Source: EURLEX
Language: en
Format: md

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; |

| 2. | Orders Novartis AG to pay the costs. |

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