Nowhere to go.. CJEU confirms earlier right must be valid at the date of opposition decision.

The CJEU has issued its judgment in the case of Nowhere Co. Ltd v EUIPO with guidance on how earlier rights will be treated in EU opposition proceedings following Brexit. As a reminder, following the UK's withdrawal from the European Union, there was a transition period which ended on 31 December 2020, after which UK registered and unregistered rights could no longer be invoked as the basis of an opposition claim against an EUTM application.

The case revolved around an EUTM application which was opposed in 2016 on the basis of an unregistered UK right under Article 8(4) of the EU Trade Mark Regulation, which permits the opponent to rely on unregistered rights of more than mere local significance in an EU member state. At this point, the UK was still part of the European Union, meaning that an opponent could rely on rights which had been accrued through use in the UK in order to bring an opposition under this ground.

Following Brexit, the opposition was initially rejected by the EUIPO Opposition Division, and there began a series of appeals, which ultimately led to a decision from the EU Court of Justice. In the appeal, Nowhere argued that the the only relevant date for the purpose of establishing the existence of an earlier right on which an opposition to an EU trade mark was based was the date on which the application for registration of that trade mark was filed. The EUIPO argued that the earlier right should exist not only on that date, but on the date on which the opposition decision is adopted. In a surprise move, the General Court upheld Nowhere's plea, suggesting that the earlier right must only be valid at the date of filing of the application which was under opposition, but not necessarily on the date on which the decision was issued. The EUIPO appealed to the CJEU, with support from the International Trademark Association (INTA) and the Federation of Germany.

The CJEU upheld the EUIPO's plea, on the basis that of their finding that the earlier right relied on in opposition proceedings must continue to exist until the date on which EUIPO rules on the opposition based on that right, including at the stage of the appeal before the Board of Appeal, which was not the case with the mark relied on by Nowhere in support of its opposition. As Brexit has signalled the death knell for the UK earlier right, the EUIPO was correct to dismiss the opposition.

Whilst centred around UK rights, the decision reinforces the fact that an earlier right relied on in opposition proceedings can no longer be relied on if the earlier right falls away before the decision is issued - perhaps because, in the case of a registered trade mark, it has been cancelled. Therefore, and as ever upon receipt of an opposition to an EUTM, an applicant would be well-advised to interrogate the rights which form the basis of the opposition and whether they can be challenged as part of their defence strategy.