CANCELLATION No C 21 566 (INVALIDITY) 

 

Wallmax S.R.L., Corso di Porta Nuova n. 22, 20121 Milano, Italy (applicant), represented by Luigi Goglia, Via Privata Cesare Battisti, 2, 20122 Milano, 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, 211 20 Malmö, Sweden (professional representative).

On 23/04/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 7 376 023 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

 

On 17/04/2018, the applicant filed a request for  a declaration of invalidity against European Union trade mark No 7 376 023   (figurative mark) (the EUTM), filed on 07/11/2008 and registered on 21/07/2009. The request is directed against all the goods covered by the EUTM, namely:

 

Class 6: Cable and pipe penetration seals, made from metal; sealing frames made from metal.

Class 17: Sealing frames, made from plastic or rubber.

Class 19: Non-metallic rigid pipes for building; non-metallic cable and pipe penetration seals; non-metallic sealing frames; cable and pipe penetration seals, made of plastic or rubber.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (d) and (e)(i) and (ii) EUTMR. 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant first provides factual arguments both about the applicant and its products and the EUTM proprietor and its products. Then, it gives legal arguments in support of its claim 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, namely, sealing modules for pipes or cables consisting of two joinable halves with removable layers and a central core.

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 under European Patent No 0 429 916 A2, which expired on 28/10/2010, and with the following drawing representing the invention:

The applicant also mentions European Patent No 0 440 903 A1, which 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 it is even used by the applicant.

The applicant then continues mentioning that the EUTM proprietor has registered a number of similar trademarks that all have the same graphic design but in different colors all combined with black (green, orange, white). The applicant mentions decision of 08/01/2018, R0940/2017-2, where the Boards of Appeal declared a similar trade mark invalid (document 7). The Boards of Appeal observed in particular that the sign consists exclusively of the principle characteristic of the seal module, namely an exact representation of the end view of concentric (removable) layers which line the cylindrical cavity inside.

The applicant then mentions that the parties are litigating in various jurisdictions. As to the legal assessment of the different grounds, 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 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 comprised have become customary in trade: ‘Applied to goods in Classes 6, 17 and 19, 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 further argues that the contested trade mark has been registered contrary to Articles 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 Articles 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, but it also is drawn to emphasise the main technical solution offered. The inclusion of the black and blue concentric circles is not random but it 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. The technical function was also recognized by the Boards of Appeal in the previously quoted decision.

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: Information about the contested EUTM No 7 376 023 filed on 07/11/2008 and registered on 21/07/2009.

 Document 4: Extract from http://www.wallmax.it showing the blue sealing modules of Wallmax.

 Document 5: Certificate of European Patent No 0 429 916 (A2), in English.

 Document 6: Certificate of European Patent No 0 440 903 (A1), in English.

 Document 7: Decision of 08/01/2018, R0940/2017-2 about figurative EUTM N° 14 338 735 ;

 Document 8: Roxtec’s observations within an opposition proceeding seeking to invalidate the expired Patent, part 1, “1994 Response” – German and English;

 Document 9: Roxtec’s observations within an opposition proceeding seeking to invalidate the expired Patent, part 2, “1996 Roxtec Opposition Response” – German and English;

 Document 10: Roxtec’s observations within an opposition proceeding seeking to invalidate the expired Patent, part 3, “1996 Grounds for Decision” – German and English.

The EUTM proprietor exposes the background of the case and argues that it invented the modular sealing system and its design is a result of a deliberate effort to create a 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):

. Further, Roxtec has also registered its combination of blue and black colours as a EUTM n° 9 061 375 in cCasses 6, 17 and 19 after Roxtec proved acquired distinctiveness for the colour combination for the goods in question as follows:

The contested EUTM incorporates both the concentric circles from the EUTM proprietor’s house mark with distinctive colours and it has been used for many years.

The fact that it brings some of the EUTM proprietor’s products to mind does not diminish the distinctive character of the contested trade mark. 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 2). The EUTM proprietor adds that the trade mark does not consist of simple geometrical shapes since it is a combination of a blue square rectangle with a total of 15 circles in black and blue.

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

- a blue square rectangle;

- 15 black/blue concentric circles;

- a black core;

- the overall impression of symmetry that the trade mark gives.

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 have 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. 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. The trademark does not incorporate the dividing line, and it is essential for the product to be able to be divided and this line is therefore indispensable for the function. Finally, it is a figurative mark and not a three-dimensional mark. The list of goods does not refer exclusively to sealing modules and the mark could be applied to more goods than the specific products. The above-mentioned decision concerning the black and blue trademark EUTM No 14 337 835 has been appealed to the General Court and the proceedings before the Court are currently pending.

As regards the alleged customary character of the mark’s design, the EUTM proprietor notes that seals with black concentric circles surrounded with a blue colour are connected with the EUTM proprietor. The colours are protected by the above mentioned colour mark registration in Classes 6, 17 and 19, and any marketing of similar seals with the same colours would most probably constitute an infringement of the EUTM proprietor’s trade mark rights. The concentric circles are further, as mentioned above, included in EUTM proprietor’s house mark. The black and blue concentric circles are very distinctive and the use of blue and black colours as such for products in Classes 6, 17 and 19 has acquired distinctiveness and represents the EUTM proprietor in the eyes of the highly specialised consumers of Roxtec’s products.

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

 Enclosure 1: Catalogues from the applicant and the EUTM proprietor in order to show that it had copied the entire layout of the EUTM proprietor’s catalogue.

 Enclosure 2: An alternative product design of the EUTM proprietor’s main competitors showing that the use of concentric layers is not necessary to create efficient seal.

 Enclosure 3: Witness statement issued by Mr. Michael Blomqvist, founder of Roxtec from which it can be seen the aesthetic considerations that were made in the design process of the contested mark.

 Enclosure 4: few high-resolution images of the product, which also show the product when opened, which is the way the consumer will perceive the product when it is being used.

 Enclosure 5: copy of 08/01/2018, R0940/2017-2 (now definitive) concerning EUTM No 14 338 735 .

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. 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 a characteristic of 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.

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 decision of 08/04/2016, R 2583/2014-5, Pirelli Tyre Tread. 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. 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, in the contested trade mark, of references to the dividing line, namely the one that enables the consumer to separate the two halves of the module in order to get to the layers and place the cable inside, cannot at all be considered as a relevant difference.

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

 Document 11: Deed filed by the EUIPO in the proceedings before the General Court (24/09/2019, T-261/18, DEVICE OF A BLACK SQUARE CONTAINING SEVEN CONCENTRIC BLUE CIRCLES (fig.)).

 Document 12: EUTM proprietor’s complaint filed before the US District Court of Texas where it claims that ‘the concentric circle design is a valid, protectable trademark owned by Roxtec’, decision of 15/08/2018.

The EUTM proprietor in its rejoinder notes that neither the contested mark does reproduce the entire product or its main part nor does it reproduce the front part since it is not an accurate depiction of this part. The EUTM proprietor is the market leader for cable seals, and it was previously the sole company marketing the particular kind of seals in question. Then the EUTM proprietor comments regarding decision of 08/04/2016, R 2583/2014-5 “Pirelli Tyre SpA vs The Yokohama Rubber Co” mentioned by the applicant (which was not definitive at the time the observations were filed).

In addition, the proprietor has the following comments regarding this alleged invalidation ground. The colours in the EUTM proprietor’s opinion are very important for the overall impression of the sign and an essential feature. The dividing line, which is indispensable for the function of the adaptable sealing module, is lacking. The fact that there has been technical considerations around the use of contrasting colours for the product does not exclude aesthetical and marketing considerations concerning the product and subsequently concerning the trade mark. The colours for the product were chosen with aesthetical and marketing considerations in mind. The circles in contrasting colours, or against a blue background, is just one of the distinguishing features of the sign, other equally important elements are the box shape, the colours among which blue gives the dominant impression, and the bullseye in the middle. The trademark in question does not have the same scope of protection as the expired patent and it is therefore not a question of perpetuating patent protection.

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

 Enclosure 1: Copy of 24/10/2018, T-447/16, DEVICE OF PIRELLI TYRE TREAD (fig.).

The present case had been suspended due to pending appeals against similar EUTMs No14 338 735  and No 14 784 375. The applicant informed the Cancellation Division that the decision of 08/01/2018, R0940/2017-2 about EUTM No 14 338 735 has become final after rejection of the appeals filed by the EUTM proprietor before the European Court of Justice. There are sufficient grounds to take the present decision on that basis.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) 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. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

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.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C 332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Relevant goods, relevant consumer and degree of attention

In the present case, the goods to which an objection has been raised in Classes 6, 17 and 19 are cables, pipes and sealing frames of different materials. They are specialised goods and they mainly target the 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 07/11/2008, 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).

The Cancellation Division will start with the examination of the ground included in Article 7(1)(e)(ii) EUTMR at the outset.

Technical result – Article 59(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 not applicable, 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 0 429 916 A2, which expired on 28/10/2010, with the drawing reproduced above representing the invention.

The applicant also mentions European Patent No 0 440 903 A1, which has also expired, with the drawing reproduced above.

Firstly, the Cancellation Division acknowledges that in 14/03/2017, 12 326 C against EUTM No 14 338 735, the application for cancellation of the EUTM was rejected, but notes that this decision was appealed and the appeal has been upheld on 08/01/2018, R 940/2017-2 and finally confirmed by the Court of Justice.

The arguments given by the Court of Justice in the parallel case between the same parties and against a comparable trade mark must therefore be given due consideration in the present case.

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 is required to take into account the material submitted by the parties for the purposes of appropriately identifying 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 represents a front 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 to 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).

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 placed against an blue square background separated from each other by a distance that is the same as their width;

- the smallest, innermost, circle is black in its middle.

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 Cancellation Division also considers that the challenged mark depicts the central most important characteristic of the product itself.

This depiction forms the principal technical concept behind the product. The concentric circles representing the end view of the ‘plurality’ of layers are an indispensable (‘essential’) feature of the invention. As for the colours, the EUTM proprietor itself admits that it has applied for a range of nearly identical applications. 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 on the part of the EUTM proprietor of other figurative trade marks with different colour combinations, all including the black colour.

Therefore the contested mark reproduces most of the essential features of the seal, namely the concentric circles being an end view of the removable layers and the separation of the seal. The blue colour would not be regarded as an essential feature of the products.

Furthermore, there is nothing decorative or imaginary in the contested trade mark. All the essential characteristics of the trade mark perform a technical function.

The EUTM proprietor acknowledges that the figurative trade mark resembles one side of the product depicted two-dimensionally. Moreover, the Cancellation Division notes that the number of symmetrical layers is not decisive and the absence of the horizontal line either. There is nothing appealing from an aesthetic point of view and all of the figurative characteristics of the contested trade mark perform a technical function. Therefore the trade mark in fact reproduces one possible perspective of the products in Classes 6, 17 and 19 which are seals, pipes and parts of different materials.

Furthermore the fact that there are other types of sealing modules is of no relevance. If a particular technology protecting a specific sealing module has fallen into the public domain, the technology shall not benefit from an indefinite extension of protection through trade mark registration and this will apply despite whether there are other possible technologies available in order to obtain a similar result or not (04/09/2010, C-48/09 P, Lego brick, EU:C:2010:516,) .

As to the judgement of 24/10/2018, T-447/16, DEVICE OF PIRELLI TYRE TREAD (fig.) also mentioned by the EUTM proprietor, it is a completely different case as the contested sign represents the essential shape and characteristic of the goods in question. In addition, it is prior to the judgement of 24/09/2019, T-261/18, DEVICE OF A BLACK SQUARE CONTAINING SEVEN CONCENTRIC BLUE CIRCLES (fig.), EU:T:2019:674 upheld by the Court of Justice in 12/03/2020, C-893/19 P, Roxtec, EU:C:2020:209.

Conclusion

In light of the above, the Cancellation Division concludes that the application is totally successful and the contested European Union trade mark should be declared invalid for all the contested goods. Since the challenged mark is declared invalid pursuant to Article 59(1)(a) in conjunction with Article 7(1)(e)(ii) EUTMR, there is no need to enter into the merits of the other grounds of invalidity invoked, namely those included in Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (d) and (e)(i) EUTMR. 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

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

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

The Cancellation Division

 

Carmen SÁNCHEZ PALOMARES

Jessica LEWIS

Frédérique SULPICE

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.