I was interested to read that INTA, the International Trademark Association, has filed a notice of intervention at the CJEU in a case which initially appears to be a Brexit hangover, but in fact has wider implications than that.
The UK left the European Union at the end of December 2020 at the conclusion of a transition period. That left some oppositions pending at the EU IPO which had been based on UK rights. The question is, if you had a valid UK right before the end of the transition period, and you used it as a basis to object to an EU trade mark application, should your right to object continue after Brexit? In the APE TEES case, on which INTA has now intervened, the EU IPO initially thought the answer was no, and refused the opponent's opposition on the grounds that their unregistered rights in the UK were no longer a sufficient basis after Brexit.
The opponent appealed to the General Court, which agreed with them, saying that the applicable law is determined by the position at the application filing date, and the EU IPO should have taken the UK rights into account because they gave valid grounds for objection at the time (which was 2015). The EU IPO has appealed that decision to the CJEU, arguing that the date of the opposition decision is equally relevant. The applicant may well have had an interest in bringing the opposition in the first place, but that interest has since disappeared because of the UK's departure from the EU, and so the opposition should not succeed. INTA agrees with the EU IPO's position and points to similar national case law in five different EU member states.
INTA rightly say that it is important to have clarity on this question, because it affects not just oppositions caught up in Brexit, but any EU-level cancellation, revocation or invalidity action when the earlier right "disappears" during the course of the proceedings. If the CJEU agrees with them, this might give further encouragement to defendants to revoke prior marks and remove them from record before a decision is issued. If an opponent's mark is over five years old, proof of use can already be required to sustain an opposition, but that five-year period is also looked at from the point of view of the applicant's filing date. What happens if the opponent's mark passes its five-year anniversary and becomes vulnerable to revocation during the course of the opposition proceedings?
European oppositions are still treated by some opponents as largely procedural and just a matter of filling in a form, but this approach is looking outdated. The APE TEES case has yet to be decided by the CJEU, but if they agree with INTA and the EU IPO, it will only increase the need for careful consideration of which rights to use as a basis for oppositions. Nobody has a crystal ball (when the APE TEES application was first filed, the UK hadn't even held its Brexit referendum) and it can be a real challenge for businesses to predict what lies ahead for their brands. Best practice – if time and resources permit – is to keep some records and examples of how registered trade marks are used and the associated sales figures, so if there's a need to prove use in future, there's already some information and evidence to hand. Don't chance it! Ask a European trade mark attorney to advise.
With regard to opposition/cancellation proceedings, where the relevant petitioner relied upon a right that, for any reason, has ceased to exist at the time a decision is taken, then it should follow that said petitioner no longer has an interest in bringing proceedings and the opposition/cancellation proceedings should fail.
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