The Normal Courtroom just lately determined the case Nowhere v EUIPO (Case T-281/21) and overturned the EUIPO determination (and common place) on the validity of UK earlier rights within the context of EU oppositions post-Brexit.
The EUIPO Communication No 2/20 made clear that the EUIPO will deal with all UK rights to stop to be ‘earlier rights’ for the needs of interpartes proceedings. Nevertheless, the Normal Courtroom held that the EUIPO Second Board of Attraction made an error in rejecting an opposition solely as a result of UK earlier rights dropping validity within the EU post-Brexit and that the related date to evaluate the validity of UK earlier rights needs to be the submitting date of the opposed utility.
Background
On 30 June 2015, Mr Junguo Ye filed an EU utility for registration of the beneath figurative mark in courses 3, 9, 14, 18, 25 and 35 (the Utility). Nowhere Co. Ltd filed an opposition primarily based on the passing off of three non-registered figurative commerce marks used in the midst of commerce within the UK (the UK Earlier Rights). Though the choice isn’t on the benefit of this case, the similarity between the marks might clarify why the opponent defended this opposition fairly aggressively.
In 2017, the EUIPO rejected the opposition and the choice was upheld by the Second Board of Attraction on the bottom that the withdrawal of the UK from the EU and the expiry of the transitional interval on 31 December 2020 meant that the applicant might now not depend on UK Earlier Rights in oppositions earlier than the EUIPO.
The Normal Courtroom annulled the choice of the EUIPO on the grounds that, within the silence of the withdrawal settlement on this level, the submitting date of the Utility, specifically 30 June 2015, is decisive for the needs of figuring out the relevant regulation (as beforehand held in Inditex v EUIPO and Bauer Radio v EUIPO). Due to this fact, the truth that the UK Earlier Rights misplaced their standing of a commerce mark legitimate in a EU Member State after the submitting date is irrelevant to the result of the opposition, because the reputable curiosity in opposing the Utility stays with regard to the interval between the submitting date and the tip of the transition interval (ie a interval of over 5 years between 30 June 2015 and 31 December 2020), which can be related for enforcement functions.
The case might now both return to the EUIPO for a call on the benefit or be introduced earlier than the EU Courtroom of Justice for a call on this level of regulation.
Conclusions
Relying on the ultimate consequence, this determination might have a substantial influence on stay oppositions and invalidity actions filed earlier than the EUIPO by UK proper holders, because it alludes that the EUIPO might have wrongly disregarded UK earlier rights.
Though EU functions filed earlier than 30 December 2020 are now not open for opposition, proper holders mustn’t dismiss the potential of UK earlier rights getting used as a base for invalidation of EU marks. Nevertheless, it’s value noting {that a} profitable opposition or invalidation motion primarily based on UK earlier rights might have a restricted sensible relevance, contemplating {that a} new utility for a similar mark can’t be opposed or invalidated primarily based on the identical UK earlier rights.
Apart from Brexit, the identical strategy appears to use to all relative grounds for refusal, which needs to be assessed on the time of submitting the appliance relatively than on the time of the choice. Which means that any subsequent occasion affecting the sooner rights shouldn’t be considered. The query stays open as as to if or not a reputable curiosity in pursuing the case remains to be required.
By Serena Totino and Ryan Mullen
