The never-ending story of Brexit – The Final Chapter
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Marcel Pemsel
Feb 25, 2026, 12:17:02 PM (7 days ago) Feb 25
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The never-ending story of Brexit – The Final Chapter
The Court of Justice of the EU (“CJEU”) has rendered its long-awaited decision in EUIPO v Nowhere
(C-337/22), disagreeing with the Advocate General’s (“AG”) opinion. In
short, the CJEU held that, in opposition proceedings, the earlier right
must continue to exist until the time the European Intellectual Property
Office (“EUIPO”) or its Board of Appeal (“BoA”) renders the decision.
Background
In 2015, Mr. Junguo Ye applied for registration of the following EU trade mark:
Background
In 2015, Mr. Junguo Ye applied for registration of the following EU trade mark:
Nowhere Co. Ltd (‘Nowhere’) filed an opposition against this application, inter alia on the basis of the following three earlier, non-registered figurative trade marks used in the course of trade in the United Kingdom (Art. 8(4) EUTMR):
The
EUIPO and the BoA dismissed the opposition and the appeal in 2017 and
2018, respectively. Nowhere filed an action with the General Court.
Before the General Court decided on the matter, the BoA revoked its
appeal decision in 2019.
On 10 February 2021, i.e. after the end of the transition period (which was 31 December 2020) of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (‘Withdrawal Agreement’), the BoA rendered a new decision dismissing the opposition again for the simple reason that, following Brexit, opponents can no longer invoke UK rights in EU opposition proceedings.
Nowhere appealed to the General Court (again). The latter annulled the BoA’s decision. It found that Nowhere could still rely on earlier UK rights because the relevant point in time for assessing the merits of an opposition is only the filing date of the contested application. At that date, the UK was still part of the EU.
The EUIPO filed an appeal to the Court of Justice of the EU (‘CJEU’), which was admitted. With good reasons, AG Ćapeta proposed to dismiss the EUIPO’s appeal (IPKat here).
The CJEU’s decision
The CJEU upheld the EUIPO’s appeal and rendered a final decision by dismissing Nowhere’s action before the General Court.
1. No review of the appeal’s admission
First, the judges dealt with Nowhere’s claim of inadmissibility of the appeal before the CJEU. Nowhere argued that the matter did not raise an issue that is significant with respect to the unity, consistency or development of EU law (a requirement for admission of the appeal to the CJEU).
The Court merely referred to the decision to allow the appeal. The judges did not mention that that decision was made by the president of the CJEU and not by the Court as it was sitting. However, the gist seems to be that the decision on admission is not subject to review by the Court.
2. Nowhere’s interest in bringing proceedings
Germany, who intervened on the side of the EUIPO, argued that Nowhere had no interest in bringing proceedings.
The CJEU cited its Indo European Foods decision in which it rejected such an argument (IPKat here). Nowhere’s interest in the proceedings consisted in the annulment of the BoA’s decision.
3. The effects of Brexit
The important part of the decision concerns the question whether the General Court was right to base its decision on the premise that a relative ground for refusal must exist only on the application/priority date of the contested mark.
a. Wording of Art. 8(4) EUTMR
The judges placed considerable emphasis on the wording of Art. 8(4) EUTMR, particularly on Art. 8(4)(b) EUTMR. For a successful opposition on the basis of a non-registered sign, it requires that the sign confer on its owner the right to prohibit the use of the contested mark. This provision is phrased in the present tense and does not refer to any date on which it should be satisfied. In contrast, Art. 8(4)(a) EUTMR (requiring that the earlier right was acquired prior to the filing/priority date of the contested mark) uses the past tense and contains a temporal condition (“prior to”). Finally, the phrase “the trade mark applied for shall not be registered” in Art. 8(4) EUTMR, which refers to EUIPO’s decision upholding the opposition, is also in the present tense.
b. Context of Art. 8(4) EUTMR
In the judges’ opinion, the present tense used in Art. 8(1) and (2) EUTMR, forming part of the context in which Art. 8(4) EUTMR is placed, suggests that the earlier rights mentioned therein must exist on the decision date.
The Court also referred to its judgment in Anheuser-Busch v Budějovický Budvar, in which it held that the BoA has to verify that the earlier right relied on under Art. 8(4) EUTMR has not been declared invalid by a final judicial decision before rendering its own decision.
c. Objective of opposition proceedings
The judges also relied on the objective of opposition proceedings.
They serve the purpose of preventing the registration of EU trade marks liable to conflict with earlier marks, thereby upholding the principle of priority.
Further, the general objective of the EUTMR is to strike a balance between the interests of trade mark owners in protecting the origin function of their marks and the interests of other economic operators in having signs capable of designating their goods and services.
While the EUTMR confers a set of rights on the trade mark owner, they are limited to what is necessary to preserve the origin function, including the rules on genuine use.
On that basis, the judges found that, where the earlier mark no longer exists at the decision date, its origin function is not compromised and, arguably, the objective of opposition proceedings cannot be fulfilled.
d. The conflict between the signs
The General Court held that there was a conflict between the trade marks in question until the end of the transition period.
The CJEU countered that Nowhere could have brought and still can bring infringement proceedings against the actual use of the contested mark. The rejection of opposition and invalidity proceedings does not prevent an infringement action.
Also, opposition proceedings concern whether registration should be refused because it would create a conflict between coexisting enforceable rights. If the earlier right no longer exists at the decision date, there is no longer a legally relevant conflict capable of preventing registration.
e. Conclusion
The judges concluded that the earlier right must exist also on the date of the decision of the EUIPO’s Opposition Division or the BoA. It is a preliminary issue which must be resolved by the EUIPO and the BoA prior to the determination of the conditions of Art. 8(4) EUTMR.
The fact that Nowhere’s trade mark ceased to enjoy protection in the EU without its fault was deemed irrelevant.
4. The Withdrawal Agreement
The General Court held that the Withdrawal Agreement did not account for the situation of opposition proceedings based on UK rights brought before the entry into force of the agreement. Therefore, the Withdrawal Agreement, the General Court concluded, did not prevent an opponent from relying on UK rights in pending opposition proceedings after the end of the transition period.
The judges found this to be erroneous. Subject to the arrangements in the Withdrawal Agreement, EU law ceased to apply in the UK from the date the agreement entered into force. After the expiry of the transition period, UK law was not the “law of a Member State” as mentioned in Art. 8(4) EUTMR. The General Court’s reasoning violated the principle of territoriality.
Comment
1. The most obvious consequence of the decision is that earlier rights must exist not only at the filing/priority date of the contested mark but also on the decision date of the EUIPO or the BoA.
However, this principle stops at the gate of the General Court. As the CJEU held in Indo European Foods (IPKat here), the disappearance of the earlier right after the BoA has rendered its decision does not affect an appeal before the General Court.
2. Another question is whether this decision establishes a general principle that the conditions for a successful opposition must be fulfilled at the filing/priority date and at the decision date of the EUIPO/BoA. For example, does the trade mark owner have to show that its trade mark still has a reputation at the decision date or an enhanced degree of distinctiveness acquired through use?
So this decision may not be the final chapter after all.
On 10 February 2021, i.e. after the end of the transition period (which was 31 December 2020) of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (‘Withdrawal Agreement’), the BoA rendered a new decision dismissing the opposition again for the simple reason that, following Brexit, opponents can no longer invoke UK rights in EU opposition proceedings.
Nowhere appealed to the General Court (again). The latter annulled the BoA’s decision. It found that Nowhere could still rely on earlier UK rights because the relevant point in time for assessing the merits of an opposition is only the filing date of the contested application. At that date, the UK was still part of the EU.
The EUIPO filed an appeal to the Court of Justice of the EU (‘CJEU’), which was admitted. With good reasons, AG Ćapeta proposed to dismiss the EUIPO’s appeal (IPKat here).
The CJEU’s decision
The CJEU upheld the EUIPO’s appeal and rendered a final decision by dismissing Nowhere’s action before the General Court.
1. No review of the appeal’s admission
First, the judges dealt with Nowhere’s claim of inadmissibility of the appeal before the CJEU. Nowhere argued that the matter did not raise an issue that is significant with respect to the unity, consistency or development of EU law (a requirement for admission of the appeal to the CJEU).
The Court merely referred to the decision to allow the appeal. The judges did not mention that that decision was made by the president of the CJEU and not by the Court as it was sitting. However, the gist seems to be that the decision on admission is not subject to review by the Court.
2. Nowhere’s interest in bringing proceedings
Germany, who intervened on the side of the EUIPO, argued that Nowhere had no interest in bringing proceedings.
The CJEU cited its Indo European Foods decision in which it rejected such an argument (IPKat here). Nowhere’s interest in the proceedings consisted in the annulment of the BoA’s decision.
3. The effects of Brexit
The important part of the decision concerns the question whether the General Court was right to base its decision on the premise that a relative ground for refusal must exist only on the application/priority date of the contested mark.
a. Wording of Art. 8(4) EUTMR
The judges placed considerable emphasis on the wording of Art. 8(4) EUTMR, particularly on Art. 8(4)(b) EUTMR. For a successful opposition on the basis of a non-registered sign, it requires that the sign confer on its owner the right to prohibit the use of the contested mark. This provision is phrased in the present tense and does not refer to any date on which it should be satisfied. In contrast, Art. 8(4)(a) EUTMR (requiring that the earlier right was acquired prior to the filing/priority date of the contested mark) uses the past tense and contains a temporal condition (“prior to”). Finally, the phrase “the trade mark applied for shall not be registered” in Art. 8(4) EUTMR, which refers to EUIPO’s decision upholding the opposition, is also in the present tense.
b. Context of Art. 8(4) EUTMR
In the judges’ opinion, the present tense used in Art. 8(1) and (2) EUTMR, forming part of the context in which Art. 8(4) EUTMR is placed, suggests that the earlier rights mentioned therein must exist on the decision date.
The Court also referred to its judgment in Anheuser-Busch v Budějovický Budvar, in which it held that the BoA has to verify that the earlier right relied on under Art. 8(4) EUTMR has not been declared invalid by a final judicial decision before rendering its own decision.
c. Objective of opposition proceedings
The judges also relied on the objective of opposition proceedings.
They serve the purpose of preventing the registration of EU trade marks liable to conflict with earlier marks, thereby upholding the principle of priority.
Further, the general objective of the EUTMR is to strike a balance between the interests of trade mark owners in protecting the origin function of their marks and the interests of other economic operators in having signs capable of designating their goods and services.
While the EUTMR confers a set of rights on the trade mark owner, they are limited to what is necessary to preserve the origin function, including the rules on genuine use.
On that basis, the judges found that, where the earlier mark no longer exists at the decision date, its origin function is not compromised and, arguably, the objective of opposition proceedings cannot be fulfilled.
d. The conflict between the signs
The General Court held that there was a conflict between the trade marks in question until the end of the transition period.
The CJEU countered that Nowhere could have brought and still can bring infringement proceedings against the actual use of the contested mark. The rejection of opposition and invalidity proceedings does not prevent an infringement action.
Also, opposition proceedings concern whether registration should be refused because it would create a conflict between coexisting enforceable rights. If the earlier right no longer exists at the decision date, there is no longer a legally relevant conflict capable of preventing registration.
e. Conclusion
The judges concluded that the earlier right must exist also on the date of the decision of the EUIPO’s Opposition Division or the BoA. It is a preliminary issue which must be resolved by the EUIPO and the BoA prior to the determination of the conditions of Art. 8(4) EUTMR.
The fact that Nowhere’s trade mark ceased to enjoy protection in the EU without its fault was deemed irrelevant.
4. The Withdrawal Agreement
The General Court held that the Withdrawal Agreement did not account for the situation of opposition proceedings based on UK rights brought before the entry into force of the agreement. Therefore, the Withdrawal Agreement, the General Court concluded, did not prevent an opponent from relying on UK rights in pending opposition proceedings after the end of the transition period.
The judges found this to be erroneous. Subject to the arrangements in the Withdrawal Agreement, EU law ceased to apply in the UK from the date the agreement entered into force. After the expiry of the transition period, UK law was not the “law of a Member State” as mentioned in Art. 8(4) EUTMR. The General Court’s reasoning violated the principle of territoriality.
Comment
1. The most obvious consequence of the decision is that earlier rights must exist not only at the filing/priority date of the contested mark but also on the decision date of the EUIPO or the BoA.
However, this principle stops at the gate of the General Court. As the CJEU held in Indo European Foods (IPKat here), the disappearance of the earlier right after the BoA has rendered its decision does not affect an appeal before the General Court.
2. Another question is whether this decision establishes a general principle that the conditions for a successful opposition must be fulfilled at the filing/priority date and at the decision date of the EUIPO/BoA. For example, does the trade mark owner have to show that its trade mark still has a reputation at the decision date or an enhanced degree of distinctiveness acquired through use?
So this decision may not be the final chapter after all.
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