Preventicus wanted to convert its 'Nightwatch’ EUTM to a UK trademark
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5 June 2024NewsTrademarksLiz Hockley

INTA supports changing EUIPO practice on ‘converting’ trademarks

Association filed amicus brief backing Board of Appeal decision on ‘Nightwatch’ mark | Approach differs from long-standing practice in the office’s guidelines on EUTM conversions | German medtech Preventicus wanted to convert mark to a UK TM.

The International Trademark Association (INTA) has thrown its support behind changing the EU Intellectual Property Office’s (EUIPO) guidelines and practice regarding the ‘conversion’ of EU trademarks (EUTM) into national applications.

INTA stated its position in an amicus brief published yesterday, June 4, that it should be possible to convert a previously refused EUTM into a national mark, even in member states where the grounds of refusal apply, without first needing to appeal the refusal decision—provided the relevant decision had not become final.

The brief was made in response to a referral by the EUIPO executive director João Negrão to the Grand Board regarding the conversion of a trademark application by German medtech company Preventicus for the word mark ‘Nightwatch’.

At the centre of the referral is the interpretation of Article 139(2)(b) of the EU Trademark Regulations (EUTR), which bars conversion of EU trademarks in member states where an EUIPO decision identifies grounds of refusal.

INTA proposed that the expression “the decision of the office” in Article 139(2)(b) only refers to a final decision, and should not include EUIPO decisions refusing the EUTM application where no appeal was filed but the application was withdrawn during the appeal period—or when an appeal was filed but the EUTM was withdrawn prior to the final dismissal of the appeal.

This position aligns with the EUIPO Fourth Board of Appeal decision in September 2022 regarding ‘Nightwatch’, and would change EUIPO guidelines and practice that have been in place for nearly 20 years.

“Moreover, it will unify the interpretation of the provisions related to conversion of the EUTMs,” said INTA.

UK conversion splits opinion

The issue around the ‘Nightwatch’ trademark was whether it could be converted into a UK trademark despite the EUIPO having rejected it on the grounds of descriptiveness and lack of distinctiveness for the English-speaking public.

Preventicus had withdrawn its application for the mark after the EUIPO’s decision but not appealed it, and then requested its conversion into national trademark applications for various jurisdictions including the UK—which was refused.

According to the EUIPO guidelines, even when the ground for conversion is the withdrawal of an application, if such a withdrawal takes place after a decision to refuse the mark on the basis of a ground that would preclude registration in the member state concerned and if no appeal has been filed, the request for conversion will be rejected.

The EUIPO’s Fourth Board of Appeal held in September 2022 that due to the withdrawal of the EUTM application occurring during the appeal period, the refusal decision had not become effective, and the applicant’s UK conversion request should have been allowed.

Final decisions only

Referring the decision to the enlarged Board of Appeal, the executive director raised five questions, all related to the interpretation of the process of conversion.

These included whether the expression “the decision of the Office” in Article 139(2)(b) includes decisions of the office containing grounds of refusal of an EUTM application, where no appeal is brought under Article 66 but where the EUTM is withdrawn during the appeal period; and whether the answer to this question differed where an appeal against refusal is brought but the EUTM is withdrawn prior to a final dismissal of that appeal.

INTA argued that both questions should be answered in the negative, and that “the decision of the office” should only refer to final decisions.

“Similar conclusions should be drawn with respect to the third and fourth questions, which concern the status of the ‘final decision’ of the EUIPO’s Boards of Appeal decisions and the withdrawal of the EUTM prior to or after filing an action before the General Court,” the association said.

INTA also proposed that there was no reason why the approach should differ based on whether the relevant decision was rendered in ex parte or inter partes proceedings.

Read INTA’s amicus brief

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