THE SECOND BOARD OF APPEAL OF THE EUIPO UPHELD THE APPEAL LODGED BY LGV AND DECLARED THE INVALIDITY OF TRADE MARK HOLDING THAT IT CONSISTS EXCLUSIVELY OF THE SHAPE THAT IS NECESSARY TO OBTAIN TECHNICAL RESULT
With the provision dated 8 January 2018 and communicated on 29 January 2018, the Office reversed the decision of the Invalidity Division and declared the trade mark nullity as it consisted exclusively of the shape of the product necessary to achieve the technical result in accordance with the article 7 (1)(e)(ii) EUTMR
The subject matter of this decision was the trademark registered on the 6th of July 2015 for goods in Class 17, for cable entry modules made of plastic and rubber.
The sign represents the frontal section of plastic devices (i.e. cable glands) which in 2015 lost the monopoly protection guaranteed by patents for invention. A competitor of the trade mark proprietor, therefore, decided to apply for a declaration of invalidity of the title as it was granted in breach of the absolute grounds for refusal referred to in the Article 7 RMUE. Particularly, it was pointed out that the sign was in fact made up exclusively of (i) the shape or other characteristic that results from the nature of the goods themselves; (ii) the shape or other characteristic of goods that is necessary to obtain a technical result. The judgment in question is the result of the appeal proceedings against the decision given by the EUIPO Invalidity Division which, at first instance, held that the following mark was valid and that there were no grounds for refusal.
The Second Board of Appeal upheld that the provision laid down in Article 7 (1)(e)(ii) is intended to prevent abuse of the protection afforded by the EMN and the creation of a potentially perpetual monopoly on technical solutions by the means of the trade mark registration. Based on the documentation filed, the Commission considered that it was immediately clear that “the concentric circles on the side of the module are not a whimsical drawing; or merely decorative. They are the visible consequence of plurality of the layers that can be torn off in relation to the size of the cable, wire, tube that will be inserted into the unit to securely fasten it”.
The Commission reiterated that under the European Union system of intellectual property rights, technical solutions can only be protected for a limited period and, therefore, declared the contested trade mark invalid. The decision in question represents an important milestone that reaffirms the categories of industrial property rights and clarifies the scope of their protection.