The Opposition Division of EUIPO has ruled that trade marks protected in the UK can no longer form the basis of an opposition to an EU trade mark application from the end of the transitional period on 31/12/2020. The full decision is available on the EUIPO website (https://euipo.europa.eu/eSearchCLW/#basic/*//number/003029595).
The United Kingdom has left the European Union with effect from 01/02/2020 (“Brexit”). Until 31/12/2020, there was a transitional period during which EU rules, including the EU Trade Mark Regulation, remained applicable in the UK. During this transitional period, national trade marks protected in the UK therefore could continue to form the basis of an opposition against an EU trade mark application. The Opposition Division of EUIPO now had to decide on the fate of national UK rights in opposition proceedings initiated before the expiry of the transitional period.
The opponent had filed oppositions against the EU trade mark application “sorrybro#” on the basis of, inter alia, two trade marks “#sorrybro” registered in the UK. In addition, the opponent had claimed to have unregistered trade marks “#sorrybro” in a large number of Member States, including the United Kingdom.
The Opposition Division rejected the opposition in respect of UK national rights. The basis of an opposition against an EU trade mark application can (only) be rights protected “in a Member State” of the EU (Article 8(1), (4) and (5) UMV). It follows from the wording of that provisions (in the present tense) that the requirement of protection “in a Member State” must (still) be fulfilled at the time of the decision. This is no longer the case with respect to the national rights in the United Kingdom. After the end of the transitional period, national UK trade marks ceased ex lege to be as rights protected “in a Member State” of the EU. The opposition is therefore rejected in relation to these rights.
This clarifies that UK trade marks can no longer form the basis of an opposition to an EU trade mark application. In ongoing opposition proceedings, oppositions must therefore be rejected insofar as they are based on national UK rights. As Article 60(1) EUTMR (“relative grounds for invalidity”) refers to Article 8(1) EUTMR, the same must apply in cancellation proceedings based on earlier UK rights.
