ‘exclusively’ of the shape which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods was, to a certain extent, functional and that it would therefore have been inappropriate to refuse to register a shape of goods as an EU trade mark solely on the ground that it had functional characteristics. By the terms ‘exclusively’ and ‘necessary’, that provision 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. Such a registration would unduly impair the opportunity for competitors to place on the market goods whose shapes incorporate the same technical solution (see judgment of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 26 and the case-law cited).
17      As regards the condition relating to the fact that the ground for refusal covers any sign consisting ‘exclusively’ of the shape of goods which is necessary to obtain a technical result, 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 207/2009 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 that shape (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).
18      As regards 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 207/2009 only if the shape is ‘necessary’ to obtain the technical result intended, that condition does not mean that the shape at issue must be the only one capable of obtaining that result (see judgment of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 28 and the case-law cited).
19      Furthermore, the correct application of Article 7(1)(e)(ii) of Regulation No 207/2009 requires that the essential characteristics of the sign at issue – that is, the most important elements of the sign – be properly identified by the authority deciding on the application for registration of the sign as a trade mark. Once the sign’s essential characteristics have been identified, it is for the competent authority to ascertain whether they all perform the technical function of the goods at issue (see judgment of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 29 and the case-law cited).
20      Finally, a sign which is refused registration on the basis of Article 7(1)(e) of Regulation No 207/2009 can never acquire distinctive character through use for the purposes of Article 7(3) of that regulation. Article 7(1)(e) of that regulation thus concerns certain signs which are not such as to constitute trade marks and is a preliminary obstacle liable to prevent a sign consisting exclusively of the shape of a product from being registrable (see, by analogy, judgment of 18 June 2002, Philips, C‑299/99, EU:C:2002:377, paragraphs 75 and 76).
21      It is in the light of those principles that it is necessary to examine the two parts of the single plea, alleging, first, errors made by the Board of Appeal in its examination of the technical function of the essential characteristics of the sign applied for and, secondly, that the Board of Appeal, in the course of that examination, incorrectly added elements to the characteristics of that sign.
The first part of the plea, alleging errors made by the Board of Appeal in its assessment of the technical function of the essential characteristics of the sign applied for
22      The applicant submits, first, that the Board of Appeal erred in law by basing its finding as to the technical function of the three horizontal bands of the sign applied for on the manufacturing process of the goods covered by that mark. Secondly, it submits that the Board of Appeal made an error of assessment in finding that the parallel slanted lines running through the three bands were necessary to obtain the technical result, even though those lines are transparent and their role is purely decorative and imaginative. Thirdly, the applicant submits that, similarly, the Board of Appeal did not establish how the element consisting of three horizontal bands of equal height in two colours contributed to the technical result. The applicant concludes from this that the Board of Appeal failed to establish that all the essential characteristics of the sign applied for performed a technical function of the goods.
23      EUIPO disputes the applicant’s arguments.
24      In that regard, in accordance with the case-law cited in paragraph 19 above, the Board of Appeal began by identifying the essential characteristics of the sign applied for. It found, in essence, that those essential characteristics consisted, first, of three bands arranged horizontally in precisely defined proportions of one-third, one-third, one-third; secondly, of the precisely defined colours ‘luminous yellow’ and ‘silver grey’ and the specific arrangement of those colours in the mark; and, thirdly, of parallel slanted lines running through the three bands. It also noted that it was apparent from a simple visual analysis that the sign applied for corresponded in full to the representation of a retro-reflective band consisting of three bands in luminous yellow and silver grey, with an additional pattern of slanted lines, which was clearly visible when used on articles of clothing.
25      There is no reason to call into question the essential characteristics thus identified by the Board of Appeal, which, moreover, are not disputed by the applicant.
26      Next, the Board of Appeal analysed the functionality of the essential characteristics of the sign applied for.
27      First of all, the Board of Appeal found that the goods covered by the mark applied for were, in essence, visual identification indicators for use by manufacturers of protective clothing for firefighters to be incorporated by the manufacturers into that clothing and that the technical result sought by those goods was to improve the safety of firefighters by making them clearly visible, both during the day and at night, including under very difficult visibility conditions. There are no grounds to call those assessments into question, and, moreover, they are not disputed by the applicant.
28      Next, relying in particular on the patents held by the applicant for various reflective products and the information taken from its website and accepting certain assessments contained in the preliminary opinion (see paragraph 7 above), the Board of Appeal found that the essential characteristics of the sign applied for were ‘preferred solutions’ for technical reasons, since they made it possible to enhance the visibility of the reflective markings. In particular, the Board of Appeal noted that reflective bands were commonly used in protective clothing, as well as colours, namely the colour silver grey, corresponding to the natural colour of the thin metal layer used for technical reasons, and the bright fluorescent yellow colour, preferably used to create a highly noticeable colour contrast, and that the use of three horizontal bands of the same size facilitated their manufacture in large quantities. As regards the parallel slanted lines, it found that these involved a segmented transfer film which had long been used to enhance the night-time visibility of the retro-reflective article in question.
29      First, the applicant claims that the Board of Appeal failed to demonstrate that the horizontal arrangement of the three horizontal bands of equal height in two colours constituted a functional element.
30      It follows from the contested decision that the Board of Appeal jointly examined the functionality of the first two essential characteristics referred to in paragraph 24 above, namely the three horizontal and equal bands and the colours ‘luminous yellow’ and ‘silver grey’, which it classified as a ‘basic pattern’. Since the three bands are made up of alternating colours, such an approach, which, moreover, is not expressly disputed by the applicant, cannot be called into question.
31      Next, it should be borne in mind that, in the examination of the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 207/2009, the functions performed by the essential characteristics of the shape must be assessed in the light of the actual goods concerned (see, to that effect, judgment of 10 November 2016, Simba Toys v EUIPO, C‑30/15 P, EU:C:2016:849, paragraph 46 and the case-law cited). 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, paragraph 85; see also 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 35 and the case-law cited).
32      In that regard, the applicant does not dispute either that the ‘luminous yellow’ coloured bands are intended to ensure their visibility during the day and that the ‘silver grey’ retro-reflective band can reflect light emitted by a vehicle or a lamp during the night, or that the contrast resulting from the succession of those two colours enhances their perceptibility.
33      In that context, it must be stated that the horizontal arrangement of the three bands allows the colours to alternate, further enhancing visibility. Even if the applicant seeks to rely on the fact that there are other ways of arranging those three bands in order to achieve the desired result, such an argument would have to be rejected as ineffective in the light of the case-law cited in paragraph 18 above.
34      It follows that the applicant’s submission that the horizontal arrangement of the three bands is not necessary in order to obtain the technical result sought and should be regarded as an ornamental element of the sign applied for is manifestly unfounded.
35      Lastly, in so far as the Board of Appeal noted that the use of three horizontal bands facilitated the production process, it must be held that that fact was clearly identified as a non-technical consideration justifying use of the three bands. Since, as stated in paragraph 33 above, the three bands were intended to obtain a technical result, the applicant’s argument that the Board of Appeal erred in taking into account the manufacturing process is ineffective and must be rejected on that ground.
36      Secondly, as regards the parallel slanted lines running through the three bands, the applicant complains, in essence, that the Board of Appeal confused those non-functional lines, which, as stated in the description of that sign, are transparent, with the lines reproduced on the goods concerned, which, for their part, have a reflective quality.
37      It must be noted, as the Board of Appeal did, that the lines on the goods covered by the sign applied for correspond to a fire-resistant segmented reflective transfer film intended to enhance the night-time visibility of those goods. They form part of a technology developed by the applicant which was patented at its request.
38      The applicant does not dispute that the sign applied for is a representation of at least some of the goods covered (see paragraph 24 above) and that, therefore, the transparent lines on that sign represent the segmented reflective transfer film.
39      It follows that the transparent slanted lines incorporate a technical solution into the sign applied for, irrespective of the fact that they do not have a reflective property on that sign. The applicant’s submission that they were incorporated into that sign as a decorative and imaginative element is therefore manifestly unfounded.
40      It follows that the first part of the plea must be rejected as being manifestly unfounded.
The second part of the plea, alleging unlawful addition of elements to the essential characteristics of the sign applied for for the purpose of assessing its functionality
41      The applicant submits that, although the Board of Appeal is not prohibited from taking account of the actual use of the mark applied for, its assessment of the technical function of the essential characteristics of that mark considerably exceeded the scope of the trade mark application. In its view, the Board of Appeal relied indiscriminately on elements contained only in the patents obtained for certain of its products, such as the material or fabric from which those products are made or certain technical elements. It adds that the technical result sought cannot be achieved by the essential characteristics of the sign applied for alone, but depends on other elements, including the material used. It also notes that the parallel slanted lines reinforce the distinctive character of the sign applied for.
42      EUIPO disputes the applicant’s arguments.
43      In that regard, first, in so far as the applicant criticises the Board of Appeal for having assessed the technical function of the essential characteristics of the sign applied for in the light of elements not included in the trade mark application, in particular the patents which it has obtained, that argument is indistinguishable from the argument put forward in the first part of the plea. It is therefore sufficient to recall that, when examining the functionality of a sign for the purposes of Article 7(1)(e)(ii) of Regulation No 207/2009, the functions performed by the essential characteristics of the shape must be assessed in the light of the actual goods concerned, in particular, taking into account the documents relating to earlier patents describing the functional elements of the shape concerned (see paragraph 31 above).
44      Secondly, it must be noted, as EUIPO did, that the second part of the plea is based, inter alia, on the premiss that, in order for the ground for refusal of registration referred to in Article 7(1)(e)(ii) of Regulation No 207/2009 to apply, the essential characteristics of the sign at issue must be not only necessary, but also sufficient, to obtain the technical result sought.
45      That premiss is manifestly incorrect. The absolute ground for refusal provided for in Article 7(1)(e)(ii) of Regulation No 207/2009 may apply to signs consisting of the shape of goods the graphic representation of which does not reveal all the elements which are necessary for the implementation of the technical solution concerned, provided that it is shown that the implementation of that technical solution cannot be effective without the essential characteristics which are visible in that graphic representation (judgment of 24 October 2019, Rubik’s Brand v EUIPO – Simba Toys (Shape of a cube with surfaces having a grid structure), T‑601/17, not published, EU:T:2019:765, paragraph 96; see also, to that effect and by analogy, judgment of 23 April 2020, Gömböc, C‑237/19, EU:C:2020:296, paragraph 32).
46      If the prohibition under Article 7(1)(e)(ii) of Regulation No 207/2009 applied only to shapes the graphic representation of which reveals all the characteristics allowing a product to perform its technical function, it could easily be circumvented. It would be sufficient to omit, in the graphic representation, a characteristic without which that technical function could not be achieved, notwithstanding the fact that that function requires the presence of all the essential characteristics displayed in the sign at issue. If this were the case, the provision referred to above would not safeguard the public interest consisting of competitors being able to use technical solutions which are not, or no longer, protected by a patent (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 97).
47      In the present case, since the essential characteristics of the sign applied for, referred to in paragraph 24 above, are necessary in order to obtain the technical result sought by the product concerned, it must be concluded that that trade mark infringes the ground referred to in Article 7(1)(e)(ii) of Regulation No 207/2009, even though those characteristics are not sufficient, on their own, to achieve that result.
48      Thirdly, in so far as the applicant relies on the distinctive character of the transparent lines on the sign at issue, it must be borne in mind that Article 7(1)(e)(ii) of Regulation No 207/2009 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, namely 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 (see judgment of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 35 and the case-law cited).
49      It follows that the second part of the plea must be rejected as being manifestly unfounded and, accordingly, the single plea must be rejected in its entirety.
50      In light of all of the above findings, the action must be dismissed as manifestly lacking any foundation in law.
Costs
51      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.
52      In the present case, although the applicant has been unsuccessful, EUIPO has applied for the applicant to be ordered to pay the costs only in the event of a hearing being held. Since no hearing was held, it is appropriate to decide that each party is to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby orders:
1.      The action is dismissed.
2.      3M Company and the European Union Intellectual Property Office (EUIPO) shall each bear their own costs.
Luxembourg, 14 November 2023.
V. Di Bucci
A. Marcoulli
Registrar
President
*      Language of the case: English.