UK Trademark And Passing Off Rights May Found Oppositions To EU Trademarks Applied For Before 1 January 2021

• Published date: 06 April 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Gowling WLG
• Author: Mr Jonathan Ball and Felicity Wade-Palmer

In Case T-281/21¹, the General Court has ruled that grounds of opposition to trademark applications should be assessed as at the time of the trademark application, not the opposition. Pre-Brexit UK rights, including common law actions for passing off, do not fall away, apparently even where the opposition was made after Brexit (and after the expiry of the transition period) as long as the opposed trademark application was made before 1 January 2021.

For brand owners with an interest in protecting their rights in the EU, but with a historically stronger trading position in the UK, this judgment means they might want to re-think EUIPO strategies, arguments and evidence, and do so before any further deadlines expire.

This judgment is contrary to previous guidance issued, and decisions made, by the EUIPO. For example, the General Court's judgment is contrary to Communication No 2/2020² made by the Executive Director of the EUIPO, who said that as from 1 January 2021, UK rights ceased, as a matter of law, to count as "earlier rights" for the purposes of inter partes proceedings in the EUIPO (oppositions and invalidity actions).

The same Communication stated that as from 1 January 2021, evidence relating to the UK could no longer sustain or contribute to the protection of an EU trademark, for example proving reputation of an EUTM, even if that evidence predated 1 January 2021. In the light of the General Court's ruling in T-281/21, the legal foundation for this position would seem questionable too.

Consequently, opponents whose oppositions have been dismissed by the EUIPO on the basis that they were founded upon UK rights in existence before 1 January 2021, and any other stakeholders with an interest in relying upon pre-Brexit UK rights in the EUIPO, may wish to re-consider their options.

Background

In the T-281/21 case, the application for the trademark was filed on 30 June 2015. An opposition was filed on 8 March 2016 and was rejected by the Opposition Division on 20 September 2017. The opposition alleged infringement of Article 8(4) of Regulation No 207/2009. On 10 February 2021, the Board of Appeal dismissed the appeal, rejecting the opposition insofar as those marks were used in the course of trade in the UK. The Board of Appeal found that, following Brexit and after the expiry of the transitional period on 31 December 2020, rights that might exist in the UK no longer provided a basis for opposition proceedings for the purposes of Article 8(4) of...