# C_2023296EN.01001401.xml

| 21.8.2023 | EN | Official Journal of the European Union | C 296/14 |
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21.8.2023

EN

Official Journal of the European Union

C 296/14

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Appeal brought on 17 February 2023 by the European Union Intellectual Property Office against the judgment of the General Court (Tenth Chamber, Extended Composition) delivered on 7 December 2022 in Case T-487/21, Neoperl AG v European Union Intellectual Property Office

(Case C-93/23 P)

(2023/C 296/16)

Language of the case: German

Parties

Appellant: European Union Intellectual Property Office (represented by: D. Hanf, T. Klee and E. Markakis, acting as Agents)

Other party to the proceedings: Neoperl AG

Form of order sought

The appellant claims that the Court should:

| — | set aside the judgment under appeal; |
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set aside the judgment under appeal;

| — | order each party to bear its own costs; |
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order each party to bear its own costs;

| — | dismiss the action brought against the contested decision. |
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dismiss the action brought against the contested decision.

Grounds of appeal and main arguments

In support of the appeal, the appellant relies on a single ground, alleging that the judgment under appeal is contrary to Article 72(3) of Regulation (EU) 2017/1001, (1) which raises an issue that is significant with respect to the unity, consistency or development of Union law, within the meaning of the third paragraph of Article 58a of the Statute of the Court of Justice:

| 1. | The judgment under appeal is contrary to Article 72(3) of Regulation 2017/1001 in so far as it holds that the substantive examination of the ground for refusal in Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009 (2) constitutes a legal issue that has to be examined prior to the consideration of the application for annulment submitted to the General Court. In that regard, the General Court failed to recognise that this was not necessary in order to review the legality of the contested decision of the Board of Appeal. That review could have been ensured through the examination of the question whether the Board of Appeal, by omitting to examine Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009, infringed Article 7(1)(b) of Regulation 207/2009 and Article 71(1) of Regulation 2017/1001, as relied on in the pleas in law put forward by the applicant at first instance. In that regard, the General Court unlawfully assumed the original competence of the Board of Appeal (Articles 165(1), 66(1), 70(1) of Regulation 2017/1001) to examine the substance of the ground for refusal in Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009. |
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1.

The judgment under appeal is contrary to Article 72(3) of Regulation 2017/1001 in so far as it holds that the substantive examination of the ground for refusal in Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009 (2) constitutes a legal issue that has to be examined prior to the consideration of the application for annulment submitted to the General Court. In that regard, the General Court failed to recognise that this was not necessary in order to review the legality of the contested decision of the Board of Appeal. That review could have been ensured through the examination of the question whether the Board of Appeal, by omitting to examine Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009, infringed Article 7(1)(b) of Regulation 207/2009 and Article 71(1) of Regulation 2017/1001, as relied on in the pleas in law put forward by the applicant at first instance. In that regard, the General Court unlawfully assumed the original competence of the Board of Appeal (Articles 165(1), 66(1), 70(1) of Regulation 2017/1001) to examine the substance of the ground for refusal in Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009.

| 2. | The judgment under appeal is contrary to Article 72(3) of Regulation 2017/1001 since the General Court itself carried out the substantive review of Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009. The General Court does not have jurisdiction ratione materiae for that review because the Board of Appeal made no decision on the applicability of Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009 the substance of which was amenable to review as to its legality. Thus the substantive review carried out by the General Court constitutes an unlawful alteration of the contested decision. The General Court effectively exercised the original competence of the Board of Appeal in that regard (Articles 165(1), 66(1), 70(1) of Regulation 2017/1001) and thereby definitively and unlawfully deprived the Board of Appeal of that competence. |
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2.

The judgment under appeal is contrary to Article 72(3) of Regulation 2017/1001 since the General Court itself carried out the substantive review of Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009. The General Court does not have jurisdiction ratione materiae for that review because the Board of Appeal made no decision on the applicability of Article 7(1)(a) in conjunction with Article 4 of Regulation 207/2009 the substance of which was amenable to review as to its legality. Thus the substantive review carried out by the General Court constitutes an unlawful alteration of the contested decision. The General Court effectively exercised the original competence of the Board of Appeal in that regard (Articles 165(1), 66(1), 70(1) of Regulation 2017/1001) and thereby definitively and unlawfully deprived the Board of Appeal of that competence.

| 3. | The ‘infringement of the scope of Article 7(1)(b) of Regulation 207/2009’ examined by the General Court of its own motion contrary to the pleas in law raised by the applicant at first instance constitutes an impermissible circumvention of the rule of jurisdiction laid down by the EU legislature in Article 72 of Regulation 2017/1001. It follows that the judgment under appeal is unlawful in its entirety, since it is based entirely on that infringement. |
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3.

The ‘infringement of the scope of Article 7(1)(b) of Regulation 207/2009’ examined by the General Court of its own motion contrary to the pleas in law raised by the applicant at first instance constitutes an impermissible circumvention of the rule of jurisdiction laid down by the EU legislature in Article 72 of Regulation 2017/1001. It follows that the judgment under appeal is unlawful in its entirety, since it is based entirely on that infringement.

| 4. | The infringement by the judgment under appeal of Article 72(3) of Regulation 2017/1001 necessarily entails further infringements to the detriment of the appellant, namely that (i) the Board of Appeal was definitively deprived of its original (Articles 165(1), 66(1) and 70(1) of Regulation 2017/1001) and specific (Article 71(1), second sentence, first alternative of Regulation 2017/1001) competence to examine and decide the appeal; and (ii) the independence of its members in the exercise of that competence has been undermined (Article 166(7) of Regulation 2017/1001). Furthermore, those infringements unlawfully limit the applicant’s multi-level and specific legal protection at first instance against the decision of the EUIPO examiner and against the decision of the Board of Appeal, as provided for by the EU legislature (Article 66(1), Article 165(1) and recital 30 of Regulation 2017/1001; Article 72 of Regulation 2017/1001). |
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4.

The infringement by the judgment under appeal of Article 72(3) of Regulation 2017/1001 necessarily entails further infringements to the detriment of the appellant, namely that (i) the Board of Appeal was definitively deprived of its original (Articles 165(1), 66(1) and 70(1) of Regulation 2017/1001) and specific (Article 71(1), second sentence, first alternative of Regulation 2017/1001) competence to examine and decide the appeal; and (ii) the independence of its members in the exercise of that competence has been undermined (Article 166(7) of Regulation 2017/1001). Furthermore, those infringements unlawfully limit the applicant’s multi-level and specific legal protection at first instance against the decision of the EUIPO examiner and against the decision of the Board of Appeal, as provided for by the EU legislature (Article 66(1), Article 165(1) and recital 30 of Regulation 2017/1001; Article 72 of Regulation 2017/1001).

| 5. | The appeal raises an ‘issue that is significant with respect to the unity, consistency or development of Union law’ within the meaning of the third paragraph of Article 58a of the Statute of the Court of Justice, since the judgment under appeal threatens to create legal uncertainty in relation to an issue that is of particular structural significance for the specific system and ‘logic of the institutional architecture’ provided for by the EU legislature in order to ensure comprehensive, proper, effective and multi-level legal protection against EUIPO decisions. Due to its horizontal and constitutional nature, that issue is of significance for the judicial review of all decisions of the EUIPO Boards of Appeal in trade mark and design matters. It also concerns legal protection against decisions of all EU agencies, for which the EU legislature has made a specific, comprehensive and prior review by an independent Board of Appeal mandatory as a ‘specific condition’ within the meaning of the fifth paragraph of Article 263 TFEU. |
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5.

The appeal raises an ‘issue that is significant with respect to the unity, consistency or development of Union law’ within the meaning of the third paragraph of Article 58a of the Statute of the Court of Justice, since the judgment under appeal threatens to create legal uncertainty in relation to an issue that is of particular structural significance for the specific system and ‘logic of the institutional architecture’ provided for by the EU legislature in order to ensure comprehensive, proper, effective and multi-level legal protection against EUIPO decisions. Due to its horizontal and constitutional nature, that issue is of significance for the judicial review of all decisions of the EUIPO Boards of Appeal in trade mark and design matters. It also concerns legal protection against decisions of all EU agencies, for which the EU legislature has made a specific, comprehensive and prior review by an independent Board of Appeal mandatory as a ‘specific condition’ within the meaning of the fifth paragraph of Article 263 TFEU.

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(1)  Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

(2)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (OJ 2009 L 78, p. 1).

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