EUROPEAN UNION: 3D Mark Invalidated as All Essential Characteristics Fulfilled a Technical Function

The General Court has upheld the European Union Intellectual Property Office (EUIPO) decision granting a declaration of invalidity of the three-dimensional EU Trade Mark shown below, registered in Class 6 for “Metal beams for construction,” on the basis of the absolute ground in Article 7(1)(e)(ii) of Regulation 2017/1001, as all of the essential characteristics of the mark fulfilled a technical function only (T‑192/23 June 26).

The applicant argued that the EUIPO had erred in initially identifying the essential characteristics of the mark. It claimed that the mark was a combination of technical considerations, with an immediately perceived specific and arbitrary overall visual arrangement which highlighted aesthetic features specifically associated with the applicant.

The applicant further argued that the EUIPO should have considered the perception of the relevant public when identifying the essential characteristics of the mark, including (1) affidavits from construction engineers across Europe confirming that they associated the mark with the applicant’s goods; and (2) the applicant’s own promotional brochure containing statements emphasizing the aesthetic characteristics of the beams.

The General Court rejected these arguments. The identification of the essential characteristics was to be carried out either directly on the basis of the overall impression produced by the mark, or by first examining in turn each of the components of the mark. The perception of the mark by the relevant public was not decisive in relation to Article 7(1)(e)(ii) but, at most, was a useful factor when the competent authority itself was making the assessment. The essential characteristics must be determined objectively on the basis of the mark’s graphic representation and any descriptions filed with the trademark application. The affidavits were relevant only to the distinctive character of the mark and did not provide any information about its essential characteristics or their technical function.

The brochure was intended to show that the mark differed significantly from the customs of the sector, but this question was relevant only for the assessment of distinctive character and not for identifying the essential characteristics under Article 7(1)(e)(ii).

The General Court also rejected the applicant’s argument that the EUIPO had wrongly considered that all the essential characteristics of the mark were dictated by their technical function. The EUIPO had been entitled to consider the technical manual for the beams and details of their patent protection as each were objective and reliable sources of information concerning the technical functionality of the essential characteristics of the mark.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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