The General Court exceeded its jurisdiction … according to Advocate General Pikamäe

The scope of the General Court’s jurisdiction in appeals against decision of the Board of Appeal (‘BoA’) of the European Union Intellectual Property Office (‘EUIPO’) is laid down in Art. 72 EUTMR. Advocate General (‘AG’) Priit Pikamäe recently found that the General Court had exceeded its jurisdiction by holding that a trade mark application was not sufficiently represented. The BoA had previously found that the mark lacked distinctiveness.

Background

On 1 September 2016, Neoperl filed an EU trade mark application for the following sign:

The mark was referred to as a ’position tactile mark’ and the application contained a description of the sign. The goods for which registration was sought were ‘sanitary inserts, in particular jet regulators and jet formers’ in class 11.

The EUIPO rejected the application because it was not sufficiently precise to be represented on the register in accordance with Art. 4 of Regulation 207/2009 (‘EUTMR 2009’). This constitutes an absolute ground for refusal (Art. 7(1)(a) EUTMR 2009).

The BoA dismissed the appeal. Instead of reviewing whether the sign was represented in a sufficiently precise manner, it held that the mark lacked distinctiveness (Art. 7(1)(b) EUTMR 2009).

Neoperl’s appeal to the General Court was formally successful (case T‑487/21, IPKat here). The Court annulled the BoA’s decision.

Although Neoperl did not challenge the BoA’s decision to examine the sign’s distinctiveness rather than the precision of its graphical representation, the General Court found of its own motion that the BoA should have reviewed the precision of the graphical representation prior to assessing the distinctive character of the trade mark.

The judges also held that the mark applied for did not meet the criteria of Art. 4 EUTMR 2009 because the tactile impression could not be represented graphically.

The EUIPO was discontent with the General Court’s decision and filed an appeal to the Court of Justice of the EU (‘CJEU’). The EUIPO argued in a nutshell that the General Court had exceeded its jurisdiction by ruling on Artt. 4, 7(1)(a) EUTMR 2009 instead of Art. 7(1)(b) EUTMR 2009.

The CJEU admitted the appeal (decision here).

AG Priit Pikamäe’s Opinion

AG Pikamäe delivered his Opinion (here, case C-93/23) and recommended to annul the General Court’s decision.

I. Raising legal issues of the General Court’s own motion

AG Pikamäe endorsed the General Court’s approach that an EU court must raise an issue of its own motion that has not been challenged by either party, if the issue is decisive for the review of the legality of the BoA’s decision. The General Court may not take a decision, which would be contrary to EU law.

II. Priority of Art. 7(1)(a) EUTMR 2009 over Art. 7(1)(b) EUTMR 2009

Next, AG Pikamäe reviewed whether Art. 7(1)(a) EUTMR 2009 must be examined before Art. 7(1)(b) EUTMR 2009.

The AG referred to the consistent case law of the CJEU, according to which each ground for refusal in Art. 7(1) EUTMR 2009 applies independently of the others, requires separate examination and must be interpreted in the light of the interests underlying it.

These principles do not, in the AG’s opinion, speak against the General Court’s interpretation. Rather, they constitute “an instruction addressed to the administration and legal practitioners to verify, primarily, whether the most basic requirements in terms of registration of signs are met”.

AG Pikamäe found the following arguments to support the General Court’s notion:

1. The wording of Art. 7(1)(a) EUTMR 2009 refers to ‘signs’, while that of Art. 7(1)(b) EUTMR 2009 to ‘trade marks’. It is necessary to establish first whether a ‘sign’ constitutes a ‘trade mark’ within the meaning of Artt. 4 EUTMR 2009.

2. The structure of Art. 7 EUTMR 2009 speaks in favour of the General Court’s position. The absolute grounds for refusal in Art. 7(1)(b) to (d) EUTMR 2009 can be overcome by acquired distinctiveness (Art. 7(3) EUTMR 2009). This presupposes that the trade mark constitutes a ‘sign’ within the meaning of Art. 4 EUTMR 2009 because this ground of refusal cannot be overcome by acquired distinctiveness.

3. The distinctive character of a sign can only be assessed if the sign is clearly established.

As a consequence, AG Pikamäe agreed with the General Court that Art. 7(1)(a) EUTMR 2009 must be assessed prior to Art. 7(1)(b) EUTMR 2009.

III. Exercise of the General Court’s jurisdiction to alter decisions

Despite the aforementioned findings, the AG took issue with the General Court assessing whether the trade mark application at issue met the conditions of Artt. 4 and 7(1)(a) EUTMR 2009.

AG Pikamäe found that the General Court’s assessment required fact-finding, for which the EUIPO and the BoA are exclusively competent. The General Court’s role is limited to reviewing the legality of the BoA’s decision (cf. Art. 72(1) EUTMR). This means that the General Court may not substitute its own reasoning with that of the BoA’s or carry out an assessment on a question on which the BoA has not adopted a position.

Since the BoA had not analysed whether the conditions of Artt. 4 and 7(1)(a) EUTMR 2009 would be met, it was not for the General Court to adopt a position in this respect.

For that reason, AG Pikamäe proposed to annul the General Court’s decision and refer the case back to it to adopt a new decision.

Comment

The AG’s analysis is convincing and consistent with the case law of the General Court and the CJEU (e.g., case C-609/11 P at para. 48).

If the CJEU follows the AG’s Opinion and confirms its previous case law, the ensuing question will be why the CJEU admitted the appeal in the first place. What is the fundamental question that is important for the unity, consistency or development of EU law that has not already been settled by the CJEU?

Does the admission of the appeal mean that any transgression of the General Court’s jurisdiction can be challenged before the CJEU? If yes, this would render the admission mechanism redundant in such cases. If no, Neoperl would be a singular case where the CJEU will have corrected the General Court’s transgression of its jurisdiction but will not do so in future cases!?

These proceedings show one of the weaknesses of the admission mechanism for appeals to the CJEU. The legislator should consider amending it. The violation of fundamental procedural rules by the General Court should constitute a ground for admission of an appeal. For reasons of consistency and legal certainty, the same should apply to diverging case law at the General Court level. Finally, the General Court should be entitled to admit an appeal to the CJEU in its decision if it considers the case to concern fundamental issues and the CJEU should be bound by that decision.