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updated on 22 November 2022
QuestionAre earlier UK IP rights still applicable in the EU?
Trademarks and the law of passing off
Trademarks are legally registered signs that allow individuals and businesses to differentiate their goods and services. A well-known trademark is the Chanel trademark. We can all spot a Chanel bag, perfume or clothing item when we see the two overlapping ‘Cs’ and we’re confident that anything sold by Chanel is of good quality and on-trend. This goodwill and reputation Chanel has made for itself can easily be exploited by knock-off brands. To prevent this, trademarks give creators the right to stop third parties from using their marks in an offensive or commercially exploitative manner and registering them at intellectual property offices. The law of passing off works in a similar way to trademarks but unlike trademarks, the law of passing off isn’t confined to marks that are registered.
Prior to Brexit, an EU-registered trademark (EUTM) subsisted within the UK and UK rights holders were able to oppose registered EUTMs and applications. However, the European Union’s Intellectual Property Office (EUIPO) communicated that after the end of the Brexit transition period, on 31 December 2020, UK rights could no longer support a challenge to an EUTM application or registration. Proceedings that were based only on UK rights were dismissed and evidence relating to use in the UK was no longer relevant. However, the case of Nowhere Co Ltd v EUIPO has alluded to whether such rules are correct.
Nowhere Co Ltd v EUIPO
An EU trademark application was filed on 30 June 2015. Nowhere Co Ltd (Nowhere) opposed this mark based on the law of passing off. This case went to EUIPO Board of Appeal after the end of the transition period on 10 February 2021 and was dismissed. The EUIPO held that earlier rights must exist both at the filing date and the date of the decision and in this case the earlier UK rights didn’t exist at the date of the decision. Nowhere appealed to the General Court, which then dismissed the EUIPO’s judgment and ordered the EUIPO to pay costs. The General Court had held that the filing date of the trademark application was relevant for the purposes of identifying the applicable law to the case, and the law present on the date of the decision was irrelevant. The EUIPO has now appealed the decision to the European Court of Justice.
While we don’t know the final outcome of this case the decision of this case may have a huge impact on invalidity and opposition applications filed at EUIPO by UK rights holders. If the General Court’s judgment is confirmed, then it remains possible for UK rights holders to challenge EUTM applications or registrations. Subsequently, it may be wise for trademark owners to review their brand portfolio and strategy within the EU.
Nikhita Chauhan (she/her/hers) is a trainee solicitor in the corporate services team at DWF Group Plc.