Judgment of the General Court Tenth Chamber, Extended Composition, 7 December 2022, Neoperl v EUIPO Representation of a cylindrical sanitary insert, T-487/21

• Date: 07 December 2022
• Year: 2022

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possible to attain the objective pursued by that legislation. It is not apparent from the order for

reference that that possibility was exercised in the case in the main proceedings.

IV. APPROXIMATION OF LAWS

1. EUROPEAN UNION TRADEMARK

Judgment of the General Court (Tenth Chamber, Extended Composition), 7 December 2022,

Neoperl v EUIPO (Representation of a cylindrical sanitary insert), T-487/21

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)

On 1 September 2016, Neoperl AG filed an application with the European Un ion 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.

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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

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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

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Within the meaning of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes o f the

Registration of Marks of 15 June 1957, as revised and amended.

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The distinctive character of a trade mark within the meaning of Article 7(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on

the European Union trade mark (OJ 2009 L 78, p. 1).