The never-ending story of Brexit – Chapter: EUIPO v Nowhere – Act I: The Advocate General’s Opinion

What happens if the earlier right ‘disappears’ in the course of opposition proceedings before the European Union Intellectual Property Office (‘EUIPO’) or its Board of Appeal (‘BoA’), for instance due to the departure of the United Kingdom from the EU (also known as Brexit)? This question is at the heart of Advocate General (‘AG’) Ćapeta’s opinion in EUIPO v Nowhere (C-337/22).

Background

In 2015, Mr. Junguo Ye applied for registration of the following EU trade mark:

Nowhere Co. Ltd (‘Nowhere’) filed an opposition against this application, inter alia on the basis of the following three earlier, non-registered figurative trade marks used in the course of trade in the United Kingdom (Art. 8(4) EUTMR):

The EUIPO and the Board of Appeal (‘BoA’) dismissed the opposition and the appeal in 2017 and 2018, respectively. Nowhere filed an action with the General Court. Before the General Court decided on the matter, the BoA revoked its appeal decision in 2019.

On 10 February 2021, i.e. after the end of the transition period (which was 31 December 2020) of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (‘Withdrawal Agreement’), the BoA rendered a new decision dismissing the opposition again for the simple reason that, following Brexit, opponents can no longer invoke UK rights in EU opposition proceedings.

Nowhere appealed to the General Court (again). The General Court annulled the BoA’s decision. It found that Nowhere could still rely on earlier UK rights because the relevant point in time for assessing the merits of an opposition is (only) the filing date of the contested application. At that date, the UK was still a part of the EU.

The EUIPO filed an appeal to the Court of Justice of the EU (‘CJEU’), which was admitted.

The Advocate General’s Opinion

AG Ćapeta agreed with the General Court’s arguments:

1. There was a conflict between the trade marks between the filing date of Mr. Ye’s application and Nowhere’s earlier rights. This period lasted more than five years in the present case. The conflict would remain unresolved if the ‘disappearance’ of the opponent’s earlier rights were taken into account.

2. The conflict was not merely theoretical. Nowhere’s earlier rights would effectively be denied protection for the period of conflict if the end of the transition period had an effect on the opposition. Nowhere retained a legitimate interest in the success of its opposition.

3. Even though Art. 8(4) EUTMR requires an assessment of the opposition to be carried out on the date at which the EUIPO determines whether all the conditions for the opposition are met (which is after the filing date of the contested application), that does not mean that the EUIPO may ignore the conflict between the marks, which would have prevented the registration of the later application.

4. AG Ćapeta also provided a solution for the time following the end of the transition period, where there was no conflict between the trade marks any longer. Theoretically, the EUIPO could reject the opposition for the period after 1 January 2021 and register the contested application with a later filing date. However, the EUTMR does not allow changing the filing date. Hence, this option is not available. Instead, Mr. Ye could have filed a new application on 1 January 2021. This new application would not have been in conflict with Nowhere’s earlier UK rights at any point in time.

5. AG Ćapeta also endorsed the General Court’s argument that the EUIPO and BoA could affect the outcome of the opposition by delaying its decision to a point in time at which the earlier right had ceased to exist.

For these reasons, the AG proposed to dismiss the EUIPO’s appeal.

Comment

This case goes far beyond the impact of Brexit on opposition proceedings. It concerns the broader question of the relevant point in time for assessing the merits of an opposition: Is it only (1) the filing/priority date of the contested application or also (2) the date of the decision? In other words, is it necessary that the conditions of Art. 8 EUTMR must also be fulfilled at the decision date?

The CJEU will need to take a position on this question. At the national level, the German Supreme Court has, for example, held that the conditions for a successful opposition must be satisfied on both dates. This requires the opponent not just to show that the trade mark still exists at the decision date but also that its scope of protection is still as broad as it was at the filing date. This means that evidence of enhanced distinctiveness through use, a reputation of the earlier mark or the conditions of Art. 8(4) EUTMR need not only be provided for the filing date, which is set, but also for the date of the final decision. As the case in comment shows, this latter date may be years from the filing date. The evidence submitted for the filing date may not be sufficient anymore to establish enhanced distinctiveness, reputation or the conditions of Art. 8(4) EUTMR.

The EUIPO’s views in its appeal would not just be burdensome on opponents that need to update their evidence regularly. They would also lead to legal uncertainty because the date of the final decision is unknown. The proceedings might end with the decision of EUIPO’s Opposition Division but they might also go all the way up to the CJEU (and back down again and back up again…).

Beyond that, Art. 60(1) EUTMR contains an explicit provision for the relevant point in time for invalidity applications on the basis of earlier rights, namely that the conditions for finding a likelihood of confusion, infringement of a trade mark with a reputation etc. shall be fulfilled at the filing or priority date of the contested EU trade mark – no mention of the decision date. Since invalidity proceedings are similar in nature to opposition proceedings, the same rules should apply.

Let’s now wait and see what the CJEU thinks.