Counted out on clarity

27th Jun 2022

Emilia Petrossian sets out why this Appellant failed to make a dent in the existing decision

C-672/21 P, Eos Products Sàrl v EUIPO, CJEU, 4th February 2022

Key points

  • CJEU appeals must follow the rules under Article 58a(3) of the Statute of the CJEU 
  •  New claims and/or evidence cannot be brought in at appeal. They should be presented during administrative proceedings
  • The role of the courts of appeal is to assess the legality of a decision
  • Appeals must be clear and to the point, pointing to errors of law and potential effects on EU law, supported by evidence and with reference to previous decisions
The Appelant's 3D mark

On 9th November 2021, Eos Products Sàrl (the Appellant) filed an appeal in the European Court of Justice (ECJ) against a Court of First Instance (CFI) decision from 8th September 2021 and requested annulment of the judgment.

The appeal was dismissed as the Appellant did not comply with the requirements of appeal procedure and did not state correct reasons for appeal. 

In order to understand the Appellant’s reasons for appeal at the ECJ, and its subsequent failures, it is first important to consider the events leading up to the appeal. 


  • 6th October 2016: the Appellant applied to register a 3D mark (shown overleaf) in classes 3, 5 and 21.
  • 17th October 2016: the application was objected on the grounds of Article 7(1)(b) EUTMR, the objection stating that: “the three‑dimensional mark applied for constituted the appearance of the product itself or its packaging, and did not depart significantly from other shapes of packaging that are customary on the market.” The Appellant maintained its claim of distinctiveness and filed supporting documents. The application was subsequently accepted and published.
  • 23rd April 2018: a third party filed observations that the mark lacked distinctive character and claimed that at the time of the application there were already numerous round and oval shapes available for goods in class 3 and therefore the sign did not differ from the norm.
  • 8th October 2018: the Examiner once again objected to the application on the basis of Article 7(1)(b), claiming the mark was non-distinctive and the sign did not deviate from the usual forms of packaging for lip balm. The Appellant again maintained its position and submitted further evidence and claimed acquired distinctiveness of the mark through use. 
  • 18th July 2019: the Examiner held that the Appellant had not provided sufficient proof of distinctiveness, as the evidence provided was only in relation to use in five out of the then 28 EU Member States, relating mainly to the German market. The application was subsequently rejected. The Appellant filed an appeal against the Examiner’s refusal, requesting the decision to be annulled. 
  • 8th June 2020: the Board of Appeal (BoA) issued a decision dismissing the appeal. The BoA agreed with the Examiner’s findings that the mark was devoid of distinctive character and that the Appellant did not prove acquired distinctiveness through use, as it must be proved in relation to all claimed parts of the EU. The BoA held that the intensity of advertising expenditure is irrelevant in relation to an assessment of the distinctiveness of the mark. The Appellant did not raise any objections to the decision that class 21 does not depart significantly from the customary range of shapes for cosmetic containers. The Appellant appealed against the BoA’s decision and requested a limitation of class 21.
  • 8 September 2021: the CFI dismissed the action and gave a number of reasons:

(1) The Appellant’s attempt to limit class 21 during the CFI hearing was rejected on the basis that such a limitation at that stage would alter the subject matter of dispute.

(2) The fact that the Appellant is the only one to produce spherical or ovate packaging does not necessarily prove distinctive character, nor does it evidence reputation. The features of the form – such as a flattened underside, a horizontal line and a dent – provide functional features. Novelty or originality are not relevant in the assessment of the distinctive character of a trade mark.

(3) In relation to concrete examples, the BoA is not required to provide examples. 

(4) The shape of the mark did not differ from other storage containers, dosing dispensers and appliances for applying cosmetics such as cream rouge or skin cream.

(5) The relevant public with at least an average level of attention will not perceive the form of the mark as an indication of the commercial origin of the goods. In accordance with the regulations: “a trade mark may be registered only on the basis and within limits of the application filed, and not in relation to evidence provided by the Appellant in the form of press or internet comments”.

(6) Search results provided to reflect the market conditions were irrelevant. The CFI’s role is to review the legality of the BoA’s decision and not to review the facts submitted to for the first time. 

(7) The BoA was not bound by the decisions of the German courts, on which the Appellant was relying, as the EU rules state that the decision must be assessed solely on the Regulations.

(8) Finally, the CFI rejected the Appellant’s claim that the BoA did not take into account evidence provided; the BoA considered the evidence but came to the conclusion that the mark was non-distinctive. 

The Appellant did not decide to contest the decision in relation to the findings that the mark had not acquired distinctive character through use. 

  • 9th November 2021: the Appellant brought an appeal against the CFI’s decision of 8th September 2021, requesting annulment of the decision. 


The appeal was not allowed. The Appellant in its application for appeal had failed to follow form of order and raise questions of importance for the unity, coherence or development of EU law, which are requirements under Article 58a(3) of the Statute of the CJEU.

It further failed to provide all the information necessary for the Court to rule on that application. 

The ECJ stated that: “an application for leave to appeal must, in any event, clearly and precisely state the grounds on which the appeal is based, identify equally precisely and unambiguously the point of law raised by each ground of appeal, explain whether that question is relevant to the unity, coherence or development of EU law and, more specifically, explain why that question is relevant in the light of the criterion relied on. 

“As regards, in particular, the grounds of appeal, the application for leave to appeal must contain details of the provision of EU law or case law allegedly infringed by the judgment under appeal or by the decision challenged.

"An appeal must set out in summary form the existence of the error of law allegedly committed by the General Court and point out the extent to which that error affected the outcome of the judgment or decision under appeal. 

“If the alleged error of law is the result of a failure to recognise the case law, the application for leave to appeal must set out in a concise but clear and precise manner, first, where the alleged contradiction is to be found, indicating both the paragraphs of the judgment or decision challenged by the appeal, which the appellant calls into question, and the paragraphs of the decision of the Court of Justice or the Court of First Instance; which are alleged to have been disregarded and, second, the specific reasons why such a contradiction raises a question of importance for the unity, coherence or development of EU law.” 

CFI criticism

In its application, the Appellant firstly criticised the judgment under appeal, which did not provide clarity and legal certainty as to what requirements are to be met for registration of a 3D mark in the EU and how they differ from standards or industry practices because of unusual visual effects.

The Appellant claimed that this raises important questions about how an applicant can prove that such mark can fulfil its essential function (indication of origin). 

The Appellant also criticised the CFI for stating that the evidence filed in support of the distinctive character of the mark applied for was inappropriate, and further for applying the law in error as regards the requirements for proving the distinctive character of a 3D trade mark, which is contrary to the uniform and consistent application of trade mark law in the EU and leads to considerable uncertainty in trade mark practice. 

However, the ECJ held that the Appellant did not satisfy the requirements of leave for appeal but merely submitted more generally that the judgment of the CFI gave rise to a lack of legal certainty.

The Appellant did not clearly refer to points of law relevant to the unity, coherence or development of EU law or why those questions are intended to be relevant. 

Further, the Appellant did not identify paragraphs of the judgment of the CFI, nor explain the nature of the error of law committed by the CFI in relation to its assessment of a 3D mark. Finally, the Appellant did not identify errors made by the CFI in relation to assessment of the evidence. 

Note: This report is based on translations of documents in French and German.

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Emilia Petrossian is a Chartered Trade Mark Attorney at Wedlake Bell LLP

[email protected]