Background

This case involves an EU application which was filed on 30 June 2015 by Mr Junguo Ye.

The trade mark application:

The trade mark was accepted and advertised for opposition purposes. On 08 March 2016, a Notice of Opposition was filed by Nowhere Co. Ltd. The opposition relied on three earlier non-registered trade marks.

Earlier non-registered trade marks relied on for the opposition:

As readers will be aware, the dates involved pre-date the UK referendum which took place on 23 June 2016.

Opposition Division decision

On 20 September 2017, the Opposition Division rejected the opposition and Nowhere Co. Ltd appealed.

Board of Appeal decision (part 1)

In October 2018, the Second Board of Appeal dismissed the appeal and the Nowhere Co. Ltd appealed to the General Court seeking an annulment of the first decision of the Board of Appeal. However, before the matter was heard by the General Court, in April 2019 the Board of Appeal informed the parties of its intention to revoke its first decision.

On 17 July 2019, the Second Board of Appeal revoked its first decision on account of an obvious error attributable to the EUIPO. Following this, the General Court found there was no need to adjudicate on the action before it.

Board of Appeal decision (part 2)

On the 10 February 2021, the Second Board of Appeal issued its decision and once again dismissed the appeal. In relation to the opposition based on the earlier non-registered trade marks, it found after Brexit and the expiry of the transitional period (which ended on 31 December 2020), the applicant could no longer rely on the rules governing common-law actions for passing off under Article 8(4).

Appeal to the General Court

Understandably, Nowhere Co. Ltd went bananas and appealed to the General Court. Nowhere Co. Ltd asked the General Court to:

• Annul the contested decision and refuse registration of the trade mark applied for; or
• Remit the case to the EUIPO for reconsideration and order the EUIPO to pay costs.

The EUIPO contended the General Court should dismiss the action and Order Nowhere Co. Ltd to pay the costs incurred by the EUIPO.

General Court decision

The General Court said that “contrary to what EUIPO claims, the mere use of the present tense in a provision does not make it possible to derive any conclusion as regards its interpretation.”

So far as concerns the wording of Article 8(4) of Regulation number 207/2009, it must be pointed out that the provision begins with the words “[u]pon opposition by the proprietor of a non-registered trade mark.” Consequently, it cannot be ruled out that the present tense which is subsequently used in that provision refers more to a time when the opposition is brought, and not to the time when the contested decision is adopted.

As such, the fact that the trade mark lost its status as an earlier right in the EU (due to Brexit) was not relevant because the existence of the relevant rights should have been assessed when the opposition was filed. We will have to wait and see whether the EUIPO appeals this decision.

Food for thought

This decision creates uncertainty in the way the EUIPO handles UK matters that pre-date the end of the Brexit transitional period.

• Was the EUIPO too hasty in refusing the oppositions based on UK trade marks?
• On 10 September 2020 the EUIPO issued Communication number 2/20 in which paragraph 12 read “regardless of their procedural status at first instance, actions in inter parties proceedings based solely on UK rights that are still pending on 01 January 2021 will be dismissed for lack of valid basis. Each party will be ordered to pay their own costs.”
• We will need to wait and see whether this decision is appealed and what further guidance is given on this point.

In short

This case suggests further clarification is needed on whether the EUIPO correctly handled how UK rights were dealt with before Brexit.