Order of the General Court (Tenth Chamber) of 15 July 2021 –
Roxtec v EUIPO – Wallmax (Representation of an orange square containing seven concentric black circles)
(Case T‑455/20)
(EU trade mark – Invalidity proceedings – EU figurative mark depicting an orange square containing seven concentric black 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 (EC) No 207/2009 (now Article 7(1)(e)(ii) of Regulation (EU) 2017/1001))
1. 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 – Meaning – Interpretation in the light of the public interest underlying each of them
(Council Regulation No 207/2009, Arts 7(1)(e)(ii) and 52(1)(a))
(see paras 25-28, 84)
2. 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 – Distinctive character of the elements of a sign or distinctive character acquired through the use of a sign – Irrelevant
(Council Regulation No 207/2009, Arts 7(1)(e)(ii) and (3), and 52(1)(a))
(see paras 29-32, 60, 86)
3. 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 207/2009, Arts 7(1)(e)(ii) and 52(1)(a))
(see paras 33, 67-69)
4. EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Signs of which a trade mark may consist – Sign consisting exclusively of the shape of goods – Conditions
(Council Regulation No 207/2009, Arts 7(1)(e) and 52(1)(a))
(see para. 56)
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 – Exception – Distinctive character acquired through use – Not applicable
(Council Regulation No 207/2009, Arts 7(1)(e)(ii) and (3), and 52(1)(a))
(see para. 57)
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 – Perception of the average consumer – Effect
(Council Regulation No 207/2009, Arts 7(1)(e)(ii) and 52(1)(a))
(see paras 58, 59)
7. 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 – Figurative mark representing an orange square containing seven concentric black circles
(Council Regulation No 207/2009, Arts 7(1)(e)(ii) and 52(1)(a))
(see paras 62, 78, 79, 87-90)
Re:
| Action brought against the decision of the Second Board of Appeal of EUIPO of 20 April 2020 (Case R 2385/2018-2), relating to invalidity proceedings between Wallmax and Roxtec. |
Operative part
1. | | The action is dismissed. |
2. | | Roxtec AB shall bear its own costs and pay the costs incurred by the European Union Intellectual Property Office (EUIPO). |
3. | | Wallmax Srl shall bear its own costs. |