Case T‑297/22
BB Services GmbH
v
European Union Intellectual Property Office
Judgment (Sixth Chamber) of 6 December 2023
(EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of a toy figure with a protrusion on its head – Absolute grounds for invalidity – Sign consisting exclusively of the shape which results from the nature of the goods themselves – Sign consisting exclusively of the shape of goods which is necessary to obtain a technical result – Article 7(1)(e)(i) and (ii) of Regulation (EC) No 40/94 (now Article 7(1)(e)(i) and (ii) of Regulation (EU) 2017/1001))
1. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs consisting exclusively of the shape which results from the nature of the goods themselves – Identification of the essential characteristics of a sign
(Council Regulation No 40/94, Art. 7(1)(e)(i) and Art. 51(1)(a))
(see paragraphs 36-40, 66-68)
2. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs consisting exclusively of the shape which results from the nature of the goods themselves – Assessment of the essential characteristics in the light of the nature of the goods
(Council Regulation No 40/94, Art. 7(1)(e)(i) and Art. 51(1)(a))
(see paragraphs 41-45, 82-84)
3. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs consisting exclusively of the shape which results from the nature of the goods themselves – Three-dimensional mark consisting of the shape of a toy figure with a protrusion on its head
(Council Regulation No 40/94, Art. 7(1)(e)(i) and Art. 51(1)(a))
(see paragraphs 60, 61, 69, 70, 75, 77, 89, 93)
4. 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
(Council Regulation No 40/94, Art. 7(1)(e)(ii) and Art. 51(1)(a))
(see paragraphs 102-109, 141, 142)
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 – Assessment of the essential characteristics in the light of the technical function of the goods
(Council Regulation No 40/94, Art. 7(1)(e)(ii) and Art. 51(1)(a))
(see paragraphs 110-114, 117-122, 127, 154-156)
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 – Three-dimensional mark consisting of the shape of a toy figure with a protrusion on its head
(Council Regulation No 40/94, Art. 7(1)(e)(ii) and Art. 51(1)(a))
(see paragraphs 131, 138, 148-150, 160, 169-171)
Résumé
Lego Juris A/S, intervener in the present case, is the proprietor of the three-dimensional EU trade mark representing a toy figure with a protrusion on its head, registered with the European Union Intellectual Property Office (EUIPO). (1)
BB Services GmbH, the applicant, filed with EUIPO an application for a declaration of invalidity of that mark on the ground that it consists exclusively, first, of a shape which results from the nature of the goods themselves and, second, of a shape which is necessary to obtain a technical result. (2)
EUIPO rejected the application for a declaration of invalidity.
By its judgment, the General Court dismisses the applicant’s action. It specifies the criteria for assessment as to signs which consist exclusively of the natural or functional shape of the goods for the purposes of Article 7(1)(e)(i) and (ii) of Regulation No 40/94, applying the relevant case-law of the Court of Justice.
Findings of the General Court
As regards the first plea, alleging infringement of Article 7(1)(e)(i) of Regulation No 40/94, which prohibits the registration of signs consisting exclusively of the shape which results from the nature of the goods themselves, the General Court applies, by analogy, the case-law relating to paragraph 1(e)(ii) of that Article. (3) It follows that, in order to identify the essential characteristics of the sign at issue, information other than the graphic representation alone, such as the perception of the relevant public, may be used. The ground for refusal set out in Article 7(1)(e)(i) of Regulation No 40/94 cannot apply where there is at least one essential characteristic of the shape which does not result from the nature of the goods themselves, with the result that the trade mark does not consist ‘exclusively’ of the shape which results from the nature of the goods themselves.
In order to determine whether the goods concerned fall within that category of signs, the Court observes, first of all, that the goods consist of an ‘interlocking toy figure’ with two purposes, namely playing, which is of a non-technical nature, and enabling assembly or combination, which is of a technical nature. EUIPO was therefore right to find that the nature of those goods fell within the category of toy figures. On the other hand, it failed to find that their nature also fell within the category of interlocking building figures.
Next, the Court endorses EUIPO’s claim that the essential characteristics of the trade mark consist of the shape of the figure, which has a human appearance, and its decorative and imaginative elements, namely the cylindrical shape of the head, the short and rectangular shape of the neck and the trapezoidal shape of the torso (‘the decorative and imaginative characteristics’). Nevertheless, EUIPO failed to regard as essential the ‘technical’ characteristics, namely the protrusion on the head, the hands equipped with hooks and the holes at the back of the legs and under the feet (‘the technical characteristics’). In so doing, EUIPO took into consideration only the graphic representation of the trade mark and failed to take into account other useful information relating to the nature of the actual goods, in particular the public’s knowledge of the intervener’s modular building system.
Lastly, the Court notes that EUIPO was right to find that the decorative and imaginative characteristics may be modified and configured with, in principle, a ‘wide freedom of design’, with the result that at least one essential characteristic of the goods in question is not inherent to its generic function of toy figure or that of interlocking building figure. The Court therefore concludes that, notwithstanding the errors of assessment referred to above, EUIPO was right to confirm that the contested trade mark was eligible for registration under Article 7(1)(e)(i) of Regulation No 40/94.
As regards the second plea, alleging infringement of Article 7(1)(e)(ii) of Regulation No 40/94, prohibiting the registration of signs which consist exclusively of the shape of goods which is necessary to obtain a technical result, the Court points out that that article does not apply where there is a major non-functional element, such as a decorative or imaginative element which constitutes an essential characteristic of the sign at issue, but which is not necessary to obtain a technical result for which the goods concerned are intended.
In the present case, the Court finds, first of all, that EUIPO was right to find that the non-technical result of the goods consisted of the capacity for play and the evocation of a ‘manikin’ by human traits. However, it failed to consider that the technical result of the product also included its interlocking nature and modularity.
Next, although EUIPO did indeed take the view that the ‘non-technical’ characteristics of the contested trade mark were essential, by contrast, it failed to consider as essential the technical characteristics.
Lastly, although the technical purpose linked to the trade mark’s interlocking nature and modularity is achieved by certain essential characteristics, there are also other essential characteristics which, in view of their decorative and imaginative nature resulting from the designer’s freedom, are not necessary to achieve a technical purpose. Accordingly, the Court concludes that, notwithstanding the errors of assessment found, EUIPO was right to confirm that the contested trade mark was also eligible for registration under Article 7(1)(e)(ii) of Regulation No 40/94.