Judgment of the General Court (Eighth Chamber) of 31 January 2018 –

Novartis v EUIPO — SK Chemicals (Figurative EU trade mark representing a transdermal patch)

(Case T‑44/16)

(EU trade mark — Invalidity proceedings — Figurative EU trade mark representing a transdermal patch — Absolute ground for refusal — Sign consisting exclusively of the shape of the product 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))

1. 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—Aim (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see paras 17, 18, 57, 103)

2. 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—Meaning—Two- or three- dimensional signs—Included (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see para. 19)

3. 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—Meaning—Interpretation in the light of the public interest underlying each of them (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see paras 20, 21)

4. 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—Meaning—Existence of other shapes allowing the same technical result to be obtained—Not relevant to the ground for refusal (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see paras 22, 36, 56, 79)

5. 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 (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see paras 23, 24, 46, 47)

6. 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 (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see paras 25, 61, 68, 75)

7. EU trade mark—Surrender, revocation and invalidity—Absolute grounds for invalidity—Registration contrary to Article 7(1)(e)(ii) of Regulation No 207/2009—Figurative mark representing a transdermal patch (Council Regulation No 207/2009, Arts 7(1)(e)(ii) and 52(1)(a)) (see paras 38, 39, 52, 63, 69, 80, 90, 104)

8. EU trade mark—Definition and acquisition of the EU trade mark—Assessment of the registrability of a sign—EU rules only taken into account—Earlier registration of the mark in certain Member States or third countries—Decisions not binding EU bodies (Council Regulation No 207/2009) (see para. 51)

9. 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—Meaning—Presence of non-essential characteristics with no technical function—Not relevant to the ground for refusal (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see paras 86, 101, 102)

10. 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—Effect (Council Regulation No 207/2009, Art. 7(1)(e)(ii)) (see paras 98, 99)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 27 November 2015 (Case R 2342/2014-5), relating to invalidity proceedings between SK Chemicals and Novartis.

Operative part

The Court:

1. Dismisses the action;