General Court confirms UK trade marks can still be asserted in EUIPO proceedings against EUTMs filed before Brexit

In Inditex v EUIPO , the General Court has confirmed that the existence of a relative ground for opposition must be assessed as at the time of the filing of the application for registration of the opposed EU trade mark (EUTM), including any priority claim.

It went further in stating that the fact that an earlier national registered trade mark could lose its status after the filing of the EUTM, particularly because of the withdrawal of a country from the EU, was irrelevant to the outcome of the opposition.

This case provides further clarity that, contrary to the European Union Intellectual Property Office (EUIPO)'s stated position, earlier UK trade marks must be taken into consideration by the EUIPO in pending opposition proceedings post-Brexit, provided that the EUTM being opposed was applied for on or before the end of the Brexit transition period on 31 December 2020.

Background

On 5 March 2010, the applicant (Inditex) filed an application to register the word mark "Zara" as an EUTM, when the UK was still part of the EU. In response, Ffauf Italia SpA filed an opposition relying on 11 earlier marks, which included an international registration designating the EU, and having effect in the UK, of the word mark "Le Delizie Zara".

Brexit

At the hearing before the General Court, Inditex raised a new plea that following Brexit the UK had become a non-EU Member State and therefore earlier UK rights could no longer be relied on to form the basis of an opposition as from 1 January 2021. That plea was consistent with the guidance issued by the EUIPO in September 2020 that made it clear that from the end of the transition period, any – pending or new – opposition or invalidity request based solely on a UK right would be dismissed.

Thus, it maintained that Ffauf Italia's international registration, insofar as it had effect in the UK, could not be relied on in support of the opposition and could not be relied on for the purposes of examining the legality of the contested Board of Appeal decision.

The General Court rejected this argument. It held that the relevant date for assessing the relative grounds that formed the basis of the opposition was 5 March 2010, the date on which the EUTM was filed, at which time the UK was still a member of the EU. Therefore, the withdrawal of the UK from the EU had no effect on the prior right being relied upon in the opposition.

Osborne Clarke comment

Prior to this decision, as noted above, the EUIPO had stated that from 1 January 2021 UK rights were to cease being earlier rights for the purpose of proceedings at the EUIPO.

However, this decision overrides that position. It builds on and extends another recent decision, in which the General Court held that an opposition relying on a prior UK passing off right was admissible because the contested EUTM and the Board of Appeal decision being appealed both came before the end of the Brexit transition period. In that case, the UK's withdrawal from the EU did not render the action devoid of purpose and the earlier right was capable of forming the basis of the opposition.

The Inditex decision develops this, providing helpful clarity on the effects of Brexit. Brand owners now have certainty that prior UK rights can be relied on for the purpose of opposing an EUTM, as long as the mark being opposed was applied for on or before the end of the Brexit transition period. It seems reasonable to assume that UK trade marks may also still be used as earlier rights in EUIPO invalidity proceedings, to cancel later-filed EUTMs, provided that the EUTM was filed before the end of the Brexit transition period.