Case T‑281/21
Nowhere Co. Ltd
v
European Union Intellectual Property Office
Judgment of the General Court (Third Chamber), 16 March 2022
(EU trade mark – Opposition proceedings – Application for the EU figurative mark APE TEES – Earlier national non-registered figurative trade marks representing an ape – Relative ground for refusal – Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) – Rules governing common-law actions for passing off – Agreement on the withdrawal of the United Kingdom from the European Union and Euratom)
1. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Relevant date for examining a relative ground for refusal – Date of filing of the application for registration – Withdrawal of the Member State concerned from the European Union – Irrelevant
(Art. 50 TEU; Council Regulation No 207/2009, Art. 8; Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community, Arts 126 and 127)
(see paragraphs 28-30)
2. EU trade mark – Definition and acquisition of the EU trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or other sign used in the course of trade – Opposition based on a trade mark protected in the United Kingdom – Withdrawal of the United Kingdom from the European Union – Effect – Decision of the Board of Appeal taken after the transition period – Continued interest in bringing proceedings with regard to the period between the date of filing of the application for registration and the expiry of the transition period
(Art. 50 TEU; Council Regulation No 207/2009, Arts 8(4) and 42(2) and (3); European Parliament and Council Regulation 2017/1001, Arts 51 and 52; Commission Regulation No 2868/95, Art. 1, Rules 19(1) and 20(1); Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community, Arts 126 and 127)
(see paragraphs 34, 36-39, 41-43, 45, 46)
3. EU trade mark – Appeals procedure – Action before the EU judicature – Power of the General Court to alter the contested decision – Limits
(European Parliament and Council Regulation 2017/1001, Art. 72(3))
(see paragraph 47)
Résumé
Mr Junguo Ye sought registration from the European Union Intellectual Property Office (EUIPO) of the EU figurative trade mark APE TEES in respect of various goods and services. Nowhere Co. Ltd filed a notice of opposition to registration of that mark on the basis of three earlier non-registered figurative trade marks, used in the course of trade in the United Kingdom, which, under the law applicable in that country, it enabled it to prevent the use of the mark applied for.
By decision of 10 February 2021, the Board of Appeal of EUIPO rejected the opposition on the ground that, after the withdrawal of the United Kingdom from the European Union and after the expiry of the transition period provided for in the withdrawal agreement, (1) Nowhere Co. could no longer rely on the rules governing common-law actions for passing off under the law of the United Kingdom. It found, first, that the relevant date with regard to the existence of the earlier rights was that of the adoption of the contested decision, which took place, in the present case, after the expiry of the transition period. Secondly, it found that, as from the end of the transition period, no conflict between the mark applied for and the earlier non-registered trade marks could arise, in so far as those earlier non-registered trade marks were used in the course of trade in the United Kingdom.
The Court annulled the decision of the Board of Appeal of EUIPO. It found that, in spite of the withdrawal of the United Kingdom from the European Union and the end of the transition period, Nowhere Co. had a legitimate interest in the success of its opposition with regard to the period between the date on which the EU trade mark application was filed and the expiry of the transition period.
Findings of the Court
The Court pointed out at the outset that the existence of a relative ground for refusal must be assessed as at the time of filing of the application for registration of an EU trade mark against which an opposition has been brought. In that regard, the fact that an opposition under Article 8(4) of Regulation No 207/2009 (2) is based on non-registered trade marks used in the course of trade in the United Kingdom and on the law of passing off laid down in the law of the United Kingdom is irrelevant in the case of an opposition brought against an application for registration of an EU trade mark which was filed before the entry into force of the withdrawal agreement and the expiry of the transition period.
As regards EUIPO’s argument that the relevant date with regard to the existence of the earlier rights in this case was that on which the contested decision was adopted, the Court pointed out, in the first place, that the mere use of the present tense in Article 8(4) of Regulation No 207/2009 does not make it possible to derive any conclusion as regards its interpretation. Since that provision begins with the words ‘upon opposition by the proprietor of a non-registered trade mark’, it cannot be ruled out that the present tense which is subsequently used in that provision refers more to the time when the opposition is brought, and not to the time when the contested decision is adopted.
In the second place, the Court stated that the time limit, before the expiry of which proof of the existence, validity and scope of protection of the earlier right had to be produced, was specified by EUIPO as being a date before the entry into force of the withdrawal agreement and the expiry of the transition period. Furthermore, Article 42(2) of Regulation No 207/2009, which lays down an obligation for the opponent to prove genuine use of the earlier mark, refers to the period of five years preceding the date of publication of the EU trade mark application, and not to the period which ends on the date of EUIPO’s final decision on the opposition.
In the third place, the Court held that, even if it were to be accepted that, after the end of the transition period, a conflict between the marks at issue could no longer arise, the fact remained that, if the mark applied for was registered, such a conflict could nevertheless have existed during the period between the date on which the EU trade mark application was filed and the expiry of the transition period. It thus acknowledged that Nowhere Co. had a legitimate interest in the success of its opposition as regards that period. On the other hand, it would have been open to Mr Ye to file a new application for registration of the mark applied for as soon as the transition period had expired, an application which would no longer have come into conflict with the earlier non-registered trade marks in so far as they had been used in the course of trade in the United Kingdom.
Consequently, the Court held that none of the arguments put forward by EUIPO was capable of supporting its position that the date on which the contested decision was adopted, the only event in the present case which took place after the expiry of the transition period, was the relevant date with regard to the outcome of the present case.