14 June 2023TrademarksMarisa Woutersen

INTA intervenes in Brexit-related EU trademark issue

The association’s rare statement before the CJEU raises critical questions on the assessment of relative grounds for refusal in EU trademark applications.

The  International Trademark Association (INTA) has made a rare intervention before the  Court of Justice of the European Union (CJEU) in a trademark case involving the  European Union Intellectual Property Office (EUIPO).

The case ( C-337/22 P) revolves around the assessment of relative grounds for refusal in opposition proceedings filed before Brexit against an EU trademark application.

INTA has filed a  supporting statement in favour of the EUIPO’s appeal, which seeks to set aside the General Court’s March 16, 2022, ( T-281/21) judgment between Nowhere Co and the EUIPO, with Junguo Ye named as the other party.

The dispute began in March 2016 when UK company Nowhere filed an opposition against an EU trademark application (number 014319578). The application was filed by Junguo Ye on June 30, 2015, in classes 3, 9, 14, 18, 25 and 35 for a logo depicting an image of a cartoon ape above the words ‘Ape Tees’.

Denied due to end of Brexit transitional period

Nowhere based its opposition argument on three previous unregistered trademarks used in the UK.

However, the Second Board of Appeal of the EUIPO rejected the opposition in February 2021. The board said the opponent could no longer rely on the rules governing common law actions for passing off under UK law after Brexit.

The law changed on December 31, 2020, following the expiration of the Brexit transitional period.

The General Court later overturned the board’s decision, highlighting that the presence of a relative ground for refusal must be assessed at the time the EU trademark application was filed.

Seeking to challenge this ruling, the EUIPO has appealed to the CJEU, urging Europe’s highest court to overturn the General Court’s judgment.

Backing the EUIPO’s appeal, INTA argued that if a right relied upon by the opponent or cancellation applicant no longer exists when a decision is made, it means that the party no longer has a legal interest in pursuing the proceedings.

Moreover, INTA highlighted the potential impact of the case's outcome on future situations involving the "disappearance" of earlier rights during EUIPO proceedings due to relative grounds.

INTA emphasised that the UK’s withdrawal from the EU should not affect the evaluation of oppositions filed against applications submitted prior to the Withdrawal Agreement's entry into force.

“INTA believes that, as confirmed by the order, the outcome of the case at issue might have an impact on any situation of ‘disappearance’ of an earlier right during administrative proceedings based on relative grounds.

“Therefore, we deem it is very important that this honourable court provides clear guidelines in this respect.”

Only third case of its type

INTA submitted its statement in intervention in line with Article 40 of the  Statute of the Court of Justice. The association is being represented by legal professionals from various European countries, including Italy, Greece, Germany, and the US.

In its statement, INTA confirmed it is authorised to practise before the courts of a member state and declares that it represents and acts on behalf of INTA with a valid power of attorney.

This case is only the third instance in over three and a half years that a EUIPO case has passed the filter mechanism applied to appeals against General Court decisions.

By accepting the appeal, the CJEU acknowledges the importance of the case in terms of the unity, consistency, or development of EU law.

As the case moves forward, the CJEU’s decisions will be closely watched, as they could have consequences for how oppositions filed prior to Brexit are handled.

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