62021TJ0487
JUDGMENT OF THE GENERAL COURT (Tenth Chamber, Extended Composition)
7 December 2022 (
*1
)
(EU trade mark – Application for the EU trade mark representing a cylindrical sanitary insert – 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))
In Case T‑487/21,
Neoperl AG, established in Reinach (Switzerland), represented by U. Kaufmann, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Klee and D. Hanf, acting as Agents,
defendant,
THE GENERAL COURT (Tenth Chamber, Extended Composition),
composed, at the time of the deliberations, of A. Kornezov, President, E. Buttigieg (Rapporteur), K. Kowalik-Bańczyk, G. Hesse and D. Petrlík, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 12 May 2022,
gives the following
Judgment
1
By its action under Article 263 TFEU, the applicant, Neoperl AG, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 June 2021 (Case R 2327/2019-5) (‘the contested decision’).
Background to the dispute
2
On 1 September 2016, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by 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)), for the following sign:
3
In the application for registration, the mark applied for was indicated as being an ‘other mark’, namely a ‘tactile position mark’, and was described as follows:
‘The mark is a tactile position mark. The protection claimed relates to a structure, laid out at one end of a cylindrical sanitary insert, intended for the flow of water, directed towards the outside and projecting from a non-elastic base, with this structure being made of circular, concentric and flexible slats a few millimetres in height covering the entire surface of the end, with it being possible to bend the flexible slats by pressing a finger against or alongside the base. No protection is claimed for the rest of the outline of the insert, shown using a dotted line in the representation.’
4
The goods in respect of which registration was sought are in Class 11 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Sanitary inserts, in particular flow regulators and flow generators’.
5
The application for registration gave rise to objections based on the formal grounds for refusal set out in Article 26(1)(d) of Regulation No 207/2009 (now Article 31(1)(d) of Regulation 2017/1001), read in conjunction with Rule 9(3)(a) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 41(2) of Regulation 2017/1001), given that, ‘generally speaking, tactile marks … would not be accepted by [EUIPO]’. It was thus suggested that the applicant reclassify the mark applied for as a position mark.
6
By letter of 22 December 2016, the applicant refused to reclassify the mark applied for and insisted, in that regard, on its classification as a tactile position mark and on the description provided.
7
On 11 October 2019, the examiner rejected the application for registration on the basis of Article 41(4) of Regulation 2017/1001, read in conjunction, in essence, with Article 4 and Article 31(3) thereof, on formal grounds, in so far as, in essence, the application, to the extent that it sought registration of a tactile mark, was insufficiently precise for the purposes of those provisions.
8
On 16 October 2019, the applicant filed a notice of appeal with EUIPO against the examiner’s decision. On 22 January 2020, it filed a written statement setting out the grounds of that appeal.
9
By a communication from the rapporteur of 3 August 2020, the Board of Appeal of EUIPO informed the applicant that, independently of the issue of determining whether or not its application for a trade mark met the requirements of Article 31 of Regulation 2017/1001, it found that the absolute ground for refusal set out in Article 7(1)(b) of Regulation 2017/1001 was relevant and that the mark applied for was devoid of distinctive character, within the meaning of the latter provision.
10
On 3 March 2021, the applicant submitted its observations regarding the communication of 3 August 2020.
11
By the contested decision, the Fifth Board of Appeal of EUIPO considered that the sign in respect of which registration as an EU trade mark was sought was devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 and dismissed the appeal.
Forms of order sought
12
The applicant claims that the Court should:
–
annul the contested decision;
–
order EUIPO to pay the costs.
13
EUIPO contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
Law
Preliminary observations
14
Given the date on which the application for registration at issue was filed, namely 1 September 2016, which is decisive for the purpose of identifying the applicable substantive law for examination of the existence of absolute grounds for refusal, the case at hand is governed by the substantive provisions of Regulation No 207/2009, where appropriate, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Regulation No 2868/95, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21) (see, to that effect, judgments of 12 December 2019, EUIPO v Wajos, C‑783/18 P, not published, EU:C:2019:1073, paragraph 2, and of 8 May 2019, VI.TO. v EUIPO – Bottega (Shape of a golden bottle), T‑324/18, not published, EU:T:2019:297, paragraph 17 and the case-law cited).
15
More specifically, Article 4 of Regulation 2015/2424 states that that regulation is to enter into force on 23 March 2016, but that certain provisions of Regulation No 207/2009, as amended, including Article 4 and Article 26(3), are to apply only from 1 October 2017.
16
Consequently, in the present case, as regards the substantive rules, Article 4 and Article 26(3) of Regulation No 207/2009, in the version applicable prior to amendment by Regulation 2015/2424, and Article 7 of Regulation No 207/2009, as amended by Regulation 2015/2424, are applicable. However, in respect of the latter provision, the application ratione temporis of Regulation No 207/2009, as amended by Regulation 2015/2424, does not lead to a different result for the examination of the present action. The amendment made to Regulation No 207/2009 by Regulation 2015/2424 does not concern the provisions of Article 7(1)(a) and (b) of Regulation No 207/2009, which are the only ones relevant for the purpose of examining the present action. Consequently, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the applicant in its application to Article 7(1)(b) of Regulation 2017/1001 must be understood as referring to Article 7(1)(b) of Regulation No 207/2009, the wording of which is identical.
17
Since procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001 in force at the time the contested decision was adopted.
The Court raising of its own motion the plea alleging breach of the scope of the law
18
In support of its action, the applicant relies on two pleas, alleging, first, infringement of Article 7(1)(b) of Regulation No 207/2009 and, second, infringement of the first sentence of Article 95(1) of Regulation 2017/1001. It claims, in essence, that the Board of Appeal did not take sufficient account of the specific features of the mark applied for as a tactile position mark and complains that the Board of Appeal, in infringement of, in particular, the obligation under Article 95 of Regulation 2017/1001 to carry out an examination of the relevant facts of its own motion, failed to establish the usual tactile impression produced by the flow regulators, the usual tactile impression produced by the sign in respect of which registration was sought, or the fact that the flexible tactile impression of the slats making up that sign would necessarily be associated with a functional quality of the goods in question. The applicant concludes from this that, in contrast to the Board of Appeal’s finding, that sign does have distinctive character.
19
EUIPO contests the applicant’s arguments and maintains that the Board of Appeal was correct in holding, after having exhaustively and accurately determined the facts, that the sign in respect of which registration was sought was devoid of distinctive character.
20
In that regard, it should be noted that the examiner rejected the application for registration on the basis of Article 41(4) of Regulation 2017/1001, read in conjunction with Article 4 thereof (see paragraph 7 above), on the grounds that the nature of the mark applied for was indicated incorrectly, that the description included in the application for registration was irrelevant and that, in any event, that description could only describe what could be seen on the graphic representation of that mark, without being able to form an interpretation of what was understood from a specific mark. The examiner added that the mark applied for was perceived through the sense of touch, while the sensory properties could not be directly deduced from the representation of the sign. Consequently, the examiner found that the graphic representation of the sign did not reproduce the application with a sufficient degree of precision.
21
The applicant contested that decision, indicating in its written statement setting out the grounds of its appeal, dated 22 January 2020 (see paragraph 8 above), that, since the entry into force of Regulation 2017/1001, a graphic representation of a sign in respect of which registration as an EU trade mark was sought was no longer required. In the alternative, if the requirements for the graphic representation of a mark under Regulation No 207/2009 were to be taken into account, it argued, on the basis of the legal expert’s report attached to its observations, that the general eligibility for registration of tactile position marks is not precluded by EU trade mark law and that the graphic representation of the sign at issue, together with a description, made it possible to ‘concretise’ the mark applied for, including the tactile impression it produces, in such a way as to enable the competent authorities and the public clearly and unambiguously to determine the subject matter of the protection claimed.
22
In the communication from the rapporteur of 3 August 2021, sent to the applicant after it filed the appeal against the examiner’s decision (see paragraph 9 above), and in the contested decision, the Board of Appeal decided to examine the absolute ground for refusal of registration under Article 7(1)(b) of Regulation No 207/2009 and stated that it was irrelevant whether or not the sign in respect of which registration was sought should otherwise be refused registration under Article 41(4) of Regulation 2017/1001, read in conjunction with Article 4 of Regulation No 207/2009 (now, after amendment, Article 4 of Regulation 2017/1001), or under Article 7(1)(a) of Regulation No 207/2009, as amended, in so far as it was sufficient that a ground for refusal under the aforementioned Article 7(1) opposed that registration (see paragraph 58 of the contested decision).
23
The applicant has not raised a plea alleging breach of the scope of the law in order to challenge the Board of Appeal’s decision to examine the application for registration solely in the light of Article 7(1)(b) of Regulation No 207/2009.
24
According to the case-law of the Court of Justice, while certain pleas may, and indeed must, be raised by the courts of their own motion, a plea going to the substantive legality of the decision at issue can, by contrast, be examined by the EU judicature only if it is raised by the applicant (see judgment of 25 October 2017, Commission v Italy, C‑467/15 P, EU:C:2017:799, paragraph 15 and the case-law cited).
25
However, it also follows from case-law that, in the context of the dispute defined by the parties, although the EU judicature must rule only on the heads of claim put forward by the parties, the EU judicature cannot confine itself to the arguments put forward by the parties in support of their claims, or it might be forced, in some circumstances, to base its decisions on erroneous legal considerations (see judgment of 21 September 2010, Sweden and Others v API and Commission, C‑514/07 P, C‑528/07 P and C‑532/07 P, EU:C:2010:541, paragraph 65 and the case-law cited; judgment of 20 January 2021, Commission v Printeos, C‑301/19 P, EU:C:2021:39, paragraph 58). In particular, in a dispute between the parties concerning the interpretation and application of a provision of EU law, Article 7(1)(b) of Regulation No 207/2009 in the present case, the EU judicature is required to apply to the facts put before it by the parties the relevant rules of law for the resolution of the dispute. According to the principle iura novit curia, determining the meaning of the law does not fall within the scope of application of a principle which allows the parties a free hand to determine the scope of the case (see judgment of 12 December 2018, Servier and Others v Commission, T‑691/14, under appeal, EU:T:2018:922, paragraph 102 and the case-law cited).
26
Thus, the EU Courts have the power and, where appropriate, a duty to raise certain pleas of substantive legality of their own motion (Opinion of Advocate General Tanchev in Changmao Biochemical Engineering v Commission, C‑666/19 P, EU:C:2021:827, point 25). Such is the case, for example, in respect of the plea of substantive legality claiming the force of res judicata with absolute effect (see, to that effect, judgment of 1 June 2006, P & O European Ferries (Vizcaya) and Diputación Foral de Vizcaya v Commission, C‑442/03 P and C‑471/03 P, EU:C:2006:356, paragraph 45).
27
In that regard, it should be noted that a plea alleging breach of the scope of the law concerns a matter of public policy and is for the Court to consider of its own motion. The Court would be neglecting its function as the arbiter of legality if it failed to make a finding, even in the absence of any challenge by the parties on that point, that the contested decision before the Court had been adopted on the basis of a rule that was not applicable to the case in point and if, as a consequence, it was led to adjudicate on the dispute before it by itself applying such a rule (see, to that effect, judgment of 12 June 2019, RV v Commission, T‑167/17, EU:T:2019:404, paragraphs 60 and 61 and the case-law cited).
28
However, in fulfilling its duty to raise of its own motion a ground of public policy, the EU judicature must have regard to the rule that the parties should be heard. Accordingly, except in particular cases such as, inter alia, those provided for by the rules of procedure of the Courts of the European Union, those Courts cannot base their decisions on a plea raised of their own motion, even one involving a matter of public policy, without first having invited the parties to submit their observations on that plea (judgment of 2 December 2009, Commission v Ireland and Others, C‑89/08 P, EU:C:2009:742, paragraph 57; see also, to that effect, judgment of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 54 and the case-law cited).
29
In the present case, since the Court has decided to examine of its own motion the plea alleging breach of the scope of the law, it invited the parties, at the hearing and by means of a question for written reply asked in connection with a measure of organisation of procedure, to submit their observations in that regard. In particular, the parties were invited to present their views as to whether the Board of Appeal was under an obligation to examine whether the mark applied for met the graphic representation requirement under Article 4 of Regulation No 207/2009 and whether, as a result, that mark was liable to be caught by the absolute ground for refusal set out in Article 7(1)(a) of that regulation, particularly with regard to the case-law stemming from the judgment of 6 October 2021, M/S. Indeutsch International v EUIPO – 135 Kirkstall (Representation of chevrons between two parallel lines) (T‑124/20, not published, EU:T:2021:668). In addition, the parties were asked to clarify whether, in their view, Article 7(1)(b) of Regulation No 207/2009 was applicable in the circumstances of the present case.
30
In response to that question, the applicant submits that the Board of Appeal should have examined whether the sign at issue meets the requirements of Article 7(1)(a) of Regulation No 207/2009 and, in particular, whether it meets the graphic representation requirement laid down in Article 4 of that regulation, before examining the sign in the light of the requirements of Article 7(1)(b) of that regulation. Such an obligation results from a literal, teleological and systematic interpretation of the provisions in question, as well as of the case-law stemming from the judgment of 6 October 2021, Representation of chevrons between two parallel lines (T‑124/20, not published, EU:T:2021:668). According to the applicant, the approach taken by the Board of Appeal in the contested decision constitutes an infringement of the provisions of Regulation No 207/2009, in particular Article 71(1) of that regulation, read in conjunction with Article 7(1)(a) and the first sentence of Article 94(1) thereof. The applicant submits that the Court must examine those infringements of its own motion.
31
EUIPO contends that the conditions for the Court raising of its own motion the plea alleging breach of the scope of the law are not met in the present case. More specifically, EUIPO asserts that the Board of Appeal was entitled to dismiss the appeal by examining the sign in respect of which registration was sought solely in the light of Article 7(1)(b) of Regulation No 207/2009, considering, consequently, in paragraph 58 of the contested decision, that the issue of whether Article 4 and Article 7(1)(a) of that regulation were applicable was, in the present case, irrelevant. According to EUIPO, first, the rejection of an application for registration may be based on only one of the absolute grounds for refusal, since none of those grounds takes precedence over another, and, second, the examination carried out by the Board of Appeal pursuant to Article 7(1)(b) of Regulation No 207/2009 was as comprehensive as possible. Furthermore, EUIPO contends that the principle developed by the Court in its judgment of 6 October 2021, Representation of chevrons between two parallel lines (T‑124/20, not published, EU:T:2021:668), is not transferable to the present dispute.
32
In that regard, it should be noted that, under Article 4 of Regulation No 207/2009, in the version applicable rationae temporis (see paragraph 16 above), an EU trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
33
Pursuant to Article 7 of Regulation No 207/2009:
‘1.   The following shall not be registered:
(a)
signs which do not conform to the requirements of Article 4;
(b)
trade marks which are devoid of any distinctive character;
…
3.   Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.’
34
It follows from Article 4 of Regulation No 207/2009 that a sign may constitute an EU trade mark if it meets the conditions set out in that provision, including that of being capable of being represented graphically. Since the function of the graphic representation is, in particular, to define the mark in order to determine the precise subject of the protection afforded by the registered mark to its proprietor, it must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (judgments of 12 December 2002, Sieckmann, C‑273/00, EU:C:2002:748, paragraphs 48 and 55, and of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 44; see also, to that effect, judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 36 and the case-law cited).
35
Thus, pursuant to Article 7(1)(b) of Regulation No 207/2009, ‘trade marks’ which are devoid of any distinctive character are not to be registered.
36
It follows that the distinctive character of a sign can be assessed, for the purposes of its registration as an EU trade mark, only once it has been found that it constitutes a trade mark within the meaning of Article 4 of Regulation No 207/2009, that is to say, from the time when it has been found that it is capable of being represented graphically within the meaning set out in paragraph 34 above (judgment of 6 October 2021, Representation of chevrons between two parallel lines, T‑124/20, not published, EU:T:2021:668, paragraph 46), which is accepted, in essence, by EUIPO.
37
Consequently, as asserted by EUIPO, it is sufficient that one of the grounds for refusal applies to refuse registration of a mark (judgment of 19 September 2002, DKV v OHIM, C‑104/00 P, EU:C:2002:506, paragraph 28). However, as shown in paragraph 36 above, the examination of the ground for invalidity alleging lack of distinctive character, as carried out in the present case by the Board of Appeal, presupposes that the mark at issue satisfies the conditions laid down in Article 4 of Regulation No 207/2009 (see, to that effect, judgment of 6 October 2021, Representation of chevrons between two parallel lines, T‑124/20, not published, EU:T:2021:668, paragraph 56).
38
In the present case, it follows from paragraph 58 of the contested decision (see paragraph 22 above) that the Board of Appeal did not examine whether the sign in respect of which registration was sought was capable of constituting a trade mark, in so far as it considered that such examination was irrelevant in the light of its finding that the sign was devoid of distinctive character. Thus, in contrast to what follows from the considerations set out in paragraph 36 above, relating to the rules regarding the examination of applications for registration in the light of the absolute grounds for refusal set out in Article 7(1) of Regulation No 207/2009, the Board of Appeal proceeded with the examination of the distinctive character of that sign without having first examined whether it was capable of constituting a trade mark.
39
While accepting that, ‘in principle’, the examination of the distinctive character of a trade mark presupposes that it meets the conditions arising from Article 4 and Article 7(1)(a) of Regulation No 207/2009, EUIPO maintains that, in the present case, the Board of Appeal did not err in not following that approach, since it had examined the application of Article 7(1)(b) of Regulation No 207/2009 in the most comprehensive manner possible, namely, in view of ‘all protected subject matter and forms of trade marks that the sign [at issue] could hypothetically cover’, and thus examined the appeal in a way that was favourable to the applicant. According to EUIPO, the Board of Appeal examined the sign, first, on the basis of its graphic representation and the part of the description corresponding thereto and, second, by taking into account the description that did not correspond to that representation, specifically in so far as the tactile impression was described.
40
In that regard, it should be noted that, even assuming that the Board of Appeal did in fact examine the possible distinctive character of the various hypothetical forms that the sign in respect of which registration was sought could take, which is not, however, clear from the contested decision, such an examination cannot justify the Board of Appeal’s failure to comply with the obligations relating to the examination of absolute grounds for refusal which were incumbent upon it under Regulation No 207/2009.
41
Moreover, it should be noted that, in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered (see judgment of 25 October 2007, Develey v OHIM, C‑238/06 P, EU:C:2007:635, paragraph 82 and the case-law cited).
42
In the present case, according to the application for registration, protection is claimed both for an element of the structure of the flow regulators and for the tactile aspect of the sign at issue (see paragraph 3 above). It follows that, in any event, the Board of Appeal was not entitled to examine the distinctive character of that sign by selectively taking into account certain aspects of the sign, in particular by excluding its tactile aspect. Furthermore, the argument, put forward by EUIPO at the hearing, that the Board of Appeal considered that the tactile impression of the sign in respect of which registration was sought did not correspond to its graphic representation but resulted solely from its description, falls within the scope of the examination of the application of Article 4 and Article 7(1)(a) of Regulation No 207/2009.
43
EUIPO’s argument therefore cannot succeed.
44
EUIPO also maintains that the considerations set out in paragraph 36 above, developed by the Court in its judgment of 6 October 2021, Representation of chevrons between two parallel lines (T‑124/20, not published, EU:T:2021:668), relate to annulment proceedings and cannot apply in the present case. That argument is unfounded. Contrary to what EUIPO appears to maintain, the examination of the existence of absolute grounds for refusal of a registration cannot be conducted in accordance with principles other than those applicable to the examination of the existence of those grounds where they are claimed, as in the case that gave rise to that judgment in question, in support of an action for annulment.
45
Furthermore, EUIPO’s argument based on the fact that, in contrast to the case that gave rise to the judgment of 6 October 2021, Representation of chevrons between two parallel lines (T‑124/20, not published, EU:T:2021:668), the distinctive character acquired through the use of the sign in respect of which registration was sought was not at issue in the present case cannot succeed either. The considerations set out in paragraph 36 above are particularly relevant where an applicant for registration relies on the distinctive character acquired through use of the mark concerned, since, in accordance with Article 7(3) of Regulation No 207/2009, distinctive character acquired through use, assuming it is established, renders the absolute ground for refusal referred to in Article 7(1)(b) of that regulation inapplicable. However, the interest underlying those considerations is not limited to such circumstances. It is also necessary to define the subject of the protection conferred by the registration of a sign as an EU trade mark, within the meaning of Article 4 of Regulation No 207/2009 (see paragraph 34 above), before proceeding with the examination of the inherent distinctive character thereof, as follows from paragraph 36 above.
46
In addition, it should be noted that, in the present case, the Board of Appeal examined, for the sake of completeness, in paragraphs 51 to 54 of the contested decision, whether the mark applied for had acquired distinctive character through use within the meaning of Article 7(3) of Regulation No 207/2009. However, such examination is not possible if the sign at issue is not capable of being represented graphically within the meaning of Article 4 of that regulation and must, consequently, be refused registration in accordance with Article 7(1)(a) of that regulation (see, to that effect, judgment of 6 October 2021, Representation of chevrons between two parallel lines, T‑124/20, not published, EU:T:2021:668, paragraph 47).
47
It follows from the foregoing that the interpretation of the relevant legal rules, and in particular of the issue of whether the sign in respect of which registration as an EU trade mark was sought meets the conditions laid down in Article 4 of Regulation No 207/2009, including that of being capable of being represented graphically, and whether it is therefore capable of constituting a trade mark, is a preliminary issue in the present case, the resolution of which is necessary in order to proceed to the examination of the pleas in law alleging infringement of Article 7(1)(b) and Article 95(1) of Regulation No 207/2009.
48
Consequently, the Court would be neglecting its function as the arbiter of legality if, first, it failed to make a finding, even in the absence of a challenge by the parties on that point, that the contested decision had been adopted on the basis of a rule, namely Article 7(1)(b) of Regulation No 207/2009, that could prove to be inapplicable to the present case in the event that the sign in respect of which registration was sought is not a sign of which a trade mark may consist within the meaning of Article 4 of that regulation, an aspect which was not examined by the Board of Appeal, and, secondly, if it was led to adjudicate on the dispute before it by applying that rule itself.
49
The Court must therefore raise of its own motion the plea alleging breach of the scope of the law.
Merits of the plea in law alleging breach of the scope of the law
50
As follows from paragraphs 36 and 47 above, in order to determine whether Article 7(1)(b) of Regulation No 207/2009 was applicable in the present case for the purpose of examining the application for registration, the Court must examine whether the sign in respect of which registration was sought meets the conditions for registration set out in Article 4 of that regulation, specifically whether it is capable of being represented graphically, within the meaning set out in paragraph 34 above.
51
The applicant maintains that the graphic representation of the sign in respect of which registration as an EU trade mark was sought, together with its description, especially with regard to the elasticity and flexibility of the slats composing it when pressed with a finger against or alongside the base, is sufficient to represent that sign, including the tactile impression it produces. It also referred to its observations set out in its written statement, dated 22 January 2020, setting out the grounds of its appeal before the Board of Appeal (see paragraph 21 above).
52
EUIPO asserts that the tactile impression produced by the sign in respect of which registration was sought is shown not by its graphic representation, but solely by the description accompanying that representation. According to EUIPO, that description cannot be taken into consideration, pursuant to Article 3(2) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001 and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), since it extends the scope of the protection claimed as shown by the graphic representation of the sign.
53
As a preliminary point, it should be noted that Article 3 of Implementing Regulation 2018/626 is included in Title II thereof. However, while that regulation was in force at the time the contested decision was adopted, Article 39(2)(a) thereof establishes that the aforementioned Title II is not applicable to applications for an EU trade mark submitted prior to 1 October 2017. Thus, in contrast to what EUIPO’s arguments presuppose, that regulation is not applicable in the present case, since the application for registration of the trade mark at issue was filed on 1 September 2016. Furthermore, under the transitional measures laid down in Article 37 of Implementing Regulation 2018/626, the provisions of Regulation No 2868/95 remain applicable to ongoing proceedings until their completion, in cases in which the aforementioned implementing regulation is not applicable.
54
Next, it should be noted that, according to the application for registration of the trade mark at issue, protection is claimed both for the structure of the flow regulators and for the tactile aspect of the sign. Furthermore, in response to an oral question from the Court, the applicant confirmed at the hearing that both aspects of that mark, namely the fact that it is a position mark and its tactile aspect, were of equal importance for the purposes of its application for registration thereof and that the combination of those elements should therefore be decisive for that purpose.
55
Thus, as regards the issue of whether the sign in respect of which registration was sought meets the conditions for registration laid down in Article 4 of Regulation No 207/2009, it is important to note that the structure of that sign, which is laid out at the end of a cylindrical sanitary insert, in so far as it is composed of circular and concentric slats a few millimetres in height covering the entire surface of the end, is indeed capable of being represented graphically, as can be seen from the representation reproduced in paragraph 2 above. By contrast, that is not the case, as EUIPO acknowledges (see paragraphs 39 and 52 above), with regard to the tactile impression produced by that structure, in respect of the flexible nature of the slats, which could be bent by pressing a finger against or alongside the base. As noted in paragraph 34 above, a sign may constitute an EU trade mark if it meets the conditions set out in that provision, including that of being capable of being represented graphically, while that graphic representation must also be clear, precise, self-contained, easily accessible, intelligible, durable and objective.
56
Rule 3(3) of Regulation No 2868/95 establishes that an application for registration ‘may contain a description of the mark’. Therefore, as maintained, in essence, by the applicant (see paragraph 51 above), if a description is included in the application for registration, that description must be considered together with the graphic representation (see judgment of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes), T‑307/17, EU:T:2019:427, paragraph 31 and the case-law cited). However, it follows from case-law that, where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation of a trade mark or give rise to doubts as to the subject matter and scope of that graphic representation (see judgment of 29 July 2019, Red Bull v EUIPO, C‑124/18 P, EU:C:2019:641, paragraph 37 and the case-law cited).
57
However, in the present case, the tactile impression produced by the sign in respect of which registration was sought is not shown in a precise and self-contained manner by the graphic representation of that sign, but, at best, by the accompanying description. Consequently, that description does not precisely reflect the graphic representation of that sign within the meaning of the case-law cited in paragraph 56 above but, on the contrary, it may give rise to doubts as to the subject matter and scope of that graphic representation, in so far as it attempts to broaden the subject matter of the protection sought, as is argued, in essence, by EUIPO.
58
It follows from the foregoing that the sign in respect of which registration was sought does not meet the conditions set out in Article 4 of Regulation No 207/2009 and, consequently, is caught by the absolute ground for refusal set out in Article 7(1)(a) of that regulation.
59
That finding remains without prejudice to the interpretation and application of Article 4 and Article 7(1)(a) of Regulation 2017/1001 in cases falling within the scope ratione temporis of that regulation.
60
Accordingly, as follows from paragraphs 36 and 37 above, Article 7(1)(b) of Regulation No 207/2009 was not applicable to the assessment of the application for registration of the sign at issue as an EU trade mark. Consequently, the Board of Appeal could not lawfully apply that provision in order to adopt the decision rejecting the appeal against the examiner’s decision refusing to register that sign.
61
It must therefore be held that the contested decision was adopted in breach of the scope of the law and must therefore be annulled, without there being any need to examine the admissibility of the samples produced by the applicant with its letter lodged at the Registry of the General Court on 15 April 2022.
Costs
62
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Tenth Chamber, Extended Composition)
hereby:
1.
Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 June 2021 (Case R 2327/2019-5);
2.
Orders EUIPO to pay the costs.
Kornezov
Buttigieg
Kowalik-Bańczyk
Hesse
Petrlík
Delivered in open court in Luxembourg on 7 December 2022.
[Signatures]
(
*1
)	Language of the case: German