On Thursday 26 February, the Court of Justice of the EU stated, in a press release referring to a judgment of 5 February (C-337/22 P), that the European Union Intellectual Property Office (EUIPO) can no longer invoke ‘pre-Brexit’ rights after the transition period (which ended at the end of 2020).
An application to register a figurative European Union trade mark for various goods, particularly in the clothing sector, was filed in 2015 (a monkey with the wording APE TEES), explains the Court in a press release.
However, this application was opposed in 2016 by Nowhere Co. Ltd, established in Japan, based on several unregistered figurative signs (three identical monkeys in various postures) used in the course of business in the United Kingdom and protected under UK law.
The opposition was based on the existence of unregistered prior rights, a ground for refusal provided for in EU law.
The EUIPO’s Board of Appeal rejected this opposition request, taking the view that, following the withdrawal of the United Kingdom and the expiry of the transitional period on 31 December 2020, any rights that might exist in the United Kingdom no longer constituted a basis for opposition proceedings.
However, the General Court of the European Union annulled this decision on the basis that the EU trade mark application had been filed before the withdrawal of the United Kingdom and before the expiry of this transitional period, ruling that the earlier rights invoked in the United Kingdom could still be taken into consideration, even if the EUIPO ruled after that date. The EUIPO in turn lodged an appeal.
In its judgment, the Court of Justice set aside the judgment of the General Court and confirmed the EUIPO’s decision. It specifies that at the end of the transition period following the United Kingdom’s withdrawal from the Union, rights based exclusively on UK law no longer fall within the territorial scope of Union law.
In the absence of transitional provisions providing for their continuation in ongoing opposition proceedings, such rights can therefore no longer be invoked when the EUIPO takes a decision after that date. The Court has thus put an end to the dispute without referring it back to the General Court, according to a press release.
Link to the judgment: https://aeur.eu/f/kyf (Original version in French by Solenn Paulic)