(Trade mark without text) | Decision 0012326

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 http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=120023278&key=5c5950f60a840803398a1cf1d4b656dd (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.