Opinions
No order between graphic representation and distinctiveness? A critical look at CJEU’s Neoperl decision.
On January 23, 2025, the European Court of Justice (‘CJEU’) issued its ruling in the Neoperl case (C-93/23 P), establishing that absolute grounds for refusal can be assessed in any order, with no ground taking precedence over others. Specifically, the CJUE clarified that there is no requirement to examine the representation criteria before addressing the trademark’s distinctiveness.
We allow ourselves, at the tip of our pen, to disagree with the CJEU, but especially with the reasoning followed by the EUIPO Board of Appeal (‘BoA’).
Let us try, in simple words, to explain the Neopearl case and our point of view.
Case background: to cut a long story short.
In September 2016, Neoperl sought to register a ‘position tactile mark’, shown here below, at EUIPO as an EU trademark in Class 11 for ‘Sanitary inserts, in particular flow regulators and flow generators’.
Initially, EUIPO refused the application, stating the mark lacked sufficient precision in its representation under art. 4 EU Regulation 207/2009 (‘EUTMR 2009’), an absolute ground for refusal under art. 7(1)(a) EUTMR 2009.
When Neoperl appealed, the EUIPO Board of Appeal (‘BoA’) took a different approach – instead of addressing the graphical representation issue – it rejected the mark for lack of distinctiveness under art. 7(1)(b) EUTMR 2009, after properly allowing Neoperl to present its defence on this point.
The case then moved to the General Court (T-487/21), which annulled the BoA’s decision. Surprisingly, the General Court, acting on its own initiative, without Neoperl contesting the BoA’s choice to decide on distinctiveness rather than the accuracy of the graphic representation, determined that:
- the precision of the graphic representation should have been examined before distinctiveness;
- the ‘tactile position mark’ failed to meet graphic representation requirements under 4 EUTMR 2009.
Before the CJEU, the EUIPO successfully challenged this ruling, contending that the General Court had overstepped its jurisdiction by:
- ruling on Articles 4 and 7(1)(a) instead of focusing on Article 7(1)(b);
- adopting a decision on the representation requirement, deeming it insufficient, based on factual determinations for which the General Court is not competent.
The CJEU upheld the EUIPO’s appeal, stating that:
- each of the grounds in art. 7(1) EUTMR 2009 is independent of the others and calls for separate examination;
- the General Court was not entitled to alter the BoA’s decision. Although the General Court merely annulled the decision, in reality, it implicitly altered the content of the BoA’s decision by finding that the evaluation on graphic representation took precedence over the assessment on distinctiveness and ruled on the former’s conditions.
First things last? For us, graphic representation before distinctiveness.
As professionals in the field, we have little to say about the obvious error committed by General Cout in exceeding the limits of its jurisdiction.
However, we respectfully disagree with the BoA and CJUE approach, which deprioritize the assessment of sufficient graphical representation in its analysis.
Fully agreeing with the Advocate General Pikamäe, we believe that a meaningful assessment of a trademark’s character distinctive can only be conducted after clearly and explicitly determining the precise sign to which such distinctiveness should be attributed.
Consequently, the preliminary determination must focus on whether the sign subject to registration demonstrates both adequate graphical representability and sufficient precision to enable a proper examination of its distinctive character. How can one logically decide on the distinctiveness of a trademark without clarifying and understanding exactly what it is?
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Valentina D’Adda, Trainee
E: v.dadda@nmlex.it
T.: +39 026575181
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