In 2020, a nullity application was filed before the EUIPO regarding the three-dimensional trademark:

The company BB Services GmbH initiated the nullity proceedings for the three-dimensional trademark. The grounds invoked in the proceedings were Article 7(1)(e)(i) of Regulation (EU) 2017/1001 on the European Union trade mark and Article 7(1)(e)(ii) of the same regulation.

It was argued that the shape of the product was dictated by its nature and that such shape was necessary to achieve a technical result.

The application was rejected in its entirety on the grounds that it had not been demonstrated that the sign consisted exclusively of the shape and characteristics imposed by the product or necessary to obtain a technical result. This decision was appealed by BB Services GmbH,.

In the present case, the appellant claims that the figure is a: “nestable construction figure compatible with other modular systems” and that, consequently, the shape of the product was imposed by its nature and was necessary to obtain a technical result. On the other hand of the coin, EUIPO and the proprietor of the mark consider that it is a: “toy-figure” on the basis of the overall impression given by the sign, its constituent elements and its characteristics. In summary, that being a “toy-figure” it would not respond to this imposed and necessary shape to obtain a technical result.


The General Court finds that the Board of Appeal erred in failing to consider the dual nature of the product in question. The Court, concludes that it is both a toy-figure and a nestable construction figurine with the modular construction system. Therefore, the Board of Appeal erred by simply categorizing the product under the single designation of “Figure-toy” while overlooking the fact that it is also a “nestable construction figurine” with a more technical nature.

On the question of the shape imposed or not by the nature of the product itself:

In order for a product to contain an imposed shape, the trademark owner must dispense with ornamental or fanciful elements, and the shape itself must maintain a generic nature.

In this instance, the Court concludes that the ornamentations stem from the designer’s creativity, while the human features are imposed by the nature of the product. Consequently, the appellant’s claims are dismissed, as the human shape is not sufficient to deny trademark protection and, consequently, the imposed shape in the sign was not demonstrated.

The Court concludes that refusal can be assessed in relation to signs consisting exclusively of the imposed shape of the product when the essential characteristics are necessary for a technical result. In order to determine the functionality of the product, the essential features must be identified in order to verify whether they respond to a technical function, taking into account the elements resulting from the specific examination.

On the essential characteristics of the sign: If there are other shapes that allow the same technical result, Article 7(1)(e)(ii) of Regulation (EU) 2017/1001 does not apply. In this case, as mentioned above, the product contains ornamental and fanciful elements that play an important role, which makes Article 7(1)(e)(ii) of Regulation (EU) 2017/1001 inapplicable.

The most relevant aspects of the figure cannot be reduced solely to assembly elements or a figure-toy on the basis of the overall impression offered by the sign. Therefore, it reiterates that we are dealing with a dual nature.

On the functionality of the product: The representation of human features in a figure-toy compatible with the modular construction system generates a dual functionality: playful in the role-playing and storytelling game and technical in the modular assembly that providing dual function.

As to whether or not the shape is necessary to obtain a technical result: It is inappropriate to refuse registration of the mark on the sole ground that it has functional characteristics. In this case, since it has significant ornamentation, it cannot be considered that the shape is necessary to obtain a technical result. The characteristics of the product arise from the freedom of the designer of the figure and, although the human features are required by the product, it cannot be concluded that it contains characteristics necessary for a technical purpose.

Therefore, as the appellant, who had the burden of proof in the invalidity proceedings, was unable to prove that the shape was imposed by the product, the appeal is dismissed in its entirety.

JUDGMENT OF THE GENERAL COURT (Sixth Chamber) 6 December 2023, Case T‑297/22