In Case T-44/16, the General Court (GC) had to decide on the validity of an EU trade mark (EUTM) for the below figurative sign, which was deemed to consist of essentially four elements. The case turned on the question of whether these elements were functional.

The Applicant, Novartis AG, successfully registered the EUTM at issue for "pharmaceutical preparations for the treatment of dementia of Alzheimer's type" in October 2012. The Applicant manufactured pharmaceutical products, including a product called "Exelon" that was used for the treatment of Alzheimer's disease. Exelon, which was administrable by transdermal patch, enjoyed patent protection until July 2012.

The intervener, SK Chemicals GmbH, filed an application for a declaration of invalidity against the EUTM, relying, in particular, on the absolute ground of invalidity laid down in Article 7(1)(e)(ii) of Regulation No 207/2009. According to that provision, signs are barred from registration if they consist exclusively of the shape of goods which is necessary to obtain a technical result.

The EUIPO's Cancellation Division upheld the application for a declaration of invalidity, and the Fifth Board of Appeal of the EUIPO dismissed the Applicant's appeal.

In today's decision, the GC confirmed that the contested EUTM is invalid. As a preliminary point, the Court pointed out that Article 7(1)(e)(ii) of Regulation No 207/2009 makes no distinction between three-dimensional shapes, two-dimensional shapes or two-dimensional representations of three-dimensional shapes. Hence, said the Court, the provision also applies to a two-dimensional shape such as a transdermal patch. The GC then recalled that (1) the essential characteristics of the sign have to be properly identified and (2) that it has to be examined whether they all perform a technical function of the goods at issue.

In the GC's view, the Board of Appeal was correct in finding that the contested EUTM contained four essential characteristics, namely:

• the square shape of the protective liner,
• the white stripe in the middle representing the overlapping protective plastic layer,
• the circular area in the centre, and
• the arrangement of knobs around the central circular area.

The GC rejected the Applicant's argument that the colour of the patch was a further essential characteristic of the sign. The perception of the sign by the average consumer is not a decisive element in this regard, said the GC. The consumer may not have the technical knowledge necessary to assess the essential characteristics of a shape and, therefore, certain characteristics may be essential from his point of view even though they are not essential in the context of analysis of functionality.

Next, the Court upheld the Board of Appeal's findings concerning the technical function of each of the four essential characteristics of the sign:

• The square shape of the liner had a technical function in that it facilitated the packaging and storage of the transdermal patches, which were packaged in packets, which were in turn stored in rectangular cardboard boxes.
• The overlapping protective plastic layer represented by the white stripe allowed easy application of the patch to the body and avoided its exposure before first use.
• The circular area in the centre allowed the patch to adapt the movements of the body and to reduce detachment forces.
• The arrangement of the knobs around the central circular area created a space between the patch and the protective liner during transport, thereby reducing the loss of the medicinal substance which could otherwise occur.

The Court was not swayed by the Applicant's argument that Article 7(1)(e)(ii) of Regulation No 207/2009 required a single technical result, whereas the Board of Appeal identified four different technical functions. Referring to its previous case law, the GC established that it was not necessary for each essential characteristic to fulfil the same function. The "technical functions may be different so long as the essential characteristics of the shape combine the characteristics which are technically causal of, and sufficient to obtain, the intended technical result" (para. 38 of the judgment). In the present case, this result was the administration of the medicinal product through a transdermal patch.

Comment

It is good to see that the GC has finally abandoned its previous stance, according to which the examination of the mark for the purpose of applying Article 7(1)(e)(ii) EUTMR was limited to the graphical representation of the mark (see, for instance, Case T-416/10, reported here). This previous stance  imposed an excessively high standard on the assessment of functional shapes which would make it possible to circumvent the prohibition on monopolisation contained in Article 7(1)(e)(ii) EUTMR (as Advocate General Szpunar explained in C-30/15 P, reported here).

In line with the CJEU's case law, the GC has now confirmed that the competent authority may carry out a detailed examination which takes into account, in addition to the graphic representation, material relevant to identifying appropriately the essential characteristics of a sign and their technical function, including documents relating to previous patents describing the functional elements of the shape concerned (e.g, the images on the right refer to an earlier patent and have been taken from the contested decision of the Board of Appeal).

Today's judgment is highly recommended for readers with a desire to brush up their knowledge on the principles established by the CJEU for applying Article 7(1)(e)(ii) EUTMR.