Order of the General Court (Tenth Chamber) of 15 July 2021 –

Roxtec v EUIPO – Wallmax (Representation of an orange square containing seven concentric black circles)

(Case T‑455/20)

(EU trade mark – Invalidity proceedings – EU figurative mark depicting an orange square containing seven concentric black 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 (EC) No 207/2009 (now Article 7(1)(e)(ii) of Regulation (EU) 2017/1001))

1. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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, Arts 7(1)(e)(ii) and 52(1)(a)) (see paras 25-28, 84)

2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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 (Council Regulation No 207/2009, Arts 7(1)(e)(ii) and (3), and 52(1)(a)) (see paras 29-32, 60, 86)

3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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, Arts 7(1)(e)(ii) and 52(1)(a)) (see paras 33, 67-69)

4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs of which a trade mark may consist – Sign consisting exclusively of the shape of goods – Conditions (Council Regulation No 207/2009, Arts 7(1)(e) and 52(1)(a)) (see para. 56)

5. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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 (Council Regulation No 207/2009, Arts 7(1)(e)(ii) and (3), and 52(1)(a)) (see para. 57)

6. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – 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, Arts 7(1)(e)(ii) and 52(1)(a)) (see paras 58, 59)

7. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result – Figurative mark representing an orange square containing seven concentric black circles (Council Regulation No 207/2009, Arts 7(1)(e)(ii) and 52(1)(a)) (see paras 62, 78, 79, 87-90)

Re:

Action brought against the decision of the Second Board of Appeal of EUIPO of 20 April 2020 (Case R 2385/2018-2), relating to invalidity proceedings between Wallmax and Roxtec.

Operative part

1. The action is dismissed.

2. Roxtec AB shall bear its own costs and pay the costs incurred by the European Union Intellectual Property Office (EUIPO).