About the authors:
Robert Cumming: Robert is a partner, dual-qualified trade mark attorney and solicitor, and manages large international portfolios and complex multi-jurisdictional disputes for market-leading businesses.
Robert’s expertise lies in the strategic positioning of a brand. His experience managing international trade mark portfolios and complex cross-border litigation, complements his background working on large corporate transactions.
Jennifer Thomas: Jennifer is a senior IP paralegal at Appleyard Lees, working in the trade mark team in Leeds with a wide variety of clients. She enjoys learning about key precedent changes and how they can affect the future for trade mark owners and practitioners alike.
UK trade mark rights can still be used to challenge European Union Intellectual Property Office (EUIPO) trade mark applications, the General Court has ruled. This is contrary to EUIPO practice.
Just as clarity dawned on the horizon of the post-Brexit trade mark landscape, a ruling against the EUIPO has once again cast a shadow. In the light of this latest judgment in Nowhere v EUIPO, brand owners should consider again whether their UK and EU trade mark strategies are appropriate.
Gone… but not forgotten?
In the context of trade mark rights, Brexit occurred at midnight Central European Time on 31 December 2020. After that date, the UK was no longer part of the European Union (EU).
Prior to Brexit, earlier trade mark rights acquired in the UK were a valid ground upon which to oppose EU trade mark applications. Post-Brexit, the EUIPO takes the view that this should no longer be the case. The EUIPO’s position is that UK rights would be treated as if they never existed even if they were a valid basis for opposition at the time of the EUIPO application.
This is important because EUIPO practice is to evaluate the “presence of a conflict at the time when the decision is taken”, rather than at the filing or priority date (as in the UK).
As a consequence, the EUIPO will not recognise UK rights which were valid grounds for opposition at the time when the proceedings were filed. The adoption of this ex tunc approach appears to be a denial that UK rights were ever a valid basis for opposition. The alternative and superior view held by the General Court is that the owners of trade marks had a legitimate reason to expect that their rights would be respected up until Brexit.
The key question to be answered on appeal by the European Court of Justice is ‘when is the relevant date to assess whether there are grounds for opposition’. This, naturally, also has implications for invalidity and infringement proceedings.
On 30 June 2015, Mr Junguo Ye filed an application to register the below EU trade mark in classes 3, 9, 14, 18, 25 and 35 at the EUIPO:
Nowhere Co. Ltd (Nowhere) opposed the mark, under Article 8(4) of Regulation 2017/1001, based on UK unregistered rights in passing off acquired through use of the following three signs:
The case finally reached the EUIPO Board of Appeal for a decision on 10 February 2021, at which point the UK had left the European Union. The appeal was dismissed on the ground that the earlier rights must exist not only on the filing date but also on the date of the decision. In this case, because the UK rights were no longer earlier EU rights, it held that there was no valid ground for opposition.
Nowhere appealed to the General Court, which held that:
- It is clear from settled caselaw that the decisive date as to the applicable law is the filing date of the EU application
- The later fate of an earlier UK trade mark is irrelevant to the outcome of the opposition
- UK earlier rights prior to 31 December 2020 are valid grounds to oppose EU applications
Interestingly, the General Court comprehensively rebuked EUIPO’s myriad arguments. Indeed, it held at paragraph 42:
It is difficult to comprehend why the applicant’s earlier non-registered trade marks used in the course of trade in the United Kingdom would have to be denied protection… during that period
The General Court annulled the EUIPO’s decision and ordered the EUIPO to pay costs. The EUIPO has appealed to the European Court of Justice which will have the final say.
As Brexit fades into history, there is a flickering glimmer of hope that brand owners’ rights, accrued during the UK’s membership of the European Union, will still be recognised rather than simply ignored.
Trade mark owners should review whether this decision affects their portfolio and contentious brand strategy in the EU.
If you have any queries in relation to this article, or would like us to review your opposition and invalidity strategies in view of this judgment, please get in touch with one of our attorneys from the trade marks/disputes team.
 European Union Intellectual Property Office (EUIPO) Communication No 2/20
 EUIPO Guidelines, 2022 edition, 6.3.2
 Nowhere Co., Ltd v Junguo Ye R 2474/2017 paragraph 24
 EUIPO v Nowhere, Case number C-337/22