Case T‑20/16

M/S. Indeutsch International

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU figurative mark representing chevrons between two parallel lines — Distinctive character — Article 7(1)(b) of Regulation (EC) No 207/2009 — Examination of the mark as registered)

Summary — Judgment of the General Court (Fifth Chamber), 21 June 2017

1.      EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Figurative mark consisting in a two-dimensional or three-dimensional representation of a product — Distinctive character — Criteria for assessment

(Council Regulation No 207/2009, Art. 7(1)(b))

2.      EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(b) of Regulation No 207/2009 — Figurative mark representing chevrons between two parallel lines

(Council Regulation No 207/2009, Art. 7(1)(b))

1.      Where the mark applied for or registered consists in a two-dimensional or three-dimensional representation of the product that it covers, its distinctive character depends on whether it departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating the origin of the product.

That is also the case where the mark consists of a part of the shape of the product that it represents, inasmuch as the relevant public will immediately and without further thought perceive it as a representation of a detail or an aspect of the product in question. In such a situation, the decisive element is not the categorisation of the sign in question as a figurative sign, be it three-dimensional or otherwise, but rather the fact that it is indissociable from the appearance of the product designated.

If, in such a case, the assessment of the distinctive character of the mark were not carried out by reference to the extent to which it departs from the norms or customs of the sector of the goods concerned, it would be enough to request the registration of a sign immediately perceivable as a part of the product covered in order to increase the possibility of that mark being registered and thus giving, nearly automatically, protection to the appearance or shape of the product itself. Since the average consumer is not in the habit of making assumptions about the origin of products on the basis of their appearance or shape, that possibility presents a significant risk of circumventing Article 7(1)(b) of Regulation No 207/2009 on the EU trade mark and would therefore undermine the public interest safeguarded by that provision.

As regards marks consisting of the shape of the product that they cover, the competent authority may identify their essential characteristics by examining the product itself. Such an examination must be carried out where the identification of an essential characteristic of the mark is necessary in order to determine the specific nature of the elements that form part of the graphic representation and any descriptions filed at the time of application for registration, and thus safeguard the public interest underlying Article 7(1)(e)(ii) of Regulation No 207/2009. That interest consists in ensuring that an economic operator cannot improperly appropriate for itself a sign consisting of the shape of the product and incorporating a technical solution. That problem arises, by definition, in a case involving a mark consisting of the shape of an actual product and not of an abstract shape.

(see paras 37-40)

2.      See the text of the decision.

(see paras 41-47)