Does Brexit Always Mean Brexit?

The General Court recently decided the case Nowhere v EUIPO (Case T-281/21) and overturned the EUIPO decision (and general position) on the validity of UK earlier rights in the context of EU oppositions post-Brexit.

The EUIPO Communication No 2/20 made clear that the EUIPO will treat all UK rights to cease to be ‘earlier rights’ for the purposes of inter partes proceedings. However, the General Court held that the EUIPO Second Board of Appeal made an error in rejecting an opposition solely due to the UK earlier rights losing validity in the EU post-Brexit and that the relevant date to assess the validity of UK earlier rights should be the filing date of the opposed application.

On 30 June 2015, Mr Junguo Ye filed an EU application for registration of the below figurative mark in classes 3, 9, 14, 18, 25 and 35 (the Application). Nowhere Co. Ltd filed an opposition based on the passing off of three non-registered figurative trade marks used in the course of trade in the UK (the UK Earlier Rights). Although the decision is not on the merit of this case, the similarity between the marks may explain why the opponent defended this opposition quite aggressively.

In 2017, the EUIPO rejected the opposition and the decision was upheld by the Second Board of Appeal on the ground that the withdrawal of the UK from the EU and the expiry of the transitional period on 31 December 2020 meant that the applicant could no longer rely on UK Earlier Rights in oppositions before the EUIPO.

The General Court annulled the decision of the EUIPO on the grounds that, in the silence of the withdrawal agreement on this point, the filing date of the Application, namely 30 June 2015, is decisive for the purposes of identifying the applicable law (as previously held in Inditex v EUIPO and Bauer Radio v EUIPO). Therefore, the fact that the UK Earlier Rights lost their status of a trade mark valid in a EU Member State after the filing date is irrelevant to the outcome of the opposition, as the legitimate interest in opposing the Application remains with regard to the period between the filing date and the end of the transition period (i.e. a period of over 5 years between 30 June 2015 and 31 December 2020), which may be relevant for enforcement purposes.

The case may now either go back to the EUIPO for a decision on the merit or be brought before the EU Court of Justice for a decision on this point of law.

Depending on the final outcome, this decision may have a considerable impact on live oppositions and invalidity actions filed before the EUIPO by UK right holders, as it alludes that the EUIPO may have wrongly disregarded UK earlier rights.

Although EU applications filed before 30 December 2020 are no longer open for opposition, right holders should not dismiss the possibility of UK earlier rights being used as a base for invalidation of EU marks. However, it is worth noting that a successful opposition or invalidation action based on UK earlier rights may have a limited practical relevance, considering that a new application for the same mark cannot be opposed or invalidated based on the same UK earlier rights.

Aside from Brexit, the same approach seems to apply to all relative grounds for refusal, which should be assessed at the time of filing the application rather than at the time of the decision. This means that any subsequent event affecting the earlier rights should not be taken into consideration. The question remains open as to whether or not a legitimate interest in pursuing the case is still required.

By Serena Totino and Ryan Mullen

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