EUIPO Second Board of Appeal reminds that an opposition may be withdrawn at any time before a decision on appeal becomes final

Article 66 EUTMR states that “The filing of the appeal shall have suspensive effect.” But what does that mean in practice? Does it imply that an opposition to a trade mark registration may be withdrawn pending such appeal? The answer is yes.

In a decision delivered earlier this month, the EUIPO Second Board of Appeal considered this very matter and reiterated what the interpretation of this provision should be.

Background

With an application filed in March 2017 the applicant, ME&P Retail IP, sough to register the word mark “MISS E.” as an EU trade mark (EUTM).

Registration was sought for a number of goods in different classes of the Nice Classification.

Miss Hamptons Brand (the Opponent) filed an opposition in July 2017 in accordance with Article 8(1)(b) EUTMR,  The earlier registered EUTMs on which the opposition was based was the following, also registered for goods in the same classes claimed by the applicant:

In January 2019, the Opposition Division refused to register the applicant’s sign for part of the contested goods. The applicant filed an appeal, requesting that the decision be set aside in its entirety.

The opponent withdrew its opposition in April 2019.

The Board of Appeal confirmed that an opposition may be withdrawn at any moment before the decision on appeal becomes final. In particular, Article 66(1) EUTMR provides that a decision takes effect only as from the date of expiration of the appeal period. Article 68 of the EUTMR sets out that an appeal shall be filed within two months of the date of notification of the decision. The decision is therefore deemed to become final once two months have passed following the initial decision. If the appeal is withdrawn, or two months have passed without an appeal being filed, then that decision becomes final. The same applies in the event that an application is withdrawn within the two-month period.

Comment

From a practical perspective, it is not uncommon that an applicant and its opponent seek to enter co-existence agreements, potentially even at later stages, in a particular dispute. This decision is a reminder that this route can be indeed pursued. However, parties have limited time to settle their dispute, pending a decision in an opposition/appeal.