EUROPEAN UNION: No Monkey Business as CJEU Confirms Opponent’s Trademarks Must Be Valid at the Date of the Opposition Decision

In European Union Intellectual Property Office (EUIPO) v. Nowhere (C-337/22), the Court of Justice of the European Union (CJEU) confirmed that the rights on which an opposition is based must be valid on the date of the opposition decision.

The applicant, Mr. Ye, applied to register the figurative mark shown below in Classes 3, 9, 14, 18, 25, and 35.

Nowhere Co. Ltd. opposed the application under Article 8(4) of Regulation No. 207/2009, relying on its three earlier non-registered figurative trademarks (shown below) used in the course of trade in the United Kingdom.

The Opposition Division rejected the opposition, a decision that the Second Board of Appeal (BoA) upheld. The BoA reasoned that after the UK’s withdrawal from the EU (Brexit) and expiry of the transition period in the Withdrawal Agreement, rights that might exist in the UK no longer constituted a basis for opposition proceedings in the European Union. As a result, Nowhere could no longer rely on its UK unregistered trademarks.

On appeal, the General Court (GC) disagreed and held that rights underpinning an opposition need only exist on the date of filing of the application for registration of the contested trademark.

The CJEU has now overturned the GC’s decision.

The CJEU held that the acquisition of the earlier right must predate the filing or priority date of the contested trademark, but it was not sufficient that the earlier right existed only at that point in time; it must continue to exist and to confer a right to prohibit the use of a subsequent trademark until the date of the EUIPO’s final decision on the opposition, including any appeal. This interpretation follows from the wording of Article 8(4) and established case law requiring the EUIPO to verify the continued existence and enforceability of the earlier right when ruling on the opposition.

The CJEU explained that this interpretation was also consistent with the objective of opposition proceedings, which is to prevent the registration of any EU Trade Mark (EUTM) that would conflict with other valid and enforceable rights. However, where an earlier right had ceased to be protected, its essential function could no longer be compromised by registration of the later mark.

The CJEU confirmed that Article 8(4) requires that the earlier trademark right relied upon must, under the law of a member state, confer on its proprietor the right to prohibit the use of a subsequent trademark. However, once the transition period had ended, and in the absence of any contrary provision in the Withdrawal Agreement, UK law—relied upon by Nowhere in support of its opposition—could no longer be regarded as the law of a member state.

As well as this, since an EUTM registered after the transition period no longer had effect in the UK, it could not conflict with UK-only rights. The CJEU confirmed that the Withdrawal Agreement did not derogate from the principle of territoriality.

This decision applies to any loss of earlier rights, not only as a result of Brexit. Many trademark practitioners will view it as a victory for common sense.

Editor’s Note: INTA has filed an amicus brief in this case. INTA’s position was in agreement with the CJEU, that where the opponent or cancellation applicant’s right relied upon has, for any reason, ceased to exist at the time a decision is taken, it should then follow that the applicant no longer has a legal interest in bringing proceedings, and the opposition/cancellation proceedings should fail.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA, except where it has taken an official position.

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