Case T‑450/09

Simba Toys GmbH & Co. KG

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

‛Community trade mark — Invalidity proceedings — Three-dimensional Community trade mark — Cube with surfaces having a grid structure — Absolute grounds for refusal — First sentence of Article 76(1) of Regulation (EC) No 207/2009 — No sign consisting exclusively of the shape of goods which is necessary to obtain a technical result — Article 7(1)(e)(ii) of Regulation No 40/94 (now Article 7(1)(e)(ii) of Regulation No 207/2009) — No sign consisting exclusively of the shape which results from the nature of the goods themselves — Article 7(1)(e)(i) of Regulation No 40/94 (now Article 7(1)(e)(i) of Regulation No 207/2009) — No sign consisting exclusively of the shape which gives substantial value to the goods — Article 7(1)(e)(iii) of Regulation No 40/94 (now Article 7(1)(e)(iii) of Regulation No 207/2009) — Distinctive character — Article 7(1)(b) of Regulation No 40/94 (now Article 7(1)(b) of Regulation No 207/2009) — No descriptive character — Article 7(1)(c) of Regulation No 40/94 (now Article 7(1)(c) of Regulation No 207/2009) — Distinctive character acquired through use — Article 7(3) of Regulation No 40/94 (now Article 7(3) of Regulation No 207/2009) — Obligation to state reasons — First sentence of Article 75 of Regulation No 207/2009’

Summary — Judgment of the General Court (Sixth Chamber), 25 November 2014

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications which may serve to designate the characteristics of goods — Three-dimensional mark — Cube with surfaces having a grid structure

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Three-dimensional marks consisting in the shape of the product — Cube with surfaces having a grid structure

Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result — Cube with surfaces having a grid structure

Community trade mark — Definition and acquisition of the Community 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 three-dimensional sign

Community trade mark — Definition and acquisition of the Community 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

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. The public interest underlying Article 7(1)(e)(ii) of that regulation is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product. The rules laid down by the legislature reflect the balancing of two considerations, both of which are likely to help establish a healthy and fair system of competition. First, the inclusion in Article 7(1) of Regulation No 40/94 of the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions. When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution. In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators. Moreover, 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. Second, by restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods is, to a certain extent, functional 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 has 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. (see paras 32-37)

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 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. The identification of those essential characteristics 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. In determining the essential characteristics of a sign, the competent authority may either base its assessment directly on the overall impression produced by the sign, or first examine in turn each of the components of the sign concerned. In particular, the identification of the essential characteristics of a sign with a view to a possible application of the ground for refusal of registration under Article 7(1)(e)(ii) of Regulation No 40/94 may, depending on the case, and in particular in view of the degree of difficulty of that sign, 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. Once the sign’s essential characteristics have been identified, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) still has to ascertain whether they all perform the technical function of the goods at issue. 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. In that case, competitor undertakings easily have access to alternative shapes with equivalent functionality, so that there is no risk that the availability of the technical solution will be impaired. 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. (see paras 38-41)

See the text of the decision. (see paras 44-77)

According to Article 7(1)(e)(iii) of Regulation No 40/94, ’signs which consist exclusively of … the shape which gives substantial value to the goods … shall not be registered’. In order for that ground for refusal to apply, it is necessary that the sign concerned consist exclusively of a shape and that the aesthetic characteristics of that shape, namely its external appearance, determine to a very large extent the consumer’s choice and, therefore, the commercial value of the goods at issue. Where the shape thus gives substantial value to the goods at issue, it is irrelevant that other characteristics of those goods, such as their technical qualities, may also confer on them considerable value. (see paras 86, 87)

Under Article 7(1)(b) of Regulation No 40/94 ‘trade marks which are devoid of any distinctive character’ are not to be registered. For a trade mark to possess distinctive character within the meaning of that provision, it must serve to identify the product in respect of which registration has been applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. That distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of those goods or services. The criteria for assessing the distinctive character of a three-dimensional trade mark consisting of the appearance of the goods themselves are no different from those applicable to other categories of trade mark. None the less, for the purpose of applying those criteria, the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark, which consists of the appearance of the goods themselves, as it is in the case of a word or figurative mark, which consists of a sign unrelated to the appearance of the goods it designates. Average consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark. Furthermore, the more closely the shape for which registration as a trade mark is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. In those circumstances, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of that provision. Lastly, in order to ascertain whether the combination of the components which make up a shape may be perceived by the relevant public as an indication of origin, the overall impression produced by that combination must be analysed. That is not incompatible with an examination of each of the product’s individual features in turn. (see paras 92-94, 96-99)

See the text of the decision. (see paras 103, 104, 106-110)

Article 7(1)(c) of Regulation No 40/94 prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all. The signs and indications referred to in Article 7(1)(c) of Regulation No 40/94 are those which may serve in normal usage from the point of view of the relevant public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought. It follows that, for a sign to fall under the prohibition laid down by that provision, there must be a sufficiently direct and specific link between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of those goods or services or of one of their characteristics. Finally, the descriptiveness of a sign may be assessed only, first, by reference to the way in which it is understood by the relevant public and, second, by reference to the goods or services concerned. A mark’s descriptive character must be assessed in relation to the goods and services for which the mark was registered and in the light of the presumed perception of an average consumer of the category of goods and services in question, who is reasonably well informed and reasonably observant and circumspect. (see paras 116-120)

See the text of the decision. (see paras 123-125)