The matter at hand
In 2016, Neoperl AG filed for a Community Trade Mark for a sign characterized as a ‘tactile position mark’. This mark was denied registration by the examiner on the ground that it was not sufficiently precise, rendering it not to meet the requirements for a trade mark, as stipulated in Article 4 of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
The Board of Appeal dismissed the appeal, but found the mark to be devoid of distinctive character, denying registration on the basis of the ground of refusal stipulated in Article 7(1)(b) of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, without assessing whether the mark meets the requirements for a trade mark, as stipulated in Article 4 of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
The General Court annulled the decision on the basis that the Board of Appeal had failed to assess, before examining Article 7(1)(b) of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, whether the sign applied for satisfied the conditions set out in Article 4 of that regulation. In examining the latter requirements, the General Court found that the sign at issue did not satisfy the conditions of Article 4 of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, refusing it on the basis of Article 7(1)(a) of that regulation.
EUIPO filed appeal before the ECJ, on the grounds that i) the General Court was incorrect to assume that the Board of Appeal is obliged to assess the requirements for a trade mark, as stipulated in Article 4 of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, before assessing any of the other grounds of refusal stipulated in Article 7(1)(b) to (m) of that regulation and ii) the General Court had exceeded the limits of its jurisdiction by ruling on the absolute ground for refusal set out in Article 7(1)(a) of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark while this was expressly not examined by the Board of Appeal.
The judgment of the ECJ
Upon addressing the first part of the appeal, the ECJ first addresses the use of the words ‘sign’ in Articles 4 and 7(1)(a) of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark on the one hand and ‘trade mark’ in Article 7(1)(b) on the other. In this regard, the ECJ finds that the wording used in Article 7 of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark is inconsistent as Article 7(1)(e) references the word ‘sign’. It is on that basis that the ECJ concludes that ‘sign’ and ‘trade mark’ must “be regarded as being used interchangeably in that Article 7(1), with the result that their alternative use to points (a) and (b) of that provision cannot reflect the intention of the EU legislature to give priority to the application of the ground for refusal referred to in point (a) over the application of the other absolute grounds for refusal, including, in particular, the absolute ground for refusal referred to in that point (b)” (paragraph 59).
In the absence of any other reason why any order must be complied upon assessing the absolute grounds for refusal of Article 7(1) of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, the ECJ concludes that “in the context of examining an application for registration, the Board of Appeal may consider it more appropriate, in certain cases, to analyse, in the first place, the ground for refusal laid down in Article 7(1)(a) of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark and, in other cases, the ground for refusal provided for in Article 7(1)(b) of that regulation, without such a choice vitiating by an error of law the decision which has been taken by that board as a result of that examination” (paragraph 61).
With regard to the second part of the appeal, the ECJ first calls into memory that, under Article 72(2) and (3) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (which is applicable to the procedural part of this matter), the General Court shall have jurisdiction to annul or to alter decisions of EUIPO (paragraph 68). However, it continues that the power to alter decisions “does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions is limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take” (paragraph 69).
Hence, the ECJ upholds the second part of the appeal as “the fact that the Board of Appeal had not examined the absolute ground for refusal laid down in Article 7(1)(a) of Trade Mark Regulation 207/2009Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark precluded the General Court from reviewing the assessment made by the Board of Appeal and, consequently, from being able validly to alter the decision at issue in that regard” (paragraph 70).