General Court rejects Wajos appeal over 3D mark



Par Richard Milchior


Article publié dans World Trademark Review

– This long-running case concerned an application for a 3D mark consisting of the shape of a container
– The court dismissed an appeal against a EUIPO decision rejecting the application under Article 7(1)(e)
– The three grounds for refusal of registration laid down in Article 7(1)(e) are autonomous


The EU General Court has rejected an appeal in Wajos GmbH v EUIPO (Case T‑10/22, 5 July 2023) over the EUIPO’s decision toreject an application for a three-dimensional (3D) mark consisting of the shape of a container. The court held, among otherthings, that the ground of violation of the authority of res judicata had not been established and that the violation of one of thethree grounds of refusal under Article 7(1)(e) is sufficient to justify the refusal of a registration.




‘MosOn 7 December 7 2015 Wajos filed the following 3D EU trademark in Classes 29, 30, 32 and 33:

The filing was rejected in 2016 by the examiner for lack of distinctiveness under Article 71(b) of the Regulation 207/2009.Wajos appealed before the General Court, which overruled the Board of Appeal decision on 22 May 2017 (Case T-307/17),holding that the mark was distinctive. An appeal before the CJEU was rejected on 12 December 2019 (Case C-738/18 P).
The case was remanded to the second Board of Appeal, which adopted the attacked decision and refused the registration, sincethe mark did not comply with Article 7(1)(e) of the regulation, except for a limited number of products listed in Classes 29, 30and 32.




Two claims were made to the General Court: the first for violation of the authority of res judicata and the second for violation ofArticle 7(1)(e) of the regulation.

Violation of the authority of res judicata


The first claim was that the Board of Appeal had ignored the authority of res judicata of the judgment of 3 October 2018 (CaseT-313/7) since the General Court had established definitively in that judgment that the refusal based on Article 7(1)(e) was notgrounded and that the Board of Appeal had not applied the principle of functional continuity.

According to case law, the authority of res judicata covers the motivation of a case, which is part of the basis of the decision and therefore indissociable. Consequently, it includes only the points of fact or law that have been definitively decided by a judicialdecision.

In addition, a mark can be refused for various reasons and that there is no order prescribed to do this examination.

The court then recalled what a distinctive mark is and that the interest of Article 7(1)(e) is to avoid trademark law being used to grant a monopoly on the technical or utilitarian characteristics of a product. The conditions of application of this ground differfrom those concerning the examination of distinctiveness.

The obligation under Article 7(1)(b) that the perception of the public must be taken into consideration does not exist when Article 7(1)(e) is concerned. In addition, the court noted that in Case T-313/17, the ground of refusal based on Article 7(1)(e)was not examined either directly or indirectly.

Therefore, the ground of violation of the authority of res judicata was not established.

Concerning the claim based on the violation of functional continuity, even if the General Court decides that a sign does not fall under of the absolute grounds for refusal, the cancellation of an EUIPO decision only forces the court to reopen proceedings andexamine whether the sign does not fall under another ground of absolute refusal not examined before.

This is what was made in the case when the Board of Appeal re-examined the filing after the CJEU decision.

Then, the court assessed that there is no fixed order in which the EUIPO must examine the various grounds of refusal and theEUIPO guidelines are not binding.

This justified the decision to reject the claim based on functional continuity and the entirety of the first claim.


Violation of Article 7(1)(e)


The second claim was based on a violation of Article 7(1)(e) and firstly, specifically, of (e)(ii).

The court recalled that, under this provision, registration should be refused for signs that consist exclusively of the shape ofgoods that is necessary to obtain a technical result, including the form or another characteristic of the product that is necessaryto obtain a technical result, and that this is done to avoid granting a monopoly on technical solutions.

The court recalled that the wording of Article 7(1)(e)(ii) took into consideration the fact that any form of product is at leastpartially functional and should not be refused for registration only because that it has some utilitarian purposes. This is why theterms ‘exclusively’ and ‘necessary’ were included in the wording.

Concerning the use of the word ‘exclusively’, the court specified that the existence of one or several arbitrary minor elements ina sign for which all the essential elements are dictated by the technical solution is without consequence when concluding thatthe sign exclusively constitutes the shape of the product necessary to obtain a technical result. In addition, this ground of refusalis applicable only when all the characteristics of the sign are functional; therefore, registration cannot be refused when theshape includes a major non-functional part.

Concerning the word ‘necessary’, the court held that this condition does not mean that the shape should be the only oneallowing this result.

The court added that the authority in charge of the examination must identify the essential characteristics of the sign, whichmeans that it must find the most important element and that, afterwards, the authority should check whether thosecharacteristics concern the technical function of the product.

In this case, this was done by the Board of Appeal, which found that those characteristics had a technical function for thedisputed product by describing it and explaining it for each essential characteristic.

This analysis was not contested. However, it was claimed that the Board of Appeal had not taken into consideration the factthat one of the essential characteristics did not have a purely technical function but also an aesthetical value. The courtanswered that the potential additional aesthetical value did not preclude the application of the refusal based on Article 7(1)(e)(ii).

Another rejected defence was based on the principle that ‘necessity’ does not mean that only one shape could create theresearched result. On the contrary, the shape used allowed the product to have a better stability; therefore, it was importantfrom a technical and a functional perspective.

The court then stated that the applicant could not rely on the fact that the addition of functional elements created a globalaesthetic value.

Therefore, the Board of Appeal had not erred when applying this ground of refusal.

Another part of the same claim was that the Board of Appeal had wrongly decided that the registration could not be acceptedon the basis of Article 7(1)(e)(i) and (iii) concerning the refusal of a sign exclusively constituting the shape or anothercharacteristic imposed by the nature of the product or providing a substantial value to the product.

The court confirmed that the three grounds for refusal under Article 7(1)(e) are autonomous and it does not matter that a signmay be refused under several of the grounds in this article, since one is enough to justify the refusal of a registration. Therefore,since the refusal was justified on the basis of Article 7(1)(e)(ii), it was not necessary to examine the other grounds.

The second claim was rejected, along with the whole case.


This article first appeared on WTR Daily, part of World Trademark Review, in August 2023. For further information, please go to