Japan’s Nowhere prevails against EUIPO in Brexit dispute
The EU Intellectual Property Office (EUIPO) erred when it found against an appeal by Japanese streetwear brand Nowhere on the grounds that its opposition was not admissible following the Brexit withdrawal period, the EU General Court has said.
The third chamber of the EU General Court handed down its decision on Wednesday, March 16, 2022.
In June 2015, Junguo Ye filed an application for registration of an EU trademark for a figurative sign depicting a monkey image with the wording ‘Ape Tees’ at the EUIPO.
In March 2016, Tokyo-based Nowhere filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark.
The opposition was based on three earlier non-registered figurative trademarks consisting of monkey images.
In September 2017, the opposition division rejected this opposition, and in November 2017, Nowhere filed a notice of appeal with EUIPO.
In October 2018, the second board of appeal of EUIPO also dismissed the appeal, and in January 2019, the applicant brought an action seeking the annulment of the first decision of the Board of Appeal.
Brexit implications
In February 2021, the Second Board of Appeal dismissed another appeal, finding that after the withdrawal of the UK from the EU after the expiry of the transitional period on December 21 2020, Nowhere could no longer rely on the rules governing common-law actions for passing off under the law of the UK for the purposes of Article 8(4) of Regulation No 207/2009.
The board found that, after the UK’s withdrawal, rights that might once have existed in the UK no longer constituted a basis for the purpose of opposition proceedings.
Nowhere insisted that the relevant date with regard to establishing the existence of an earlier right that has been relied on in opposition to the registration of an EU trademark is the date on which the application for registration was filed.
But the EUIPO argued that such an earlier right must exist not only on that date but also on the date on which the office takes its final decision on the opposition.
EU law continued to apply
But the general court held that: “it is clear from Article 126 of the withdrawal agreement, read in conjunction with the first sentence of Article 127(1) of that agreement, that, unless otherwise provided, EU law continued to apply to and in the UK during a transition period which started on the date of entry into force of that agreement and ended on December 31 2020”.
The court also noted that the provisions of the withdrawal agreement regarding IP which are contained under Title IV of part three of that agreement (Articles 54 to 61) remain silent as regards the treatment of an opposition which was brought before the entry into force of the withdrawal agreement.
“It is therefore apparent that, with regard to the present case, the only relevant document which postdates the entry into force of the withdrawal agreement and the end of the transition period is the contested decision,” said the court.
The court held that since the application for registration of the mark applied for was filed before the expiry of the transition period, and before the entry into force of the withdrawal agreement, it “must be held that the earlier non-registered trademarks were capable of forming the basis of the opposition in the present case”.
“The board of appeal should therefore have taken them into account in its assessment, which it, however, refused to do for the sole reason that the transition period had expired at the time when the contested decision was adopted,” the court noted.
The general court annulled the decision of the Second Board of Appeal of the EUIPO of February 2021 and ordered the EUIPO to pay costs.
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