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General Court rules UK trade marks must be considered in EUTM oppositions filed before Brexit

Jude Antony


United Kingdom

We are now aware that the General Court ruling in Nowhere v EUIPO (T-281/21) has been appealed to the Court of Justice of the European Union so we have re-visited the decision from earlier this year.

The General Court ruled that United Kingdom national rights must be taken into account in trade mark oppositions filed prior to the end of the Brexit transition period on 31 December 2020. This decision was contrary to the EUIPO's established practice, which had been to disregard UK rights in decisions handed down after the end of the transition period.

The case concerned an EUTM application filed by Mr Junguo Ye for the mark  on 30 June 2015. The application was opposed by Japanese company Nowhere Co. Ltd, owner of the Bathing Ape brand, based on unregistered UK rights in the following marks: , and .
In line with the EUIPO's practice, the initial Opposition Board decision and the contested Board of Appeal decision had both held that after the withdrawal of the UK from the EU and expiry of the transition period, the opponent could no longer rely on the rules governing common law actions for passing off under the law of the UK for the purposes of Article 8(4) of Regulation No 207/2009 (opposition to an EUTM based on unregistered IP rights in am EU member state).
The decision was annulled by the General Court on the basis that “the existence of a relative ground for refusal must be assessed as at the time of filing of the application for registration of an EU trade mark against which an opposition has been brought”. The General Court went on to say that “the fact that the earlier trade mark could lose the status of a trade mark registered in a Member State at a time after that of the filing of the application for registration of the EU trade mark, in particular following the possible withdrawal of the Member State concerned from the European Union, is in principle irrelevant to the outcome of the opposition” (Paras 28-30).
The decision has important implications in that it establishes that UK rights, registered or unregistered, should still be relevant in EUIPO oppositions filed before the end of the transition period, although an ever decreasing number of cases will be impacted.  Interestingly, the core of the decision at paragraphs 28-30 as quoted above is drawn from a case decided in 2020 (Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 19) and thus should be well established, but the EUIPO has seemingly been reluctant to accept the earlier ruling.
As mentioned above, the decision has been appealed to the Court of Justice of the European Union so watch this space for further developments.

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