CANCELLATION No 12 326 C (INVALIDITY)

WallMax S.r.l., Viale L. Majno, 5, 20122 Milan, Italy (applicant), represented by Luigi Goglia, Via Privata Cesare Battisti, 2, 20122 Milan, Italy (professional representative)

a g a i n s t

Roxtec AB, Rombvägen 2, 371 23 Karlskrona, Sweden (EUTM proprietor), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 203 12 Malmö, Sweden (professional representative).

On 14/03/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is rejected in its entirety.

2.        The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark registration No 14 338 735  (figurative mark) (the EUTM). The application is directed against all the goods covered by the EUTM, namely:

Class 17:        Cable and pipe penetration seals, made from plastic or rubber.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b), (d) and (e) EUTMR and Article 52(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant first argues that the contested trade mark has been registered contrary to Article 7(1)(b) EUTMR, as it is devoid of any distinctive character. The applicant states that the contested sign is merely the graphic reproduction of the front and main face of one of the products manufactured and commercialised by the EUTM proprietor: sealing modules for pipes or cables consisting of two joinable halves with removable layers and a central core, as shown below:

The function of this sealing system is to enable the sealing of pipes and cables of several different diameters by simply peeling layers from the module halves, thus ensuring a perfect fit. This technical solution has been patented by the EUTM proprietor, in particular European Patent No 0429916 A2, which expired on 28/10/2010, with the following drawing representing the invention:

The applicant also mentions European Patent No 0440903 A1, which is also expired (in 2010), with the following drawing:

Since being in the public domain, over recent years the sealing system in question has become very common in the production of sealing modules and is used by the applicant. The applicant argues that the contested sign is not distinctive, as it merely embodies a technical solution that is found in the public domain, and the sealing modules are produced by different companies, for example:

The applicant adds that the sign consists of simple geometric shapes. It considers that the contested sign consists of no more than a depiction of the apparatus itself the shape of which creates the unique shape of the product in question.

The applicant also argues that the contested trade mark has been registered contrary to Article 7(1)(d) EUTMR, as the shapes of which it is made up have become customary in trade: ‘Applied to goods in Class 17, the presentation of circles in the alternating colours of black and blue does not, from a graphic point of view, contain any notable variation in relation to the conventional presentation of such goods’.

The applicant also argues that the contested trade mark has been registered contrary to Article 7(1)(e)(i) and (ii) EUTMR, as it consists exclusively of the shape which results from the nature of the product itself or of the shape which is necessary to obtain a technical result. These absolute grounds of Article 7(1)(e)(i) and (ii) EUTMR pursue the purpose of keeping certain product shapes freely available with the purpose of preventing the monopolisation of entire product categories and of preventing technical solutions that are meant to have protection for a limited time frame’according to patent law from receiving the unlimited protection granted to trade marks.

The applicant adds that the contested trade mark not only is the graphic reproduction of the main face of one of the EUTM proprietor’s products (although in different colours) but also is drawn to emphasise the main technical solution offered. The inclusion of the black and blue concentric circles is not random but indicates the outlines of the layers or sheets of the sealing module, which have a technical function, that is, to make the sealing module fit to cables or pipes of different sizes and dimensions by simply peeling away single layers. Consequently, the protection granted to the contested trade mark gives an unlimited and unjustified monopoly on the underlying technical solution and functional characteristics of the product. Finally, the applicant argues that the EUTM proprietor filed the contested application in bad faith, to hinder its competitors and prevent them from also offering sealing modules after its patent had expired. According to the applicant, the EUTM proprietor considers that the applicant and other competitors intended to export its products to Europe. According to the applicant, another indication of bad faith is given by the fact that the contested trade mark was filed only once the patents had expired.

In support of its observations, the applicant filed the following evidence:

Document 1: letter of appointment of the attorney.

Document 2: certificate certified by the Chamber of Commerce of WallMax S.r.l. in Italian.

Document 3: registration certificate of EUTM No 14 338 735.

Document 4: extract from http://www.roxtec.com/it

Document 5: extract from http://www.wallmax.it

Document 6: CD containing Roxtec’s product catalogue and printed excerpt of Roxtec’s catalogue.

Document 7: certificate of European Patent No 0 429 916 A2, in German.

Document 8: certificate of European Patent No 0 440 903 A1, in German.

The EUTM proprietor argues that it invented the modular sealing system and its design is a result of a deliberate effort to create brand identity related to a particular product’s design. The design of the products, , is so connected with the EUTM proprietor’s brand identity that it is included in its house mark (see figurative EUTM No 2 362 267  for Classes 6, 17 and 19).

The contested EUTM incorporates both the concentric circles from the EUTM proprietor’s house mark and its distinctive colour combination. The fact that it brings some of the EUTM proprietor’s products to mind does not diminish its distinctive character. The EUTM proprietor adds that ‘The trade mark does not consist of simple geometrical shapes since it is a combination of a black square rectangle with a total of 14 circles in black and blue. The use of dye rubber is not necessary from a technical perspective and results in higher production costs. The use of concentric layers is also not necessary to create an efficient seal (see Annex 1).’ The EUTM proprietor acknowledges that the figurative trade mark alludes to the products but notes that the symmetrical layers are appealing from an aesthetic point of view. The number of layers and the distance between them has also been designed taking into consideration marketing factors and aesthetic choices. The design per se has nothing to do with the functionality of the product (which can ha ve both a lesser or a greater number of layers). It adds that the product can be designed in many ways. The patent designs are different. One of the essential features of the product is missing in the contested trade mark, namely its dividing line. The trade mark alludes to the goods but does not consist of the shape of the goods. It resembles only one side of the product. Finally, it is a figurative mark and not a three-dimensional mark. As regards the alleged customary character of the mark’s design, the EUTM proprietor notes that seals with black concentric circles surrounded with blue colour are connected with the EUTM proprietor, which is also the proprietor of EUTM No 9 061 375, a colour trade mark using these two colours, and that the marketing of seals with these colours would probably constitute infringement of the EUTM proprietor’s trade mark right. It adds that the use of black and blue colours for products in Classes 6, 17 and 19 has acquired distinctiveness and quotes the decision of 15/06/2012, R 2244/2010-2, blue and black (COLOUR MARK), where the Boards established that the colour combination in question had acquired distinctiveness for the products in Classes 6, 17 and 19. As regards the alleged customary character of the mark’s design, the EUTM proprietor argues that the competitor products, mentioned by the applicant, that use the combination of colours black and blue are not sold within the European Union. The design of the trade mark has therefore not become customary in trade. Finally, as to the alleged bad faith, since there was no prior use of the trade mark for the goods at the time of the application, there is no bad faith.

In support of its observations, the EUTM proprietor filed the following evidence:

• Annex 1: undated representation of the EUTM proprietor’s sealing product and of five other similar products made by other manufacturers, none having the black and blue colour combination.

• Annex 2: undated pictures of a book, stationery, a house mat, etc., displaying Roxtec’s house mark and black arches against a blue background.

In its reply, the applicant reiterates its previous arguments. The contested trade mark is nothing more than the reproduction of the front part of the cable-sealing modules manufactured by the EUTM proprietor. However, products with identical shapes, colours and functions are produced and marketed by several undertakings. It adds that ‘the consumer – by simply looking at Roxtec’s trademark – is not able to understand whether the related products come from Roxtec or from its competitors’. The applicant considers that, when the EUTM proprietor mentions that the high degree of distinctive character of its trade mark derives from the combination of colours specifically chosen as characterising its products, this is contradicted by the fact that the EUTM proprietor has registered other similar trade marks with different colours for products in Class 17 (see Documents 9 to 12):

This fact weakens the allegation, according to which the distinctive character of the contested trade mark would be conferred by the precise choice of colours. According to the applicant, the contested mark is descriptive of the kind and quality of the products it designates and, therefore, it is necessarily devoid of any distinctive character. As already pointed out by the applicant, shapes necessary to obtain a technical result shall not benefit from unlimited protection as a trade mark after the patent has expired. It refers in particular to the decision of 08/04/2016, R 2583/2014-5, Pirelli Tyre Tread (Document  13). The applicant considers that the figurative trade mark embodies the main technical function of sealing modules and that the concentric circles of the trade mark represent the outline of their removable layers:

The sign incorporates the technical solution. The other sealing modules mentioned by the EUTM proprietor to show their differences have a fixed and non-adjustable dimension. In fact, they are ordinary sealing modules, whereas the EUTM proprietor’s modules are more innovative and use the technical innovation of removable layers. Therefore, they are not comparable to the other sealing modules mentioned by the EUTM proprietor. Furthermore, the different colours of the layers are necessary to allow the operator to see what thickness has to be removed from the module. In addition, the applicant observes that it is not relevant that the technical function fulfilled by a certain shape is not the only shape capable of achieving that specific function. The fact that the trade mark embodies a technical solution is illustrated by the European patents previously mentioned, which claims ‘a plurality of layers lying one on top of the other and which can be detached from one another’ and ‘a terminal wall which is formed of concentric, removable sealing rings’. The applicant adds that it is irrelevant that the contested trade mark is two-dimensional whereas its sealing modules are three-dimensional, because Article 7(1)(e)(ii) EUTMR applies to any sign, whether two- or three-dimensional, in which all the essential characteristics of the sign perform a technical function. The use of colours does not alter this statement because the particular combination of colours is less important than the main feature that incorporates the technical function. In addition, the applicant adds that the combination of two colours has a technical function as well. The secondary character of the specific combination of black and blue colours is also illustrated by the registration by the EUTM proprietor of other figurative trade marks with different colour combinations, all including black. The absence of the dividing line in the contested mark (while it exists in the modular seal that is composed of two parts that open) would go unnoticed by the consumer. The applicant further remarks that the material produced by the EUTM proprietor does not reproduce the contested trade mark but curve lines and alludes to the most important characteristics of the products manufactured. Finally, the applicant develops its arguments about the alleged bad faith of the EUTM proprietor, namely that the EUTM proprietor was aware that other manufacturers were producing goods with the same technology. The applicant filed third parties’ observations against the contested trade mark, which confirm that the EUTM proprietor was aware of prior use of its trade mark. One month later, the EUTM proprietor filed the other previously mentioned EUTM figurative marks in other colour combinations. The only reason why these marks were filed was to get rid of competitors. One of the colour combinations filed, , in fact reproduces the design of the front part of the applicant’s sealing modules, .

Since it has no commercial need to protect the orange colour combination (its official colours being black and blue), this clearly shows that the intention was to get rid of the applicant.

 In support of its observations, the applicant filed the following evidence:

• Document 9: registration certificate of EUTM No 14 784 375.
• Document 10: registration certificate of EUTM No 14 784 409.
• Document 11: eSearch time line information about EUTM application No 14 784 417.
• Document 12: eSearch time line information about EUTM application No 14 784 458.
• Document 13: decision of 28/04/2016, R 2583/2014-5, PireIli Tyre Tread.
• Document 14: observations by third parties pursuant to Article 40 EUTMR filed by the applicant against the registration of contested EUTM application.
• Document 15: WallMax’s product catalogue, containing the sealing module using the orange colour combination.

The EUTM proprietor in its rejoinder notes that the applicant has not given new arguments on the alleged customary character of the design of its trade mark. As regards the alleged lack of distinctive character, the EUTM proprietor emphasises that the trade mark does not depict the sealing modules (marketed under the trade mark ‘Multidiameter’) and that the goods designated in Class 17 are different sorts of seals. The EUTM proprietor considers that the applicant provided no evidence about the other undertakings allegedly using seals with the same colour combination within the European Union. The EUTM proprietor adds that the other marks with different colour combinations are not relevant to the present case. For the sake of clarity, the EUTM proprietor mentions that it does not use colour combinations for sealing modules other than the black and blue combination, and that the other trade marks with different colour combinations are not used on the EU market and are not under the use obligation. The EUTM proprietor is the market leader for cable seals, and has previously been the sole company marketing the particular kind of seals in question. Previous market research has shown that consumers connect cable seals in black and blue with the EUTM proprietor (Annex 1). Therefore, there is no evidence or arguments to support the contention that the consumer would not perceive the contested trade mark as an indicator of origin. The figurative trade mark alludes only to the product shape. The EUTM proprietor also attaches a list with other seals currently on the market to show that the technical solution in question is not the only one available. No conclusion can be drawn from the decision of 28/04/2016, R 2583/2014-5, PireIli Tyre Tread, as it is very hard to imagine that the design of the trade mark in that case, which is depicted in black and white, could be successfully used in marketing. The trade mark itself looks like a technical drawing:

By contrast, the contested trade mark (on the left) does not resemble the technical drawings of the two expired patents:

The essential features of the EUTM proprietor’s trade mark are:

• a black square
• seven blue concentric circles
• six black concentric circles
• one larger black circle in the middle.

Even if compared with the products themselves (which, according to the EUTM proprietor, should not be done because the trade mark covers products with other technical solutions), there are differences in the sense that the products have:

– a blue square

– seven black concentric circles

– six blue concentric circles

– one larger black circle in the middle

– a rectangular shape that is divisible into two halves, with layers that can be peeled away from the three-dimensional shape (see below).

The EUTM proprietor considers that to the answer to the question ‘which of these essential features are necessary to achieve the technical result?’ should be the rectangular three-dimensional shape, the division line and the peelable layers. None of these features is present in the contested trade mark and these essential features can be incorporated in competing products with other product designs and with other colours, thicknesses and materials. The applicant is already marketing similar cable seals in the European Union using other colour combinations (Annex 3 and the applicant’s document 5). According to the EUTM proprietor, it is clear that the contested trade mark cannot prevent the applicant from incorporating the technical function in question, which in fact it already does with other colour combinations. The EUTM proprietor admits that the contested trade mark is allusive of the product in question, but argues that it is not descriptive of it. It can be said that the contested mark describes the short side of the product with a certain design (without the dividing line), while other designs are possible.

As regards the alleged bad faith, there is no evidence for it at all. The arguments about other trade marks filed by the EUTM proprietor with different colour combinations are not relevant. One of these figurative EUTMs, namely trade mark registration No 7 376 023 , was filed by the EUTM proprietor on 07/11/2008 (which predates the foundation of the applicant company on 2011). Therefore, the applicant’s claim shall be rejected on all grounds.

In support of its observations, the EUTM proprietor filed the following evidence:

• Annex 1: study carried out by GfK Sweden on behalf the EUTM proprietor entitled ‘Recognition of colour combination Blue & Black’, dated 2011.
• Annex 2: table (undated) containing information about the EUTM proprietor’s competitors in the European Union.
• Annex 3: web page from www.wallmax.it showing the product in question with an black/orange colour combination.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Relevant goods, relevant consumer and degree of attention

In the present case, the goods to which an objection has been raised, cable and pipe penetration seals, made from plastic or rubber, covered by the mark are specialised goods and mainly target a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be higher than average considering their specific technical aspect.

Points in time to be considered

The General Court has held that whether a trade mark should be registered or should be declared invalid must be assessed on the basis of the situation at the date of its application, not of its registration (03/06/2009, T-189/07, Flugbörse, EU:T:2009:172; confirmed by 23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225).

Therefore, the date of filing of the contested European Union trade mark, namely 06/07/2015, is the material date for the examination of the ground for invalidity invoked (05/10/2004, C-192/03 P, BSS, EU:C:2004:587, § 40; 16/05/2011, C-5/10 P, CANNABIS, EU:C:2011:306, § 84).

Nonetheless, the Court has held on a number of occasions that material which, although subsequent to the date of filing the application, enables conclusions to be drawn with regard to the situation as it was on that date can, without error of law, be taken into consideration (05/10/2004, C-192/03 P, BSS, EU:C:2004:587, § 41; 16/05/2011, C-5/10 P, CANNABIS, EU:C:2011:306, § 84).

Shape which results from the nature of the product itself – Article 52(1)(a) EUTMR in conjunction with Article 7(1)(e)(i) EUTMR

The applicant in its observations mentions briefly that the contested trade mark has been registered contrary to Article 7(1)(e)(i) EUTMR, as it consists exclusively of the shape that results from the nature of the product itself.

Article 7(1)(e)(i) EUTMR applies when the sign, whether 2D or 3D, consists exclusively of the only shape of the product. All shapes that are inherent to the generic function or functions of such goods must, in principle, also be denied registration (18/09/2014, C-205/13, Hauck, EU:C:2014:2233, § 23-25). The Court of Justice has not given any further guidance about exactly when a shape is inherent to the generic function(s) of goods.

Article 76(1) EUTMR, second sentence, explicitly states that in invalidity proceedings pursuant to Article 52 EUTMR, the Office will limit its examination to the grounds and arguments submitted by the parties. The EUTM enjoys a presumption of validity and it is for the invalidity applicant to invoke before the Office the specific facts that call the validity of a trade mark into question (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 27-29).

Consequently, the Office will examine the facts in accordance with Article 76(1) EUTMR, second sentence, within the scope of factual submissions made by the applicant for the declaration of invalidity (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 28). In doing so, it may take into consideration obvious and well-known facts. However, it will not go beyond the legal arguments presented by the applicant for the declaration of invalidity.

The applicant has not fully explained in what way the shape of the contested mark results from the nature of the goods themselves. The applicant’s only allegation, in this regard, seems to focus on the same argument submitted in support of the allegation of lack of distinctive character (see below), namely that the contested shape corresponds to the ‘appearance’ of the goods and would not be perceived as an indication of origin. The issue will be examined in the course of the assessment of the distinctive character.

In the absence of additional specific arguments or evidence by the applicant, this ground is not founded and the decision continues based on the other grounds invoked.

Technical result – Article 52(1)(a) EUTMR in conjunction with Article 7(1)(e)(ii) EUTMR

Article 7(1)(e)(ii) EUTMR provides that ‘[t]he following shall not be registered: signs which consist exclusively of … the shape, or another characteristic, of goods which is necessary to obtain a technical result’.

The various grounds for refusal to register listed in Article 7(1) EUTMR must be interpreted in the light of the public interest underlying them (29/04/2004, C-456/01 P & C-457/01 P, Tabs (3D.), EU:C:2004:258, § 45; 12/01/2006, C-173/04 P, Standbeutel, EU:C:2006:20, § 59).

The interest underlying Article 7(1)(e)(ii) EUTMR is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product (14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 43 and the case-law cited therein).

In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators (14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 46).

Furthermore, the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks, since it has excluded the grounds for refusal listed in Article 7(1)(e) EUTMR from the scope of the exception under Article 7(3) EUTMR. If follows, therefore, from Article 7(3) EUTMR of the regulation that, even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, it is prohibited from being registered as a trade mark (14/09/2010, C-48/09 P, Lego brick, EU:C:2014/09/2010, § 47 and the case-law cited).

By restricting the ground for refusal set out in Article 7(1)(e)(ii) EUTMR to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional 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 (14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 48 and the case-law cited).

The word ‘exclusively’ must be read in the light of the expression ‘essential characteristics which perform a technical function’ (18/06/2002, C-299/99, REMINGTON, EU:C:2002:377, § 78).

The EUTM proprietor argues that Article 7(1)(e)(ii) EUTMR is inapplicable, as the contested sign does not constitute the shape of the goods or a part thereof. In that regard, it asks that the Cancellation Division bases its findings on the graphic depiction of the sign alone.

By contrast, the applicant considers that the contested trade mark represents part of the shape of the goods, namely the front part of a cable-sealing module manufactured by the EUTM proprietor:

It adds that the function of this sealing system is to enable the sealing of pipes and cables of several different diameters by simply peeling layers from the module halves, thus ensuring a perfect fit. This technical solution has been patented by the EUTM proprietor, in particular European Patent No 0429916 A2, which expired on 28/10/2010, with the following drawing representing the invention:

The applicant also mentions European Patent No 0440903 A1, which is also expired, with the following drawing:

With regard to the EUTM proprietor’s arguments, it must be recalled that, although the depiction of a trade mark is crucial for a sign’s general aptness to constitute a trade mark pursuant to Article 4 EUTMR, that depiction cannot restrict the Office’s examination under Article 7(1)(e)(ii) EUTMR in such a way as might undermine the public interest underlying the latter provision, namely to ensure that economic operators cannot improperly appropriate for themselves certain signs which only incorporate a technical solution, registration of which as a trade mark would impede the use of that technical solution by other undertakings (06/03/2014, joined cases C-337/12 P to C-340/12 P, Surface covered with circles, EU:C:2014:129 § 54-58 and the case-law cited).

The Cancellation Division was not only entitled, but also required, to take into account the material submitted by the parties for the purposes of identifying appropriately the nature of the sign and what it represents in the context of the goods at issue. As a result, in view of the observations submitted and the goods in question, it is clear that the sign alludes to a view of a cable-sealing module and this is admitted by the EUTM proprietor.

The fact that the mark  , is a figurative sign cannot change this finding. It follows from the case-law that the rationale of the ground for refusal in Article 7(1)(e)(ii) EUTMR is to prevent trade mark protection from granting its proprietor a monopoly over technical solutions or functional characteristics of a product that a user is likely to seek in the products of competitors. Article 7(1)(e)(ii) EUTMR is thus intended to prevent the protection conferred by the trade-mark right from being extended beyond signs which serve to distinguish a product or service from those offered by competitors, so as to form an obstacle preventing competitors from freely offering for sale goods incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark. With regard to the wording of Article 7(1)(e)(ii) EUTMR and to the public-policy interest which it pursues, it must be concluded that it applies to any sign, whether two- or three-dimensional, where all the essential characteristics of the sign perform a technical function (08/05/2012, T-331/10 and T-416/10, Surface covered with circles, EU:T:2012:222, § 24-28 and the case-law cited).

The sign’s essential characteristics

The correct application of Article 7(1)(e)(ii) EUTMR requires that the essential characteristics, which are the most important elements of the sign at issue, be properly identified by (in this case) the Office (14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 68-69).

Those elements can be identified by a simple visual analysis or a more detailed examination in which relevant criteria of assessment are taken into account, such as surveys or expert opinions, or data relating to intellectual property rights conferred previously in respect of the goods concerned (14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 71).

The essential features of the EUTM proprietor’s trade mark, , are:

• seven blue concentric circles are placed against a black square background separated from each other by a distance that is the same as their width;
• the smallest, innermost, circle encloses a larger black circle in its middle.

In particular, the Cancellation Division does not agree with the parties that the trade mark represents alternating blue and black circles. Instead, the thin blue circles appear against a black background. Therefore, the impression is that all the black parts of the mark are part of the background, an impression that is enhanced by the width of the black interstices.

The applicant considers that the figurative mark embodies the main technical function of sealing modules and that the concentric blue circles in the trade mark in fact represent the removable layers in the module; therefore, the sign incorporates a technical solution. Furthermore, the applicant considers that the different colours and layers are necessary to allow the user to see what layer has to be removed to allow the diameter of the cable or pipe to fit. The use of the specific black and blue colours is not decisive because it would be regarded as less important than the technical solution represented.

The Cancellation Division considers that the figurative trade mark does not objectively resemble a technical drawing at all or a two-dimensional depiction of a three-dimensional product, as there are no imperfections, perspectives or details that would allow the design to be connected with a real-life object. In addition, there are many objective differences between the mark and the shape of the product in question:

• The colours are not used in the same manner, as the product is blue and the circles and central circle in it are black, while, in the trade mark, the background and the central circle are black and the other circles are blue and much less numerous than in the product.

• There is no dividing line. As shown from the above depiction, the product in question is divisible into two parts; therefore, a line would be seen on a two-dimensional reproduction of the product. This line is not visible in the contested mark. Even though the applicant argues that the line would be seen as an insignificant element, it has to be noted that the public is specialised and its degree of attention is higher than average, considering the technical function of the goods in question. Therefore, details that are minor for the general public would not be insignificant for a specialised public.

• There is not a single indication in the trade mark that this could represent a three-dimensional product.

All in all, the figurative trade mark, although alluding to the shape of the goods, does not exclusively represent this shape. It also has to be noted that a figurative mark has to be used as such to identify the goods covered. Use of a shape similar to a registered trade mark does not normally constitute use of the figurative trade mark. Furthermore, the Cancellation Division agrees with the EUTM proprietor that it is clear that the contested trade mark cannot prevent the applicant from incorporating the technical function in question, which in fact it already does (with other colour combinations, as shown in the applicant’s document 15 and the EUTM proprietor’s Annex 3).

For even more obvious reasons, it is considered that the contested trade mark (on the left) does not resemble the technical drawings of the expired patents:

In addition, the contested trade mark does not resemble the black and white design of the trade mark in the decision of 28/04/2016, R 2583/2014-5, PireIli Tyre Tread, as argued by the applicant:

No conclusion can be drawn from this case, in which the trade mark resembled a technical design.

In the Cancellation Division’s view, it is clear that the registration of the EUTM proprietor’s figurative trade mark is not likely to unduly impair the opportunity for competitors to place on the market goods whose system incorporate the same or similar technology as a technical solution (14/09/2010, C-48/09 P, Lego brick, EU:C:2010:516, § 59). Consequently, EU trade mark registration No 9 001 637 must not be  be invalidated pursuant to Article 7(1)(e)(ii) EUTMR.

The decision continues based on the other grounds invoked by the applicant.

Non-distinctiveness – Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR

For a trade mark to possess a distinctive character within the meaning of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.

In accordance with the standing case-law of the Court of Justice, distinctive character within the meaning of Article 7(1)(b) EUTMR means that the mark applied for must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, thus distinguishing the goods or services from those of other undertakings (21/10/2004, C-64/02, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33; 07/10/2004, C-136/02, Torches, EU:C:2004:592, § 29).

The applicant argues that the contested sign is not distinctive, as it merely embodies a technical solution that is found in the public domain, and the sealing modules are produced by different companies. The applicant adds that the sign consists of simple geometric shapes. It considers that the contested sign reproduces parts of products produced and marketed by several undertakings and that it would not serve as an indicator of a single origin.

Type of the contested mark

The Cancellation Division has to make its assessment on the trade mark as applied for and registered (11/02/2010, R 371/2009-2, Yellow, § 16). The nature of the contested mark should be assessed before examining any grounds for invalidity.

The subject of the proceedings is the mark as registered. The actual use of the mark is not relevant when assessing its nature (26/06/2008, R 270/2008-4, Farbbecher II, § 11; 16/01/2006, R 612/2005-4, Sanitärschlauch, § 9).

The content and scope of a figurative sign is limited to its specific depiction, namely to the exact colours, configuration and specific design elements used to constitute the mark.

In the present case, this means that the question of whether or not the sign has been registered in breach of Article 7 EUTMR has to be assessed only and exclusively with regard to the following mark as registered:

It follows from the image submitted by the EUTM proprietor that the sign consists of seven blue concentric circles against a black square background separated from each other by a distance that is the same as their width. The smallest, innermost, circle encloses a larger black circle in its middle, as previously mentioned. Therefore, the contested mark is a sign consisting of a coloured figurative element.

Contrary to the applicant’s assertions, the trade mark does not consist of simple geometrical shapes, since it is a combination of a black square and a total of seven blue circles.

In the present case, the Cancellation Division sees no reason to diverge from the first decision to accept the registration of the trade mark (including after having duly considered the third parties’ observations filed by the applicant).

It should be noted, first, that the outward appearance of the present trade mark, when viewed in abstracto, does not point towards the shape of a sealing module, including for professionals. The Office agrees with the EUTM proprietor that the sign in question per se does not give any indication of what the product is, since the graphic depiction of the mark does not include any indication that the two-dimensional trade mark represents a three-dimensional object with perspectives, etc.

It has not been demonstrated that the use of the trade mark as registered is common in this industry. The parties have concentrated on showing the actual use of the technology with certain colours, which does not demonstrate that the contested trade mark cannot serve as a badge of origin. There is consistent confusion by the parties between the use of sealing products and the trade mark as registered; however, the Cancellation Division considers that the trade mark is not a representation of products and would not be seen as such. The fact that a professional in the field of sealing modules could recognise the allusion to certain products, which is acknowledged by the EUTM proprietor, does not prove that the mark cannot work as a badge of origin.

The combination of blue circles against a black square is capable of being seen and remembered as an indicator of the commercial origin of the contested goods. A figurative trade mark, if used as filed, can be used on the packaging of the goods; on commercial papers, flyers or brochures; in advertisements; or directly printed on labels affixed to the goods. The Cancellation Division has to assess the mark not as it is or would be used but as it was filed, to determine if, at the moment of its filing, it was capable of distinguishing the goods for which registration was sought, and in the way it was filed, namely as a figurative trade mark.

It appears that the contested mark does not prevent the use of certain types of products, but rather prevents the use of the specific sign, or of a confusingly similar one. It is, therefore, not apparent how the contested mark could prevent others from using the technical solution in question for producing their goods.

Therefore, this ground is not founded and the decision continues based on the other grounds invoked.

Customary character – Article 52(1)(a) EUTMR in conjunction with Article 7(1)(d) EUTMR

Article 7(1)(d) EUTMR ‘must be interpreted as only precluding registration of a trade mark where the signs or indications of which the mark is exclusively composed have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of that mark is sought’ (04/10/2001, C-517/99, Bravo, EU:C:2001:510, § 32; and 05/03/2003, T-237/01, BSS, EU:T:2003:54, § 37).

‘Accordingly, whether a mark is customary can only be assessed, firstly, by reference to the goods or services in respect of which registration is sought, even though the provision in question does not explicitly refer to those goods or services, and, secondly, on the basis of the target public’s perception of the sign’ (05/03/2003, T-237/01, BSS, EU:T:2003:54, § 37).

The applicant has essentially argued that, when applied to sealing modules, the blue and black alternating circles do not contain variations in relation to the conventional presentation of those goods, and this design is therefore customary in trade. The onus is on the applicant to prove through evidence that the actual EUTM has been and is being used currently so frequently in particular trade sectors that it is now considered to be customary in trade. This equates to the requirement of evidential proof that the EUTM has been used to such an extent on the actual goods of the EUTM registration that its presence would not denote trade origin.

The undated evidence filed by the applicant is related to the representation of technical sealing modules from three different manufacturers. The EUTM proprietor considers the evidence not sufficient because none of the manufacturers sells its products within the European Union. The Cancellation Division considers, first, that the evidence is not about use of the trade mark but is about use of products. In addition, the evidence is not dated and no sources are indicated to show where the goods are sold.

The applicant has not presented sufficient evidence showing common usage of the trade mark as registered in relation to the goods at the time of the application for the EUTM.

Therefore, the contested trade mark does not fall foul of the prohibition laid down by Article 7(1)(d) and 7(2) EUTMR.

BAD FAITH – Article 52(1)(b) EUTMR

General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The contested registration was filed on 06/07/2015. It alludes to the appearance of sealing modules produced according to a technology that was invented by the EUTM proprietor but that found its way into the public domain. The applicant filed third parties’ observations against the registration of the trade mark based on the same grounds as the present invalidity action that were not successful (see document 14 of the applicant). The black and blue colours used in the contested trade mark were adopted by the EUTM proprietor to identify its company, as shown by the filing of other EUTM trade marks for the same colours and goods). In addition, the EUTM proprietor has also filed similar trade marks with different colour combinations (including black and orange), which it admits it has no intention of using for the moment (see the applicant’s documents 9 to 12). The applicant uses the combination of orange and black for its goods (see the applicant’s document 15).

There is no evidence of use of the contested figurative mark or of actions taken by the EUTM proprietor against competitors based on its trade mark, even though in its observations it mentions this possibility.

Assessment of bad faith

In the present case, the applicant argues that the EUTM proprietor is trying to protect a shape that serves a purely technical function as a trade mark and thus is unlawfully stifling competition. In addition, the applicant argues that the EUTM proprietor misused the system by applying for the trade mark once its patents had expired to benefit from protection of the technical solution under trade mark law.

It is true that bad faith may be established when the contested EUTM consists of the entire shape and presentation of a product where the competitors’ freedom to choose the shape of a product and its presentation is restricted by technical or commercial factors, so that the EUTM proprietor is able to prevent its competitors not merely from using an identical or similar sign, but also from marketing comparable products (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 50).

However, in the present case, the claim that the EUTM proprietor applied for a trade mark that is strictly connected to its technical effects does not constitute bad faith in the meaning of this provision. As seen above, the contested EUTM is not registered in breach of Article 7(1)(e)(ii) EUTMR. The Cancellation Division cannot see that the filing of the mark misuses the trade mark system in any other way. As mentioned above in the section relating to Article 7(1)(b) EUTMR, the contested EUTM is considered distinctive. Therefore, it cannot be said that its registration restricts competitors’ freedom to choose the shape of a product and its presentation. Consequently, the fact that the EUTM proprietor has filed the contested trade mark must be seen as normal trade mark practice, whether the trade mark or other similar trade marks are used or not, since trade mark applicants have a period of five years to put their trade marks to genuine use.

Bearing all this in mind, it must be held that the applicant has failed to prove bad faith on the part of the EUTM proprietor. This claim must, therefore, be dismissed as unfounded.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) EUTMIR and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ana MUÑIZ RODRIGUEZ

Jessica LEWIS

Pierluigi M. VILLANI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.