Flamagas, SA v European Union Intellectual Property Office.

• Jurisdiction: European Union
• ECLI: ECLI:EU:T:2017:433
• Court: General Court (European Union)
• Date: 27 June 2017
• Docket Number: T-580/15
• Celex Number: 62015TJ0580
• Procedure Type: Recurso de anulación - infundado

JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

27 June 2017 (*)

(EU trade mark — Invalidity proceedings — Three-dimensional EU trade mark — Shape of a lighter with a lateral fin, featuring the word element CLIPPER — Shape necessary to obtain a technical result — No distinctive character — Article 7(1)(b) and (e)(ii) of Regulation (EC) No 207/2009 — No description of the mark in the application for registration)

In Case T‑580/15,

Flamagas, SA, established in Barcelona (Spain), represented by I. Valdelomar Serrano, G. Hinarejos Mulliez and D. Gabarre Armengol, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,

defendant,

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

MatMind Srl, established in Rome (Italy), represented by G. Cipriani and M. Cavattoni, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 30 July 2015 (Case R 924/2013-1), relating to invalidity proceedings between MatMind and Flamagas,

THE GENERAL COURT (Fourth Chamber),

composed of H. Kanninen, President, L. Calvo-Sotelo Ibáñez-Martin and I. Reine (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 6 October 2015,

having regard to the response of EUIPO lodged at the Court Registry on 27 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 2 February 2016,

having regard to the change in the composition of the Chambers of the General Court,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 24 November 2005 the applicant, Flamagas, SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2 Registration as a mark was sought for the three-dimensional sign reproduced below:

3 The goods and services in respect of which registration was sought come within Classes 4, 34 and 35 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, for each of those classes, to the following description:

– Class 4: ‘Fuel gas, compressed’;

– Class 34: ‘Lighters for smokers’;

– Class 35: ‘Advertising, business management, business administration, office functions, including advertising relating to import, export, sole agencies and representation services for lighters of all kinds for smokers.’

4 The mark was registered on 21 December 2006 under No 004758652, and published in Community Trade Marks Bulletin No 1/2007 of 8 January 2007.

5 On 6 July 2011, the intervener, MatMind srl, filed an application for a declaration of invalidity of the mark at issue in respect of all the goods and services which it covers, relying on absolute grounds for invalidity set out in Article 7(1)(a) to (c) and 7(e)(i) and (ii), read in conjunction with Article 52(1)(a), of Regulation No 207/2009. In its submissions setting out the grounds for its application for a declaration of invalidity, the intervener submitted images of other cylindrical lighters with a view to demonstrating that the shape of the mark at issue was not distinctive in regard to the norms of the relevant sector.

6 Other images of lighters were also submitted by the intervener, including images of many lighters with a cylindrical body/refillable portion created during the 20th century.

7 By decision of 22 March 2013, the Cancellation Division rejected the application for a declaration of invalidity of the mark at issue.

8 On 21 May 2013, the intervener filed an appeal against the decision of the Cancellation Division, alleging errors of interpretation and analysis of the evidence and facts with regard to Article 7(1)(b) and 7(e)(i) and (ii) of Regulation No 207/2009. On 22 July 2013 the intervener submitted its arguments, together with several items of evidence. That evidence included proof of registration, by the applicant, of two Spanish utility models dating from 1971 under No U0170551 and No U0175088.

9 In support of its assertion that the mark at issue was devoid of any ‘inventive step’ or ‘uniqueness’, the intervener also submitted details of the registration of Community design No 000194899-0001 for the product ‘cigarette lighters’, filed on 23 June 2004.

10 By decision of 30 July 2015 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal in its entirety. It found that the mark at issue had to be declared invalid on the basis of Article 7(1)(e)(ii), 7(b) and 7(a) of Regulation No 207/2009. It also held that it was not necessary to examine whether the intervener could have requested a declaration by the applicant disclaiming any potential exclusive rights to the shape elements in application, by analogy, of Article 37(2) of Regulation No 207/2009.

11 More specifically, the Board of Appeal held, first, that the mark at issue had to be declared invalid on the ground that it was composed of a sign consisting exclusively of the shape of the product necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation No 207/2009. According to the Board of Appeal, that ground for refusal applies to the goods in Classes 4 and 34 covered by the mark at issue. Secondly, it held that the mark at issue also had to be declared invalid under Article 7(1)(b) of Regulation No 207/2009, given that the shape at issue could not be perceived as diverging from the norm or customs of the lighter industry, which prevented it from performing its primary function of indicating the origin of the goods and services which it covers in Classes 4, 34 and 35.

12 The Board of Appeal further held, thirdly, that the graphic representation of the mark at issue was not sufficiently clear for the purposes of Article 4 of Regulation No 207/2009, to which Article 7(1)(a) of that regulation refers, in so far as the presence of a word element, with no other clarification, on a mark in respect of which registration had been sought as a ‘three-dimensional mark’ would give rise to confusion as to the scope of the protection applied for. Fourthly, the Board of Appeal stated that it was not necessary to examine the possibilities under Article 37(2) of Regulation No 207/2009, applied by analogy, on the grounds that, on the one hand, it would be impossible to file another application if the main application, in this case the application for a declaration of invalidity of the mark at issue, were to be granted, and, on the other hand, the intervener did not explicitly file a request for a declaration of invalidity under Article 37(2) of Regulation No 207/2009, applied by analogy. The Board of Appeal also concluded that, pursuant to a decision of the Grand Board of Appeal of EUIPO of 4 March 2015, there is no legal basis for disclaiming any potential exclusive rights to the shape elements in application, by analogy, of Article 37(2) of Regulation No 207/2009.

13 By application lodged at the Court Registry on 6 October 2015, the applicant brought the present action. The applicant challenges the contested decision on the grounds, in essence, that, contrary to the findings of the Board of Appeal, the mark at issue does not consist exclusively of the shape of the product necessary to obtain a technical result, and that it does have a distinctive character. The applicant also claims that the mark at issue was presented in such a way as to enable the subject matter of the protection applied for to be clearly and precisely determined.

Forms of order sought

14 The applicant claims that the Court should:

– declare the present action admissible;

– annul the contested decision;

– confirm the decision of the Cancellation Division;

– order the intervener to pay the costs of the present proceedings.

15 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs incurred by EUIPO in these proceedings.

16 The intervener contends that the Court should:

– dismiss the action in its entirety;

– consequently, confirm the contested decision in its entirety;

– order the applicant to pay the costs of the proceedings.

Law

17 In support of its application, the applicant raises three pleas in law alleging (i) infringement of Article 7(1)(e)(ii) of Regulation No 207/2009, (ii) infringement of Article 7(1)(b) of that regulation and (iii) infringement of Article 7(1)(a), read in conjunction with Article 4, of that regulation.

The first plea, alleging infringement of Article 7(1)(e)(ii) of Regulation No 207/2009

18 The applicant’s first plea in law comprises two heads of claim relating to, respectively, an error of assessment on the part of the Board of Appeal in its determination of the essential characteristics of the mark at issue and an error of assessment on the part of the Board of Appeal in its evaluation of the functions of those characteristics.

19 EUIPO, supported by the intervener, disputes the applicant’s arguments.

20 Under Article 7(1)(e)(ii) of Regulation No 207/2009, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered. That provision is a preliminary obstacle liable to prevent a sign consisting exclusively of the...