Case T‑487/21
Neoperl AG
v
European Union Intellectual Property Office
Judgment of the General Court (Tenth Chamber, Extended Composition), 7 December 2022
(EU trade mark – Application for an EU trade mark representing a cylindrical sanitary insert part – Tactile position mark – Absolute grounds for refusal – Scope of the law – Court acting of its own motion – Examination of distinctive character by the Board of Appeal – Article 7(1)(b) of Regulation (EC) No 207/2009 (now Article 7(1)(b) of Regulation (EU) 2017/1001) – Sign not capable of constituting an EU trade mark – Absence of a precise and self-contained graphic representation of the tactile impression produced by the sign – Article 4 and Article 7(1)(a) of Regulation No 207/2009 (now Article 4 and Article 7(1)(a) of Regulation 2017/1001))
1. Action for annulment – Jurisdiction of the EU judicature – Scope – Prohibition on ruling ultra petita – Obligation to comply with the framework of the dispute as defined by the parties – Obligation to rule on the basis only of the arguments raised by the parties – None – Principle iura novit curia
(see paragraphs 24, 25)
2. Judicial proceedings – Action – Plea in law alleging breach of the scope of the law – Finding made by the Court of its own motion
(see paragraphs 26, 27, 48, 49)
3. EU law – Principles – Rights of the defence – Audi alteram partem rule – Compliance in the context of judicial proceedings – Scope
(see paragraph 28)
4. EU trade mark – Definition and acquisition of the EU trade mark – Signs of which a trade mark may consist – Graphic representation of a trade mark – Conditions for registration – Graphic representation which is sufficiently clear, precise and self-contained – Trade mark representing a cylindrical sanitary insert part – Tactile position mark – Tactile impression not apparent from the graphic representation in a precise and self-contained manner
(Council Regulation No 207/2009, Art. 4 and Art. 7(1)(a) and (b))
(see paragraphs 32, 34, 54-60)
5. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Prior assessment of whether a sign is capable of constituting a trade mark
(Council Regulation No 207/2009, Art. 4 and Art. 7(1)(b))
(see paragraphs 35-38, 44, 45, 47)
Résumé
On 1 September 2016, Neoperl AG filed an application with the European Union Intellectual Property Office (EUIPO) for registration of a trade mark representing a cylindrical sanitary insert part as an EU trade mark for goods in Class 11. (1)
The protection claimed relates both to the structure of the flow regulators and to the tactile aspect of the sign. That application was refused by the examiner on the ground that, in essence, it was not sufficiently precise.
By decision of 3 June 2021, the Board of Appeal of EUIPO found that the sign in respect of which registration was sought as a trade mark was devoid of distinctive character (2) and dismissed the appeal.
The General Court, hearing the appeal brought against that decision, annuls the decision of the Board of Appeal and rules, for the first time, on the application in the field of trade mark law of a plea, raised of the Court’s own motion, alleging breach of the scope of the law, applied in respect of the examination of the application for registration of a tactile position mark.
Findings of the Court
In the first place, the Court raises of its own motion the plea alleging breach of the scope of the law.
In that regard, the Court recalls that it follows from a combined reading of the provisions of Article 4 of Regulation No 207/2009, in the version applicable ratione temporis, and Article 7(1)(a) and (b) of that regulation that the distinctive character of a sign can be assessed, for the purposes of its registration, only once it has been found that it constitutes a trade mark within the meaning of Article 4 of that regulation, that is to say, from the time when it has been found that it is capable of being represented graphically.
However, contrary to what follows from those considerations, the Board of Appeal proceeded to examine the distinctive character of a trade mark without first examining whether the sign in respect of which registration was sought was capable of constituting a trade mark.
It follows that the interpretation of the relevant rules of law, and in particular the question as to whether the sign in respect of which registration as an EU trade mark is sought fulfils the conditions laid down in Article 4 of Regulation No 207/2009, including that of being capable of being represented graphically, and thus of being capable of constituting a trade mark, is, in the present case, a preliminary question which must be resolved in order to proceed to the examination of the pleas alleging infringement of Article 7(1)(b) and Article 95(1) of Regulation No 207/2009.
Consequently, the Court would be neglecting its function as the arbiter of legality if it (i) failed to find, even in the absence of a challenge by the parties in that regard, that the contested decision had been adopted on the basis of a rule – namely a provision concerning refusal to register trade marks which are devoid of distinctive character – which could prove to be inapplicable in the present case in the event that the sign in respect of which registration is sought were not a trade mark within the meaning of Article 4 of Regulation No 207/2009, an aspect which was not examined by the Board of Appeal, and (ii) were led to adjudicate on the dispute before it by applying such a rule itself.
After having raised of its own motion the plea alleging infringement of the scope of the law, the Court considers, in the second place, the merits of that plea. In that regard, it examines whether the sign in respect of which registration is sought is capable of being represented graphically and whether, consequently, the provision concerning refusal to register trade marks which are devoid of distinctive character was applicable in the present case.
The Court finds that the structure of the sign at issue is capable of being represented graphically. By contrast, that is not the case for the tactile impression produced by that structure. This is because the tactile impression produced by the sign in respect of which registration is sought does not emerge in a precise and self-contained manner from the graphic representation of the sign itself but, at most, from the accompanying description. Therefore, that description does not clarify the graphic representation of the sign within the meaning of the case-law, (3) but rather may give rise to doubts as to the subject matter and scope of that graphic representation in that it attempts to broaden the subject matter of the protection applied for.
The sign at issue therefore does not fulfil the conditions laid down in Article 4 of Regulation No 207/2009 and is caught by the absolute ground for refusal laid down in Article 7(1)(a) of that regulation, under which signs which do not conform to the abovementioned Article 4 are not to be registered. Consequently, Article 7(1)(b) of Regulation No 207/2009 was not applicable to the assessment of the application for registration of the sign at issue, which was not capable of constituting a trade mark, with the result that the Board of Appeal adopted the contested decision, thereby refusing registration of the sign in application of that provision, in breach of the scope of the law.