General Court confirms that 3D mark for shape of inhaler is invalid
- These invalidity proceedings concerned a 3D mark consisting of the shape of an inhaler for Class 10 goods
- The court found that the Board of Appeal was right in not identifying the overall convex shape as being an essential
characteristic of the mark - The overall convex shape could not be defined as a major arbitrary, decorative or aesthetic element justifying the
exclusion of the application of Article 7(1)(e)(ii)
In a decision dated 13 November 2024 in Case T‑524/23 , the General Court has dismissed the action filed by the owner of a three-dimensional (3D) sign.
Background
On 1 August 2019 Glenmark Pharmaceuticals Europe Ltd filed with the EUIPO an application for a declaration of invalidity of EU trademark No 001243484, registered on 16 July 1999 in the name of Boehringer Ingelheim Pharma GmbH & Co KG (‘Boehringer’) in Class 10 for the following 3D sign:
Under Article 7(1)(e)(ii) of Regulation 40/94, signs which consist exclusively of the shape of goods which is necessary to obtain a technical result are not to be registered. However, the condition that registration of a shape of goods as a trademark may be refused only if the shape is ‘necessary’ a technical result does not mean that the shape at issue must be the only one capable of obtaining that result. Moreover, since the average consumer may not have the technical knowledge necessary to assess the essential characteristics of a shape, these must be determined objectively, in particular on the basis of its graphic representation. Further, the distinctive character of the elements of a sign is irrelevant for the purposes of identifying its essential characteristics. However, the provision cannot be applicable where the application for registration as a trademark relates to a shape of goods in which a non-functional element, such as a decorative or imaginative element, plays an important role. That solution may, in that case, be incorporated without difficulty by the competitors of the mark’s proprietor in shapes which do not have the same non-functional element as that contained in the proprietor’s shape and which are therefore neither identical nor similar to that shape.
The EUIPO’s Cancellation Division granted the application for a declaration of invalidity and the Board of Appeal dismissed the appeal, finding that the contested mark presented four essential characteristics – namely, the container, the lid, the mouthpiece and the button – which were all technically indispensable elements of the product at issue. Moreover, the board found that the overall convex shape could not be defined as a major arbitrary, decorative or aesthetic element to a degree that it could exclude the application of the provision, that shape also being functional.
General Court decision
On appeal, Boehringer criticised the Board of Appeal for not also having identified the overall convex shape as an essential characteristic of the contested mark.
The General Court stated that the overall convex shape of the inhaler followed the contour of three of the essential characteristics identified by the Board of Appeal – namely, the container, the lid and the button. Therefore, it could be held that the overall convex shape was indistinguishable from all or part of those essential characteristics without any of Boehringer’s arguments making it possible to find that, in addition to being taken into account through those three elements, it should have been taken into account independently. Although Boehringer claimed that an essential characteristic may at the same time include other essential characteristics, this could not be sufficient to regard the overall convex shape as an essential characteristic of the contested mark.
Concerning the overall convex shape, Boehringer took the view that it was not necessary to obtain a technical result, that it did not present the functions identified by the Board of Appeal and that those functions were not technical functions falling within the field of technology. It also argued that the patents attributed no technical advantage to that shape.
The General Court pointed out that the examination of the technical function of an element must be assessed in the light of the technical result of the product at issue, which was inhaling a medical substance. The court noted that nothing precluded the Board of Appeal from using the documents relating to the patents, both in respect of those which were in force and in respect of the earlier patents, which described the functional elements of the shape to assess the technical functionality of the characteristics of the shape concerned. As regards the function of the container, it was clear from those patents that it contained the capsule chamber for the insertion of the medicine. As for the button, it also followed from the patents that the button makes it possible to open the lid and to pierce the capsule containing the medicine to release it. Lastly, according to those patents, the lid makes it possible to cover the mouthpiece and thus serves to prevent dust and dirt from entering the device. Accordingly, to the extent that it had been established that the patents attributed to the container, the lid and the button – in the same shapes as in the contested mark –technical functions, the board was right to find that those elements were necessary for inhaling a medical substance.
The court also stated that the elements based on the symmetrical and curved character of the contested mark did not make it possible to confer on that shape a particularly imaginative or decorative character. The fact that that shape may have been designed with certain aesthetic considerations and that the three elements of which it consisted followed a round shape could not be sufficient in that regard. Moreover, even if it were to be held that that shape differed from other shapes of inhalers present on the market, in that it is curved, it could not be concluded that it was sufficiently significant and surprising to define it as a major arbitrary element.
Anneli Kapp
Partner
Patendibüroo KÄOSAAR
This article first appeared in WTR Daily, part of World Trademark Review, in December/2024. For further information, please go to www.worldtrademarkreview.com.
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