JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
26 June 2024 (*)
(EU trade mark – Invalidity proceedings – Three-dimensional EU trade mark – Shape of metal beams for construction – Absolute ground for invalidity – Sign consisting exclusively of the shape of the product necessary to obtain a technical result – Article 7(1)(e)(ii) of Regulation (EU) 2017/1001 – Lack of essential non-functional characteristics)
In Case T‑192/23,
Peikko Group Oy, established at Lahti (Finland), represented by M. Müller and A. Fottner, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by C. Bovar and E. Nicolás Gómez, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Anstar Oy, established at Villähde (Finland), represented by J. Kajaste and S. Kurki, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, I. Dimitrakopoulos and B. Ricziová (Rapporteur), Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the 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
1 By its action under Article 263 TFEU, the applicant, Peikko Group Oy, seeks annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 7 February 2023 (Case R 2180/2021-5) (‘the contested decision’).
Background to the dispute
2 On 12 July 2020, the intervener, Anstar Oy, applied to EUIPO for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the applicant on 17 October 2019 for the following three-dimensional sign:
3 The goods covered by the contested mark in respect of which invalidity was sought fall within Class 6 within the meaning 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: ‘Metal beams for construction’.
4 The grounds relied on in support of the application for a declaration of invalidity were those referred to in Article 59(1)(a), read in conjunction with Article 7(1)(b) to (e), and Article 59(1)(b) of 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).
5 On 22 October 2021, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(e)(ii) thereof.
6 On 21 December 2021, the applicant lodged an appeal with EUIPO against the decision of the Cancellation Division.
7 In the contested decision, the Board of Appeal dismissed the appeal on the ground that all the essential characteristics of the contested mark fulfilled a technical function only.
Forms of order sought
8 The applicant claims that the Court should:
– annul the contested decision;
– reject the request for a declaration of invalidity of the contested mark;
– order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
9 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred in the event that an oral hearing is convened.
10 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those incurred before the Board of Appeal and the Cancellation Division.
Law
11 The applicant puts forward, in essence, a single plea in law, alleging infringement of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(e)(ii) of that regulation. By the first part of that plea, the applicant submits that the Board of Appeal erred in identifying the essential characteristics of the contested mark. By the second part of that plea, the applicant complains that the Board of Appeal wrongly considered that all the essential characteristics of the contested mark were dictated by their technical function.
12 As a preliminary point, it should be noted that, under Article 7(1)(e)(ii) of Regulation 2017/1001, signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result are refused registration. The general interest underlying Article 7(1)(e)(ii) of Regulation 2017/1001 is to prevent trade mark law from resulting in an undertaking being granted a monopoly as to the technical solutions or utilitarian characteristics of a product (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 43).
13 The rules laid down by the legislature reflect the balancing of two considerations, each of which is likely to contribute to the achievement of a healthy and fair system of competition. First, the inclusion in Article 7(1) of Regulation 2017/1001 of the prohibition on registering as an EU trade mark any sign consisting of the shape, or another characteristic, of goods which is necessary to obtain a technical result ensures that undertakings cannot use trade mark law to perpetuate, without any time limit, exclusive rights relating to technical solutions. Secondly, by limiting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation 2017/1001 to signs consisting ‘exclusively’ by the shape ‘necessary’ to obtain a technical result, the legislature duly considered that any shape of goods is, to a certain extent, functional and that it would, therefore, be inappropriate to refuse registration as an EU trade mark of a shape of goods merely on the ground that it has utilitarian characteristics. By the terms ‘exclusively’ and ‘necessary’, that provision ensures that solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 44, 45 and 48).
14 As regards the condition laid down in Article 7(1)(e)(ii) of Regulation 2017/1001, referring to a shape which is ‘necessary’ to obtain the technical result in question, that does not mean that the shape in question must be the only one which makes it possible to obtain that result. Thus, there may be alternative shapes, with other dimensions or another design, capable of achieving the same technical result (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 53 and 54). In other words, Article 7(1)(e)(ii) of Regulation No 40/94 precludes registration of any shape consisting exclusively, in its essential characteristics, of the shape of the goods which is technically causal of, and sufficient to obtain, the intended technical result, even if that result can be achieved by other shapes using the same or another technical solution (judgment of 12 November 2008, Lego Juris v OHIM – Mega Brands (Red Lego brick), T‑270/06, EU:T:2008:483, paragraph 43).
15 It is in the light of those considerations that the single plea in law, alleging infringement of Article 7(1)(e)(ii) of Regulation 2017/1001, must be examined.
The first part, alleging incorrect identification of the essential characteristics of the contested mark
16 The applicant claims that the Board of Appeal incorrectly identified the essential characteristics of the contested mark by disregarding as a fifth essential characteristic of that mark the overall arrangement of the small openings and the large openings with recessed edges on the slanted sides, in particular their regular spacing and alternation along the length of the slanted sides, their equidistant position, their height, their respective size and their contrasting representation forming a kind of frieze.
17 First, the applicant claims that the Board of Appeal’s finding as to the overall arrangement of the openings is inconsistent with its own definition of the essential characteristics of the contested mark. The Board of Appeal itself rightly recognised that various visual elements relating to the shape, proportions, position and rhythm of the small and large openings formed part of the essential characteristics. Furthermore, by not considering the overall arrangement of the large and small openings on the slanted sides as an essential characteristic of the contested mark, the Board of Appeal wrongly and without explanation departed from the conclusion of the Cancellation Division’s decision, which rightly considered that overall arrangement to be an essential characteristic of that mark.
18 Secondly, the applicant claims that the Board of Appeal wrongly limited the overall arrangement of the large and small openings to features which were irrelevant to the overall impression created by the contested mark, namely the exact distance between the openings, their exact position and their exact size in relation to the slanted sides. The Board of Appeal therefore failed to take account of the fact that the overall arrangement of the openings was characterised by other, much more important visual elements which had a substantial impact on the overall visual impression produced by the shape of the goods in question. Thus, it did not take into account the overall arrangement of the small and large openings which were visually intrinsically linked by virtue, in particular, of their common position on the slanted sides, their alternating pattern and their regular distance. However, the specific arrangement and proportions of the openings would constitute a distinct and autonomous characteristic in relation to the small and large openings taken in isolation and would give a different overall impression.
19 In that regard, the applicant states that the elements characterising the overall arrangement create an undulating alternation of design elements and a kind of ornamental frieze running the length of the sides of the beam. Thus, according to the applicant, the contested mark is the combination of technical considerations with an immediately perceived specific and arbitrary overall visual arrangement which highlights aesthetic features which are the applicant’s signature. In that context, the applicant refers to the decision of the Fifth Board of Appeal of 24 September 2020 in Case R 589/2020-5 in which that Board of Appeal considered the overall pattern of the surface to be an essential characteristic of the shape.
20 Thirdly, the applicant claims that the Board of Appeal failed to take into account the perception of the relevant public when identifying the essential characteristics of the contested mark. According to the applicant, in the present case, the perception of the relevant public has a bearing on the assessment of the essential characteristics since the goods in question are not intended for the general public, but for professionals in the construction sector who demonstrate an above-average level of attention with regard to extensive experience and specific technical knowledge of metal beams for construction, including knowledge of the variations between the various competing products, and the fact that they acquire those products after a detailed examination of their characteristics.
21 In that regard, the applicant points out that the Board of Appeal erred in failing to take account of affidavits from construction engineers from all over Europe, which, according to the applicant, state that the three-dimensional shape of the contested mark has unique characteristics in the field of construction and support the fact that the relevant public is aware of the different visual characteristics of that mark. Arbitrary aesthetic characteristics of the shape of the product represented in the contested mark deviate significantly from the norm or usage in the sector and technical considerations played only a secondary role at most in the development of the shape at issue.
22 In that context, the applicant refers to its brochure dated 1990 which promoted its metal beam emphasising an ‘aesthetically appealing result’, to image searches on the internet concerning metal beams for construction, attached as Annex I.7, to demonstrate that the shape of the contested mark is distinct from other existing beams, and to the alleged absence of trapezoidal or perforated beams in the Eurocode 4 standard of December 2004 (‘the Eurocode 4 standard’).
23 EUIPO and the intervener contest the applicant’s arguments.
24 It should be borne in mind that a correct application of Article 7(1)(e)(ii) of Regulation 2017/1001 requires the essential characteristics of the three-dimensional sign at issue to be duly identified. The expression ‘essential characteristics’ must be understood as referring to the most important elements of the sign (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 68 and 69).
25 The identification of the essential characteristics of a sign must be carried out on a case-by-case basis, there being no hierarchy that applies systematically between the various types of elements of which a sign may consist. It may be carried out either directly on the basis of the overall impression produced by the sign, or by first examining in turn each of the components of the sign (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 70).
26 The essential characteristics of the shape at issue, in the context of Article 7(1)(e)(ii) of Regulation 2017/1001, are determined for the specific purpose of enabling the functionality of that shape to be examined (see, to that effect, judgment of 30 March 2022, Établissement Amra v EUIPO – eXpresio, estudio creativo (Shape of a rebound shoe), T‑264/21, not published, EU:T:2022:193, paragraph 41).
27 In the present case, the goods designated by the contested mark, namely ‘metal beams for construction’, are intended to support loads and building structures and may, inter alia, serve as support systems for concrete slabs.
28 In paragraph 36 of the contested decision, the Board of Appeal identified the following elements as the essential characteristics of the contested mark:
– equal-sided trapezoidal shape with exposed horizontal flanges leading out from the lower part of the trapezoidal shape;
– unbroken flat surface at the top and bottom;
– perforation of the slanted sides of the trapezoidal shape by large round openings with recessed edges;
– perforation of the slanted sides of the trapezoidal shape by small round openings, positioned in the upper part of the slanted sides between the large openings.
29 In paragraph 37 of the contested decision, the Board of Appeal held that the exact arrangement of the large and small openings on the slanted side of the trapezoidal shape, namely the exact distance between the openings, the exact position of the openings on the slanted sides and the exact size of those openings in relation to the slanted sides, cannot as such be regarded as an essential characteristic of the contested mark. Furthermore, according to paragraph 38 of the contested decision, the exact relationship between the length of the beam and the measurements of the large and small openings and their number are not considered to be an essential characteristic. On the contrary, depending on the length of the beam, the perforated pattern of the slanted sides would simply be reduced or continued.
30 In the first place, on the one hand, in so far as, in its argument summarised in paragraph 17 above, the applicant relies on the contradictory reasoning of the contested decision, it must be held that there is no contradiction between the Board of Appeal’s finding as to the arrangement of the openings and its definition of the essential characteristics of the contested mark. The fact that the shape, proportions, position and rhythm of the small and large openings were considered to be part of the essential characteristics does not lead to the conclusion that the overall arrangement of those openings necessarily constitutes an essential characteristic of that mark. Thus, the reasoning of the Board of Appeal is not vitiated by any contradiction in reasoning in that regard.
31 On the other hand, in so far as the applicant complains that the Board of Appeal, wrongly and without explanation, did not adopt the same essential characteristics of the contested mark as the Cancellation Division, it is sufficient to point out that, by virtue of the effect of the appeal before it, the Board of Appeal is called upon to carry out a full re-examination of the merits of the case before it, in terms of both law and fact (see, to that effect, judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 97). For the same reason, the Board of Appeal was not required to give explicit reasons for its departure from the assessment of the Cancellation Division.
32 In the second place, as regards the applicant’s argument that the Board of Appeal wrongly limited the overall arrangement of the large and small openings relied on by the applicant before it to characteristics which were not relevant to the overall impression created by the contested mark, namely the exact distance between the openings, their exact position and their exact size in relation to the slanted sides, it is sufficient to note that that argument is based on an incorrect reading of the contested decision. The Board of Appeal concluded, in paragraph 37 of the contested decision, that the exact distance between the openings, their exact position and their exact size did not constitute essential characteristics without, however, equating that exact arrangement of the openings with their overall arrangement.
33 As regards that alleged fifth essential characteristic of the contested mark relied on by the applicant, namely the overall arrangement of the small openings and the large openings with recessed edges on the slanted sides, in particular their regular spacing and alternation along the length of the slanted sides, their equidistant position, their height, their respective size and their contrasting representation, it should be noted that most of those elements were identified by the Board of Appeal as forming part of the essential characteristics of the contested mark.
34 In particular, first, large openings with recessed edges on the slanted sides were identified as part of the third characteristic. Secondly, the fourth characteristic encompasses ‘small round openings, positioned in the upper part of the slanted sides between the large [openings]’. All those specifications reflect the respective size of the openings, their regular alternation and contrasting representation, as well as the general position of the large openings in relation to the small openings. Thus, contrary to the applicant’s contention, it cannot be held that the Board of Appeal failed to take into account the interaction between the large and small rounded openings which represents their overall arrangement on the slanted sides of the contested mark.
35 Furthermore, as regards the applicant’s argument that the overall arrangement of the large and small openings creates an undulating alternation of design elements and a kind of ornamental frieze along the length of the sides of the beam and thus has a substantial effect on the overall visual impression produced by the contested mark, it should be noted that, having regard to the elements already taken into account by the Board of Appeal in the context of the third and fourth characteristics, that overall arrangement and the possible ornamental effect which it would create cannot, on their own, constitute one of the most important elements of the contested mark or, consequently, constitute an additional essential characteristic.
36 In the third place, as regards the applicant’s argument that the Board of Appeal should have taken into account the perception of the relevant public when identifying the essential characteristics of the contested mark, it should be recalled that the presumed perception of the sign by the average consumer is not a decisive element in the context of the application of the ground for refusal set out in Article 7(1)(e)(ii) of Regulation 2017/1001, but may, at most, constitute a useful factor in the assessment by the competent authority when identifying the essential characteristics of the sign (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 76).
37 Unlike in the case referred to in Article 7(1)(b) of Regulation 2017/1001, where the perception of the target public must imperatively be taken into account because it is essential for determining whether the sign filed for registration as a trade mark makes it possible to distinguish the goods or services concerned as originating from a particular undertaking, such an obligation cannot be imposed under paragraph 1(e) of that article (see, to that effect, judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 75).
38 By contrast, the characteristics of a shape must be determined, for the purposes of the assessment under Article 7(1)(e)(ii) of Regulation 2017/1001, objectively, on the basis of its graphic representation and any descriptions filed with the trade mark application (see judgment of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 55 and the case-law cited).
39 Consequently, it must be held that, in identifying the essential characteristics of the contested mark, the Board of Appeal did not commit any error of law or assessment by relying on the graphic representation of the contested mark and by not specifically taking into account the perception of that mark by the relevant public.
40 In any event, it must be held that the affidavits from construction engineers, the brochure dated 1990, the image searches on the internet concerning metal beams for construction, filed by the applicant, and the alleged absence of trapezoidal or perforated beams in the Eurocode 4 standard are not, in the present case, relevant for the identification of the essential characteristics of that trade mark.
41 In those statements, the construction engineers confirm, in essence, that they recognise the contested mark as a trade mark for metal beams for construction and that they immediately associate the trade mark with the applicant’s goods. Thus, the statements reflect only the distinctive character of the contested mark in accordance with Article 7(1)(b) of Regulation 2017/1001 and Article 7(3) of that regulation, and do not provide any information concerning its essential characteristics or their technical function. However, the perception of the relevant public in the context of Article 7(1)(b) of Regulation 2017/1001 and that perception in the context of Article 7(1)(e)(ii) of that regulation do not share the same object or purpose. Under Article 7(1)(b) of Regulation 2017/1001, the perception of the relevant public is intended to determine whether the sign filed for registration as a trade mark makes it possible to distinguish the goods or services concerned as originating from a specific undertaking, whereas, in the context of Article 7(1)(e)(ii) of that regulation, it is intended only, as a useful element of assessment, to determine which elements are perceived as being the most important, for the specific purpose of enabling the functionality of the shape at issue to be examined. Consequently, the distinctive character of the elements of a sign is irrelevant for the purposes of identifying its essential characteristics for the purposes of Article 7(1)(e)(ii) of that regulation (judgment of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 58).
42 The same is true as regards the brochure dated 1990, the image searches on the internet concerning metal beams for construction and the alleged absence of trapezoidal or perforated beams in the Eurocode 4 standard. In so far as the applicant seeks to show by that evidence that the contested mark diverges significantly from the standard or from the customs of the sector, it must be held that that criterion is relevant for the purposes of assessing the distinctive character of a shape mark under Article 7(1)(b) of Regulation 2017/1001 and not for the purposes of identifying the essential characteristics under Article 7(1)(e)(ii) of that regulation.
43 In the fourth place, in so far as the applicant refers to the previous decision-making practice of the Board of Appeal, it is important to recall that the legality of the decisions which the Boards of Appeal of EUIPO are required to take, under Regulation 2017/1001, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of that regulation, as interpreted by the EU judicature, and not on the basis of EUIPO’s previous decision-making practice (judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 48; and of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).
44 In the light of all of the foregoing, it must be held that the applicant has not succeeded in challenging the Board of Appeal’s assessment concerning the identification of the essential characteristics of the contested mark.
45 The first part of the single plea in law must therefore be rejected as unfounded.
The second part, alleging that the Board of Appeal wrongly considered that all the essential characteristics of the contested mark were dictated by their technical function
46 The applicant contests the Board of Appeal’s assessment that all of the essential characteristics of the trade mark fulfil a purely technical function. On the contrary, it claims that the essential characteristics of the contested mark are not necessary to achieve a technical result and are the result of arbitrary and creative choices. In that context, the applicant challenges, as a first step, the Board of Appeal’s application of the relevant legal criteria in the present case and the relevant documentation on which the Board of Appeal based its analysis and, as a second step, the Board of Appeal’s assessment of the functionality of the essential characteristics of the contested mark.
The applicable legal criteria and relevant documentation
47 According to the applicant, even on the assumption that some of the essential characteristics might have a technical function, those characteristics also have arbitrary aesthetic aspects preventing the application of Article 7(1)(e)(ii) of Regulation 2017/1001. Exclusion from registration under that provision would presuppose that the essential characteristics of the shape were attributable solely to the technical result. The purpose of that provision is not to exclude functional shapes as such from registration as trade marks, but only to exclude from registration shapes whose essential characteristics respond exclusively to a technical function and which have been chosen to fulfil that function.
48 In that context, first, the applicant claims that the Board of Appeal wrongly relied on the document entitled ‘Technical Manual – Deltabeam Composite Beams’ (‘the technical manual’) provided by the intervener before EUIPO in order to assess the technical functionality of the essential characteristics, even though that document is irrelevant because it dates from March 2021, that is to say, one and a half years after the filing date of the contested mark. Furthermore, according to the applicant, the mere fact that various characteristics of the beam can be identified in that product manual, even in relation to a concrete function, does not prove that those characteristics perform a purely technical function.
49 Secondly, the Board of Appeal wrongly based its assessment on European patent EP0467912 (‘the European patent’) presented before the Cancellation Division. According to the applicant, the mere fact that the shape of a product is represented in the drawings of a patent does not mean that all the characteristics of that shape are solely of a technical nature.
50 In addition, the applicant points out that most of the technical characteristics of the product have been removed in the contested mark, that the representation of that mark instead highlights the arbitrary and creative elements of the shape selected from the many elements of the product and that the drawings of the European patent and the applicant’s products as such include additional technical elements which are necessary to achieve the technical result and which are not present in the contested mark. Furthermore, according to the applicant, the beams at issue do not constitute an autonomous part of building structures, as they must be combined with additional support elements to support the concrete slabs. Thus, the shape of the contested mark would not be such as to fulfil the intended purpose of supporting the loads and could not fall within the ground for refusal of registration referred to in Article 7(1)(e)(ii) of Regulation 2017/1001. The Board of Appeal failed to take account of the aforementioned circumstances and did not even rule on the arguments put forward in that regard by the applicant.
51 EUIPO and the intervener contest the applicant’s arguments.
52 As a preliminary point, it should be borne in mind that, in examining the functionality of a sign consisting of the shape of a product, it is only necessary to assess, once the essential characteristics of that sign have been identified, whether those characteristics correspond to the technical function of the product concerned. That assessment must, of course, be made by analysing the sign filed for registration as an EU trade mark, and not signs consisting of other shapes of goods. The technical functionality of the characteristics of a shape may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraphs 84 and 85). Such an analysis cannot be made without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods (see, to that effect, judgment of 10 November 2016, Simba Toys v EUIPO, C‑30/15 P, EU:C:2016:849, paragraphs 46 and 48).
53 Furthermore, Article 7(1)(e)(ii) of Regulation 2017/1001 cannot be applicable where the application for registration as a trade mark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role. In this case, competitor undertakings easily have access to alternative shapes of equivalent functionality, so that there is no risk that the availability of the technical solution will be impaired. That solution may, in that case, be incorporated without difficulty by the competitors of the mark’s proprietor in shapes which do not have the same non-functional element as that contained in the proprietor’s shape and which are therefore neither identical nor similar to that shape (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 72).
54 In addition, the ground for refusal under Article 7(1)(e)(ii) of Regulation 2017/1001 is applicable only where all the essential characteristics of the sign are functional, with the result that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in that shape (judgment of 11 May 2017, Yoshida Metal Industry v EUIPO, C‑421/15 P, EU:C:2017:360, paragraph 27). The fact that an essential element of the contested mark, which is necessary to achieve a technical result, also has aesthetic value or an unusual character does not preclude the application of Article 7(1)(e)(ii) of Regulation 2017/1001 (see, to that effect, judgment of 5 July 2023, Wajos v EUIPO (Shape of a container), T‑10/22, not published, EU:T:2023:377, paragraphs 22 and 45).
55 In the present case, the Board of Appeal took account of the technical manual, considering, in paragraph 50 of the contested decision, that the information contained therein came from an objective and reliable source. Furthermore, the Board of Appeal found, in paragraph 49 of the contested decision, that although not all the details of the drawings of the European patent were identical to the contested mark, those drawings and the wording of the patent claim itself could be taken into account in determining whether the essential characteristics of the contested mark fulfilled a technical function of the product at issue in so far as those drawings and the wording of the claim corresponded to the essential characteristics of that mark. In addition, according to the Board of Appeal, the mere fact that a characteristic is not included or is merely included in a similar form in one of the patents filed as evidence does not indicate that one of the essential characteristics of the contested mark does not fulfil a technical function. Moreover, the Board of Appeal stated, in paragraph 77 of the contested decision, that, if it were true that the actual beams for construction had additional characteristics, for example openings on the upper surface, the mere omission of those additional characteristics of the actual product in the contested mark could not in any way call into question the purely technical function of the contested mark.
56 In the first place, the applicant’s argument that, even assuming that some of the essential characteristics might have a technical function, those characteristics also have arbitrary aesthetic aspects preventing the application of Article 7(1)(e)(ii) of Regulation 2017/1001 cannot succeed. As is clear from the case-law cited in paragraphs 53 and 54 above, in order to exclude the application of that provision, it is necessary for the shape at issue to contain at least one aesthetic element which is devoid of the technical function and which, at the same time, plays an important role in that shape. Thus, the fact that an essential element of the contested mark, which is necessary to obtain a technical result, also has an aesthetic value does not preclude the application of Article 7(1)(e)(ii) of Regulation 2017/1001.
57 In the second place, as regards the technical manual published by the applicant relating to the Deltabeam construction beam, which is an actual product, it is an objective and reliable source of information concerning the technical functionality of the essential characteristics of the contested mark. That document shows a beam which has an equal-sided trapezoidal shape with exposed flanges and large and small openings on the slanted sides, very similar to the contested mark.
58 Furthermore, the fact that the technical manual dates from March 2021, that is to say, approximately one year and five months after the date of filing of the contested mark, namely 17 October 2019, has no impact on the relevance of its content. The illustration of the Deltabeam construction beam on page 4 of that manual does not indicate any change, as regards its characteristics corresponding to the contested mark, compared with the illustration of the product on page 4 of the technical manual of April 2016. In any event, the applicant does not claim otherwise.
59 In the third place, it should be noted, as is apparent from the case-law cited in paragraph 52 above, that the documentation relating to earlier patents describing the functional elements of the shape concerned may be taken into account when assessing the technical functionality of the characteristics of a shape. In the present case, the drawings of the European patent depict a product similar to the contested mark, namely a beam of equal-sided trapezoidal shape with exposed flanges and large openings on the slanted sides. In that context, the relevance of the European patent cannot be called into question by the fact that its drawings show variations from the contested mark, since the identity of the patent with the trade mark is not a condition for it to be taken into account when assessing the functionality of the essential characteristics of the mark.
60 Moreover, it should be noted that, if the applicant’s goods and the European patent include additional technical elements which are not present in the contested mark, that circumstance alone is not capable of excluding the technical functionality of the essential characteristics of the contested mark within the meaning of Article 7(1)(e)(ii) of Regulation 2017/1001.
61 As is clear from the case-law cited in paragraph 52 above, while it is necessary, in order to analyse the functionality of the essential characteristics of a trade mark within the meaning of Article 7(1)(e)(ii) of Regulation 2017/1001, which concerns only signs consisting of the shape of the actual product, to start from the sign at issue, as represented graphically for the purposes of registration, that analysis cannot be carried out without taking into account, where appropriate, additional elements relating to the function of the actual product at issue.
62 In other words, the absolute ground for refusal provided for in Article 7(1)(e)(ii) of Regulation 2017/1001 may apply to signs consisting of the shape of goods the graphic representation of which does not reveal all the elements which are necessary for the implementation of the technical solution concerned, provided it is shown that the implementation of that technical solution cannot be effective without the essential characteristics which are visible in that graphic representation (judgment of 24 October 2019, Rubik’s Brand v EUIPO – Simba Toys (Shape of a cube with surfaces having a grid structure), T‑601/17, not published, EU:T:2019:765, paragraph 96). Thus, the mere fact that the patent or the actual beams for construction possess additional characteristics omitted from the contested mark cannot call into question the application of that provision in so far as, as is clear from the analysis in paragraphs 69 to 98 below, the essential characteristics of the contested mark serve to fulfil the technical functions.
63 In the fourth place, the applicant refers to the judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre (C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431), in support of its contention that the contested mark cannot fall within the ground for refusal of registration in Article 7(1)(e)(ii) of Regulation 2017/1001, because the beams at issue are not a self-contained part of building structures and must be combined with additional support elements, such as pillars, to support the concrete slabs.
64 In that regard, it should be noted that in the case which gave rise, after appeal, to the judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre (C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431), the contested mark did not consist exclusively of the shape of the product at issue, given that it was an isolated groove forming part of a tyre tread which, together with other elements, formed a tyre. The mark therefore represented neither the goods at issue designated by it nor the tread of a tyre. In that case, the Court concluded that the shape did not lead to a technical result, since it was the combination and interaction of the various elements that made up a tread that were possibly capable of producing a technical result (see, to that effect, judgment of 24 October 2018, Pirelli Tyre v EUIPO – Yokohama Rubber (Representation of an L-shaped groove), T‑447/16, EU:T:2018:709, paragraphs 70 to 72).
65 It should be noted that, contrary to the circumstances of that case, the contested mark in the present case clearly represents a metal beam for construction which is an autonomous product sold on the market. Consequently, the situation in the present case is different from that in the judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre (C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431).
66 Moreover, in so far as the applicant complains that the Board of Appeal did not rule on its arguments concerning the judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre (C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431), it should be borne in mind that the statement of reasons for the contested measure may be implied provided that it enables the persons concerned to know the reasons for which the contested decision was adopted and the court with jurisdiction to have sufficient information to exercise its review. Reasons that are not made explicit may thus be taken into account if they are obvious, both to the persons concerned and to the EU Courts (see judgment of 10 June 2020, L. Oliva Torras v EUIPO – Mecánica del Frío (Vehicle couplings), T‑100/19, EU:T:2020:255, paragraph 90 and the case-law cited).
67 In the present case, the position of the Board of Appeal with regard to those arguments may be inferred implicitly from the grounds of the contested decision. It is clear from paragraph 71 of the contested decision that the Board of Appeal considered that the contested mark consisted of the shape of a construction beam and that all of its essential characteristics fulfilled a technical function. Consequently, the Board of Appeal was not required to respond explicitly to those arguments.
68 In the light of the foregoing, it must be held that the Board of Appeal did not err in relying on the technical manual and the European patent to assess whether the essential characteristics of the contested mark were imposed by a technical function and in failing to apply, by analogy, the judgment of 3 June 2021, Yokohama Rubber and EUIPO v Pirelli Tyre (C‑818/18 P and C‑6/19 P, not published, EU:C:2021:431).
The Board of Appeal’s assessment of the functionality of the essential characteristics of the contested mark
– The equal-sided trapezoidal shape with exposed horizontal flanges emerging from the lower part of the trapezoidal shape and on the unbroken flat surface at the top and bottom
69 The applicant claims that the trapezoidal shape and slanted sides of the beam are not necessary in order to achieve the technical result of supporting the loads. The mere reference in the technical manual to a load being transferred against an inclined web, namely slanted sides, would at most prove the presence of an inclined web, but would in no way constitute proof of the technical nature of the latter. In addition, the European patent shows that the concrete slab rests solely on the lower horizontal element and is not supported by the slanted side. Furthermore, the inclined position would not have the function of not hindering the injection of concrete, since the concrete would be poured from the upper surface of the beam and not from the slanted sides. For those reasons, the inclined position of the sides could not be attributed to the technical function of the goods in question, which would be to support loads.
70 The applicant relies on internet searches for images to demonstrate that the searches for ‘metal beams for construction’ did not produce any results showing a trapezoidal shape. Furthermore, trapezoidal beams are also completely absent from the Eurocode 4 standard. In their typical form, the goods in question would instead have vertical sides and right angles. If the trapezoidal shape or the slanted sides were one of the shapes required to achieve a technical result, that would be reflected in the numerous search results. Furthermore, according to the applicant, the Finnish patent FI92089 and the patent application WO 94/16169 claiming priority therefrom prove that the inclination of the web portions is not technically necessary, but is an arbitrary aspect of the design.
71 EUIPO and the intervener contest the applicant’s arguments.
72 In the present case, in the first place, the Board of Appeal concluded, in paragraphs 58 and 59 of the contested decision, that the trapezoidal shape, consisting of the slanted sides and the upper and lower surface, together with the exposed flanges, fulfilled a purely technical function and that, consequently, the trapezoidal shape with the exposed flanges cannot be regarded as a decorative or imaginative characteristic.
73 First, it should be noted that the applicant has not contested the Board of Appeal’s view that, in essence, the projecting flanges form part of the support base for the slab units during installation.
74 Secondly, according to the explanation in point 1.1.2 of the technical manual, in the final state the loads are transferred to the Deltabeam construction beam by means of a compression arch against an inclined web. It should therefore be noted that, contrary to the applicant’s assertion, the manual associates the inclination of the web portions with a technical function, namely the taking of loads.
75 Thirdly, according to the description of the European patent, ‘the slanting web portions of the beam also enable the slab units to be placed quite close to the bends of the projecting flange portions without hampering the grouting. For this reason, the jaw is strained to a lesser extent than in solutions in which a separate casting space must be left between the slab unit and the vertical web portion of the beam’.
76 It follows, as EUIPO rightly maintains, that, where beams for construction have a vertical web, a separate casting space must be left between the slab and the web. On the other hand, since the beam has inclined webs, the slabs can be placed fairly close to the bends of the projecting flanges, while maintaining a casting space on the top. Thus, thanks to the inclination of the web portions, there is less pressure on the structure of the beam. What is more, that technical result is achieved regardless of whether the concrete is poured from the upper surface or the sides.
77 In view of the above, it must be concluded that the equal-sided trapezoidal shape with exposed horizontal flanges emerging from the lower part of that trapezoidal shape fulfils a technical function.
78 That conclusion cannot be called into question by the applicant’s other arguments.
79 In particular, first of all, the fact that the load-bearing function may be performed by other shapes does not prevent the trapezoidal shape from being considered necessary for achieving a technical result. The existence of other shapes capable of achieving the same technical result does not, for the purposes of Article 7(1)(e)(ii) of Regulation 2017/1001, constitute a circumstance such as to preclude the ground for refusal of registration (see judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 83 and the case-law cited).
80 In addition, as regards the applicant’s arguments based on the fact that internet searches for ‘metal beams for construction’ do not produce any results showing a trapezoidal shape and that trapezoidal beams are absent from the Eurocode 4 standard, it should be noted that those circumstances are not relevant in order to assess the technical functionality of the trapezoidal shape of the contested mark. Moreover, according to the description of patent application WO 94/16169, to which the applicant refers, the portions of the web may be positioned either in an inclined position or perpendicularly with respect to the projecting flange portions, in such a manner that they incline towards each other at the upper or lower edge, or are parallel to each other in adjacent parallel planes. Thus, contrary to the applicant’s contention, that patent application provides for two alternative forms which both serve to achieve the same technical result.
81 In the second place, as regards the unbroken flat surface at the top and bottom of the contested mark, the Board of Appeal concluded that that essential characteristic also fulfilled a technical function. In particular, in paragraphs 60 and 64 of the contested decision, it considered that, first, the broken upper part supported the slanted sides and thus served to ensure that the loads could be transferred by means of a compression arch against the slanted sides of the beam and that it also contained the space in the beam which was to be filled with concrete. Secondly, the lower part of the trapezoidal shape is, according to the Board of Appeal, technically indispensable for the slab support system. Those considerations are not disputed by the applicant.
– The perforation of the slanted sides with small and large openings
82 The applicant claims that the openings on the slanted sides of the beam are not attributable solely to a technical function. First, with regard to the small openings, the applicant submits that, contrary to the position adopted by the Board of Appeal, air could flow through any opening, regardless of its size, shape and position. According to the applicant, as shown in the product photographs attached as Annex I.8 to the application, the beams contain other openings, in particular the lifting, pouring and air openings, which are located on the flat upper surface of the beam and through which the filling of the beam can be observed and managed. The absence of the small openings in the European patent would also be an indication that that characteristic is not of a purely technical nature. The shape, size and position of the small openings would have been chosen to contribute to the arbitrary frieze-like arrangement of all the openings and therefore to create an aesthetic value and not to fulfil the function of air holes.
83 Secondly, the applicant claims that the rounded shape of the large openings is purely arbitrary. In that regard, there is no connection between that rounded shape and the alleged shear connection and dowel action of the web openings. The applicant also points out that the Board of Appeal failed to substantiate the finding that it is common knowledge that beams are better perforated by round openings, given that, geometrically, a round hole is the strongest shape. Furthermore, according to the applicant, it is not clear how the alleged ‘solid shape’ of the openings could be linked to any technical function and, if so, to precisely which technical function. There is no indication of any link between the round shape of the openings and the strength or load-bearing capacity of the beam itself.
84 Thirdly, contrary to the finding of the Board of Appeal, there is nothing to establish that the presence of the recessed edges of the large openings makes it possible to ensure or, at the very least, to strengthen the bond between the steel and the concrete and is thus attributable solely to a technical function. There is no link between the projections in the form of prongs or trays in the European patent and the edges of the openings represented in the contested mark. The latter are not justified by a function. Furthermore, the edges of the European patent and the contested mark differ substantially in shape and proportion. The differences between the respective representations preclude any conclusion as to the allegedly technical nature of the edges at issue. Even assuming that the edges in the contested mark had a technical function, the considerable differences with the design of the European patent would be a strong indication that the shape of the edges was not dictated solely by function, but also contained arbitrary aesthetic aspects independent of the technical function.
85 Fourthly, the applicant complains that the Cancellation Division did not provide a precise statement of reasons, considering only that the edges of the openings were not perceived as imaginative features but as having a technical function. That justification is not consistent with the case-law according to which the perception of the relevant public is not a relevant criterion for establishing whether essential characteristics perform a technical function.
86 EUIPO and the intervener contest the applicant’s arguments.
87 In the present case, the Board of Appeal considered, in paragraphs 65 to 68 and 70 of the contested decision, that the perforation of the slanted sides served to transfer the load and guaranteed it, that a round hole was the most solid shape, that the edges of the large openings being recessed towards the inside ensured or at least reinforced the bond between the steel and the concrete and that the small round openings positioned in the upper part of the slanted sides were intended to monitor the process of pouring the concrete into the beam.
88 In the first place, with regard to the small openings, it should be noted that the technical manual states that the beam is full when the concrete begins to pass through the small ventilation holes in the upper part of the web. It follows that the technical function of the small openings is to monitor the process of pouring concrete into the beam. Their position in the upper part of the slanted sides fulfils that function. As EUIPO rightly points out, if the small openings were placed on a lower part of the web, they could not perform the function of indicating when the beam is full, since the concrete would pass through them before the beam was full.
89 As regards the applicant’s argument that the photographs of the product show other openings in the beams and that the small openings are not shown in the European patent, it must be observed that that circumstance does not call into question the technical function of those small openings. In other words, the mere fact that air or concrete could flow through any opening does not in itself demonstrate that the presence of the small openings is purely arbitrary and devoid of a technical function.
90 In the second place, it should be borne in mind that large openings also fulfil technical functions.
91 First, those openings ensure and secure load transfer. The technical manual states that the transverse reinforcement, which is connected through openings in the web of the Deltabeam construction beam, ensures load transfer. The reinforcement bars are placed through the large openings in the beam and the concrete slabs. In addition, according to the technical manual, the shear connection between the concrete filling and the Deltabeam construction beam is formed by the action of the dowels in the web openings.
92 Secondly, as can be seen from the European patent, the large openings serve to fill the beam with concrete. Moreover, the illustrations of the concrete pouring process in the technical manual show that, in order to ensure the connection between the beam and the concrete slabs, it is necessary for both the inside and the outside of the beam to be filled with concrete. Therefore, as EUIPO rightly considers, the large openings on the slanted sides are necessary to ensure the bond between the concrete filler, the concrete slabs and the beam by creating a connection between the concrete filler on the inside and the outside of the beam.
93 Thirdly, as regards the applicant’s complaint that the Board of Appeal failed to substantiate the finding that it is common knowledge that the beams are best perforated by round openings, it should be borne in mind that, according to settled case-law, common knowledge is defined as facts which are likely to be known by any person or which may be known from generally accessible sources. When EUIPO bodies decide to take well-known facts into account, they are not obliged to establish, in their decisions, the accuracy of such facts. However, an applicant is entitled to submit before the Court documents in order either to substantiate or to challenge before it the accuracy of a matter of common knowledge (see judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 30 and the case-law cited).
94 In the present case, the Board of Appeal found, in paragraph 66 of the contested decision, that it was common knowledge that physical objects, including the slanted side of a construction beam, were best perforated by round openings, given that, geometrically, a round hole was the strongest shape. The applicant does not put forward any specific argument or produce any evidence before the Court to call into question the accuracy of that well-known fact, even if it were open to it to do so, as is clear from the case-law cited in the preceding paragraph. For that reason, the applicant’s argument that it is not clear how ‘the solid shape’ of the openings could be linked to any technical function must also be rejected.
95 Fourthly, the Board of Appeal did not commit an error of assessment in considering that the recessed edges of the large openings served to ensure adhesion between the steel and the concrete. The description of the European patent indicates that, in order to ensure adhesion between the steel and the concrete, the edges of the openings are provided with projections in the form of spikes or plates. The fact that the recessed edges of the contested mark do not have the same shape as the projections of the European patent does not exclude the fact that those edges fulfil the same technical function. The inwardly recessed edges constitute an alternative solution to those projections in the form of prongs or trays in order to obtain the same technical result.
96 In any event, even assuming that the recessed edges of the large openings in the contested mark also contain arbitrary aesthetic aspects, as the applicant points out, that circumstance has no bearing on the application of Article 7(1)(e)(ii) of Regulation 2017/1001 since, as is apparent from the case-law cited in paragraph 54 above, the application of that provision is excluded only where the shape has at least one major non-functional element which does not fulfil any technical function. As is clear from the previous paragraph, the recessed edges of the large openings in the contested mark also fulfil a technical function.
97 Fifthly, as regards the applicant’s argument challenging the reasoning of the Cancellation Division, summarised in paragraph 85 above, it is sufficient to point out that the legality of the decision of the Board of Appeal must not be assessed in the light of the legality of the Cancellation Division’s decision, but solely on the basis of the factual and legal findings contained in the contested decision, as well as the sufficiency of its reasoning. Under Article 72(1) of Regulation 2017/1001, actions may be brought before the Court only against decisions of the Boards of Appeal, with the result that, in such actions, only pleas directed against those decisions are admissible (see judgment of 8 September 2021, Qx World v EUIPO – Mandelay (EDUCTOR), T‑85/20, not published, EU:T:2021:556, paragraph 31 and the case-law cited). The applicant’s argument must therefore be rejected as inadmissible.
98 In the light of the foregoing, it must be held that the Board of Appeal did not err in concluding that both the large and the small openings on the slanted sides of the contested mark fulfilled a technical function.
– The arrangement of small and large openings on the slanted sides
99 The applicant claims that the frieze-like arrangement of small and large openings on the slanted sides is an essential characteristic of the trade mark which is not imposed by any technical function but serves aesthetic purposes.
100 In particular, the regular alternation of small and large openings with recessed edges along the length of the slanted sides, their equidistant position, their respective height and size and their contrasting representation would create an undulating alternation of small and large design elements and would form a kind of ornamental frieze.
101 In that context, the applicant points out that that aesthetic arrangement is clearly distinguishable from the European patent, since the small openings are entirely absent from the drawings of that patent and are not even mentioned in the description of that patent. The beam could take on appearances which are independent of its load-bearing function and which are the result of aesthetic choices as to the specific visual arrangement of those elements. In the present case, according to the applicant, the elements of the external appearance of the beam, in particular the specific shape, position and size of the holes and their frieze-like arrangement along the entire length of the trapezoidal beam, however common they may be, are neither linked to nor necessary for the technical function of supporting loads. Moreover, the fact that the shape of the product at issue has essential characteristics which distinguish it from ‘alternative shapes’ on the market is a clear indication that the shape in question is not exclusively functional.
102 In that regard, the applicant refers to the decision of the Board of Appeal of 14 November 2021 in the joined cases DEVICE OF A CLASP LOCK (3D) (R 1221/2012-1 and R 1232/2012-1), in which that Board of Appeal decided, with regard to the shape of a locking device, that the locking mechanism, the means of attachment and the hinge tongue could have different shapes and positions, so that the visual appearance of the device was independent of its locking function.
103 EUIPO and the intervener contest the applicant’s arguments.
104 In the first place, on the one hand, it should be noted that it has been shown, in paragraphs 30 to 44 above, that the arrangement of the small and large openings did not constitute an essential characteristic, as such, of the contested mark.
105 On the other hand, as is clear from the analysis in paragraphs 69 to 98 above, all of the essential characteristics of the contested mark, including the small and large openings, are necessary to achieve a technical result.
106 It follows that, even if it were established, the fact that the arrangement of the small and large openings on the slanted sides of the contested mark forms a shape of ornamental frieze is irrelevant. Where all of the important elements making up an ornamental image are imposed by their technical function, the fact that the sum, or the overall arrangement, of those elements contributes to creating an ornamental image of the contested mark remains irrelevant to the application of Article 7(1)(e)(ii) of Regulation 2017/1001 (see, to that effect, judgment of 19 September 2012, Reddig v OHIM – Morleys (Knife handle), T‑164/11, not published, EU:T:2012:443, paragraph 40).
107 In the second place, as regards the applicant’s argument that the shape of the product at issue has essential characteristics which distinguish it from alternative shapes on the market, it is sufficient to refer to the analysis in paragraphs 41, 42 and 79 above.
108 In the third place, in so far as the applicant refers in its arguments to previous decisions of the Board of Appeal, that argument must be rejected for the reasons already set out in paragraph 43 above.
109 In the fourth place, although the applicant refers globally, for the sake of completeness, to all of its observations submitted before EUIPO, it should be borne in mind that the application, in so far as it refers to the written pleadings filed before EUIPO, is inadmissible in so far as the general reference which it contains cannot be linked to the pleas in law and arguments developed in the application itself (see, to that effect, judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraphs 14 and 15, and of 25 November 2015, Masafi v OHIM – Hd1 (JUICE masafi), T‑248/14, not published, EU:T:2015:880, paragraph 14). It is not for the Court to search the written material submitted during the administrative procedure before EUIPO for arguments to which the applicant might refer (see, to that effect, judgment of 10 November 2021, Selmikeit & Giczella v EUIPO – Boehmert & Boehmert (HALLOWIENER), T‑500/20, not published, EU:T:2021:768, paragraph 15).
110 Having regard to all of the foregoing, it must be concluded that the Board of Appeal did not err in law in finding that all of the essential characteristics of the contested mark were necessary to obtain a technical result within the meaning of Article 7(1)(e)(ii) of Regulation 2017/1001.
111 Accordingly, the single plea in law and, consequently, the action as a whole must be dismissed.
Costs
112 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
113 Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, as applied for by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
114 The intervener also claimed that the applicant should be ordered to pay the costs it incurred in the proceedings before EUIPO. In that regard, first, it should be noted that, under Article 190(2) of the Rules of Procedure, only the essential costs incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. It follows that the costs incurred for the purposes of the proceedings before the Cancellation Division cannot be regarded as recoverable costs. Therefore, the intervener’s form of order must be rejected since it seeks to have the applicant bear the costs incurred before the Cancellation Division. Secondly, in so far as the intervener’s request concerns the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment dismisses the action brought against the contested decision, it is the operative part of that decision which continues to determine the costs in question (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraphs 193 and 194 and the case-law cited).
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Peikko Group Oy to pay its own costs as well as those incurred by Anstar Oy for the purposes of the proceedings before the General Court;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Kowalik-Bańczyk | Dimitrakopoulos | Ricziová |
Delivered in open court in Luxembourg on 26 June 2024.
V. Di Bucci | | M. van der Woude |