Judgments nº T-261/18 of Tribunal General de la Unión Europea, September 24, 2019

• Resolution Date: September 24, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-261/18

(EU trade mark - Invalidity proceedings - EU figurative trade mark depicting a black square containing seven concentric blue 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 (EU) 2017/1001) In Case T-261/18,

Roxtec AB, established in Karlskrona (Sweden), represented by J. Olsson and J. Adamsson, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by V. Ruzek and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Wallmax Srl, established in Milan (Italy), represented by F. Ferrari and L. Goglia, lawyers,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 January 2018 (Case R 940/2017-2), relating to invalidity proceedings between Wallmax and Roxtec,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, E. Buttigieg (Rapporteur) and B. Berke, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Court Registry on 26 April 2018,

having regard to the response of EUIPO lodged at the Court Registry on 30 July 2018,

having regard to the response of the intervener lodged at the Court Registry on 31 July 2018,

having regard to the written question put by the Court to the parties on 28 February 2019 and the responses to that question lodged at the Court Registry on 13 and 14 March 2019,

further to the hearing on 29 March 2019,

gives the following

Judgment

Background to the dispute

1 On 6 July 2015, the applicant, Roxtec AB, lodged an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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)).

2 Registration as a mark was sought for the following figurative sign, indicating the colours ‘blue and black':

3 The goods in respect of which registration was sought are in Class 17 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 correspond to the following description: ‘Cable and pipe penetration seals, made from plastic or rubber’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 127/2015 of 10 July 2015, and the mark was registered on 22 October 2015 under number 14338735.

5 The applicant develops and markets sealing modules which were protected by patent until 2010.

6 On 7 January 2016, the intervener, Wallmax Srl, which produces and distributes similar sealing modules, filed an application for a declaration of invalidity of the trade mark reproduced in paragraph 2 above, in respect of the goods covered by that mark, invoking, in the first place, the absolute grounds for invalidity under Article 7(1)(b), (d) and (e) of Regulation No 207/2009 (now Article 7(1)(b), (d) and (e) of Regulation 2017/1001), read in conjunction with Article 52(1)(a) of that regulation (now Article 59(1)(a) of Regulation 2017/1001) and, in the second place, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001), alleging that the applicant acted in bad faith when filing its application.

7 By decision of 14 March 2017, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. As regards the absolute ground for invalidity under Article 7(1)(e)(ii) of Regulation No 207/2009 (now Article 7(1)(e)(ii) of Regulation 2017/1001), the Cancellation Division found in particular that, first, as admitted by the applicant, the contested sign clearly alluded to a view of a cable-sealing module; secondly, the essential characteristics of the contested sign are seven blue concentric circles set against a black square background and separated from each other by a distance equal to their width, where the smallest, innermost circle encloses a larger black circle in its middle; and thirdly, (i) the contested figurative mark in no way objectively resembled a technical drawing or a two-dimensional depiction of a three-dimensional product, and (ii) there are many objective differences between the contested mark and the shape of the applicant’s sealing module (‘the sealing module’), such as the colour, the number of concentric circles and the absence of a dividing line. The Cancellation Division therefore concluded that registration of the contested trade mark was not likely to unduly impair the opportunity for competitors to place on the market goods whose system incorporates the same or similar technology as a technical solution and that, consequently, it should not be cancelled under Article 7(1)(e)(ii) of the aforementioned regulation.

8 On 8 May 2017, the intervener filed a notice of appeal against the decision of the Cancellation Division, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).

9 By decision of 8 January 2018, the Second Board of Appeal of EUIPO annulled the decision of the Cancellation Division and upheld the application for a declaration of invalidity under Article 59(1)(a) of Regulation 2017/1001, read together with Article 7(1)(e)(ii) of that regulation.

10 In the first place, the Board of Appeal found, first, that aside from the non-distinctive element of the background colour, the contested sign consists exclusively of the main characteristic of the sealing module, namely an exact depiction of the end view of the concentric removable layers lining the inside of the cylindrical cavity and hardly differs at all from a photograph of the leading surface of the sealing module. Secondly, the Board of Appeal indicated that all the other aspects of the sealing module - the fact that it can be divided in half, that it takes the form of a block, and that it can assume any colour - are largely irrelevant to its function, because such elements may vary considerably without interfering with the seal’s function. Thirdly, the Board of Appeal found that the front-end surface clearly showing the concentric circle structure, contains all the relevant indications needed to achieve the intended technical result.

11 In the second place, the Board of Appeal found, first, that the fact that the background colour of the contested trade mark (black) is not the same as the background colour of the sealing module (blue) and that the number of concentric circles differs are not important differences since they are marginal variations in the non-distinctive characteristics of the contested trade mark. Secondly, the Board of Appeal noted that, although it is true that the contested trade mark is not split by a horizontal line separating the upper part from the lower part to enable removal of the various layers, in practice, the extent to which the line is visible would be directly proportional to the quality of the finish since, in a high-quality finished product, the dividing line might not be visible at all. Therefore, the absence of a dividing line in the contested trade mark is not decisive. Thirdly, the Board of Appeal found that no decorative or imaginative element is, in the present case, an essential characteristic of the sign at issue, and, fourthly, it found that the fact that the contested trade mark is figurative and depicts a two-dimensional design by no means precludes the application of Article 7(1)(e)(ii) of Regulation 2017/1001.

12 Finally, and in the third place, the Board of Appeal found, first, that registration of the contested trade mark was likely to unduly impair the opportunity for competitors to place on the market sealing modules whose function relies on the removal of concentric layers from a cylindrical cavity to securely fit a pipe, tube, wire or cable, and secondly, that the applicant had filed trade mark applications for concentric circle marks, including the contested trade mark, for a strategic purpose which is contrary to the rationale of Article 7(1)(e)(ii) of Regulation 2017/1001.

Forms of order sought

13 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs incurred both in these proceedings and in the proceedings before EUIPO.

14 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to the pay the costs.

15 The intervener contends that the Court should:

- uphold the contested decision;

- declare the contested trade mark invalid under Article 7(1)(e)(ii) of Regulation 2017/1001.

Law

Admissibility of the intervener’s heads of claim

16 As a preliminary point, it should be noted, to begin with, that, given that upholding the contested decision is tantamount to dismissing the action, the intervener’s first head of claim should be understood as requesting, in essence, that the action be dismissed (see, to that effect, judgment of 5 February 2016, Kicktipp v OHIM - Italiana Calzature (kicktipp), T-135/14, EU:T:2016:69, paragraph 19 and the case-law cited).

17 Next, regarding the intervener’s second head of claim asking the Court to declare the contested trade mark invalid under Article 7(1)(e)(ii) of Regulation 2017/1001, it should be noted that it follows from Article 72(2) and (3) of Regulation 2017/1001 that the purpose of the action before the Court is to review the legality of the decisions of the Boards of Appeal and obtain, as the case may be, the annulment or alteration of those decisions, not to obtain declarative judgments in respect of those decisions (see, to that effect, judgment of 14...