Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 03/11/2020

ADVOKATBYRÅN GULLIKSSON AB

Box 4171

SE-203 13 Malmö

SUECIA

Application No:	018052603
Your reference:	V48420570EU
Trade mark:
Mark type:	Figurative mark
Applicant:	ROXTEC AB PO Box 540 SE-371 23 Karlskrona SUECIA

1. The Office raised an objection on 29/05/2020 pursuant to Article 7(1)(e)(ii) EUTMR because because it consists exclusively of the shape of goods which is necessary to obtain a technical result.

2. The applicant submitted its observations on 17/07/2020 which may be summarised as follows:

• The applicant requests a division of the application, namely that all the accepted goods are transferred to the divisional application.

• The applicant also requests a limitation of the goods in classes 17 and 19. The current list of goods therefore reads as follows:

Class 6 Cable and pipe penetration seals, made from metal.

Class 17 Cable and pipe penetration seals, made from plastic or rubber, excluding multilayered sealing modules; articles made of intumescent material for fireproofing purposes; fireproof seals, excluding multilayered sealing modules

Class 19 Cable and pipe penetration seals (non-metallic), excluding multilayered sealing modules; fireproof seals in the nature of building materials.

• By this restriction, cable and pipe penetration seals with many layers that can be stripped away from the seal so that a cable, wire or tube may be inserted into the unit, are excluded from the list of goods. Consequently, Article 7(1)(e)(ii) EUTMR is no longer applicable. The restriction further mirrors how the Applicant is currently using similar signs, see Appendix 1, i.e. as logos for other types of products than multilayered sealing modules.

• The goods in class 6 cannot be considered to be related to the technical function supposedly depicted by the concentric rings since is not possible to manufacture the particular type of cable seals in metal. The applicant refers to an expired patent which indicates that the goods are made of plastics. Cable and pipe penetration seals, made from metal utilize other technical solutions. The applicant provides information and an image of metal seals.

• The goods in class 17 are also unrelated to the multilayered sealing solutions. Intumescent materials are materials made with the use of a substance that swells as a result of heat exposure, thus leading to an increase in volume and decrease in density, for example foams. The technical solution utilized by this type of goods cannot be considered to be depicted by the sign’s concentric circles.

• The same goes for the goods in class 19, namely seals with another technical solution that are not made of plastics.

3. Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

The Office acknowledges the division of the application and confirms that list of goods now reads as follows:

Class 6 Cable and pipe penetration seals, made from metal.

Class 17 Cable and pipe penetration seals, made from plastic or rubber, excluding multilayered sealing modules; articles made of intumescent material for fireproofing purposes; fireproof seals, excluding multilayered sealing modules

Class 19 Cable and pipe penetration seals (non-metallic), excluding multilayered sealing modules; fireproof seals in the nature of building materials.

The Office cannot find other than that the mark ‘ ‘ as a whole consists of a shape which is necessary to obtain a technical result.

The applicant claims that that the mark is registrable in relation to the goods now at issue.

However, as regards the limitations made in classes 17 and 19 this does not make the mark registerable. In its judgment of 12/02/2001, C-363/99, ‘POSTKANTOOR’, EU:C:2004:86, §  114 and 115, the ECJ stated that :

By contrast, where registration is applied for in respect of particular goods or services, it cannot be permitted that the competent authority registers the mark only in so far as the goods or services concerned do not possess a particular characteristic.

Such a practice would lead to legal uncertainty as to the extent of the protection afforded by the mark. Third parties - particularly competitors - would not, as a general rule, be aware that for given goods or services the protection conferred by the mark did not extend to those products or services having a particular characteristic, and they might thus be led to refrain from using the signs or indications of which the mark consists and which are descriptive of that characteristic for the purpose of describing their own goods.

When viewing the mark in connection with seals, the relevant consumers would not know that the goods protected under the mark exclude multilayered sealing modules (which is a feature indicated by the representation of the mark).

As for the goods “cable and pipe penetration seals, made from metal” in class 6, the main part of the goods may be of metal, however, they may also incorporate a seal with a removable layer. See the following web site:

https://www.sewatek.se/produkt/roxtec-r

As for fireproof seals in the nature of building materials in class 19, they may also incorporate cable and pipe penetration seals which are intumescent and/or fireproof with removable layers.

As regards the articles made of intumescent material for fireproofing purposes and the fireproof seals in class 17, they may be cable and pipe penetration seals which are intumescent and/or fireproof with removable layers. Furthermore, it should be noted that intumescent materials such as foam swell and expand in order to provide a perfect seal.

The mark therefore simply depicts a seal with many layers that can be stripped away from the seal so that a cable, wire or tube may be inserted into the unit to form a secure fit. Each concentric circle corresponds to an edge view of the removable layer.

The fact that the mark may be used in relation to other types products than multilayered sealing modules is not relevant as the mark has to be examined in relation to the goods applied for, which in this case include and pertain to “cable and penetration seals”.

4. For the abovementioned reasons, and pursuant to Article 7(1)(e)(ii) EUTMR, the application for European Union trade mark No 18 052 603 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have 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.

Anne-Lee KRISTENSEN