Appeal brought on 23 May 2022 by the European Union Intellectual Property Office against the judgment of the General Court (Third Chamber) delivered on 16 March 2022 in Case T-281/21, Nowhere v EUIPO

(Case C-337/22 P)

(2023/C 15/24)

Language of the case: English

Parties

Appellant: European Union Intellectual Property Office (represented by: D. Hanf, D. Gája, V. Ruzek, E. Markakis, Agents)

Other party to the proceedings: Nowhere Co. Ltd

Form of order sought

The Appellant claims that the Court should:

— set aside in its entirety the judgment under appeal in Case T-281/21;

— dismiss in whole the action of the Applicant at first instance directed against the decision of the Second Board of Appeal in Case R 2474/2017-2;

— order the Applicant at first instance to pay the costs incurred by EUIPO relating to the present appeal and to the proceedings before the General Court.

Pleas in law and main arguments

In support of its appeal, EUIPO puts forward a single plea in law, namely infringement of Article 8(4) of Regulation 207/2009 (1) by the judgment under appeal in holding that the Board of Appeal should have taken into account the earlier UK non-registered rights relied upon as basis of the opposition despite the fact that the contested decision was taken at the moment when the UK was no longer a Member State of the European Union, and the transition period provided in the Withdrawal Agreement (2) had ended. This raises an issue that is significant with respect to the unity, consistency and development of Union law.

The General Court incorrectly considered that the only relevant point in time in respect of which the opposition must be assessed is the filing date of the contested EU trade mark application,

i. having conflated the issue of determining the law applicable ratione temporis to the present case, on the one hand, and the substantive question of the need of validity of the earlier right on the date EUIPO takes the final decision on the opposition, on the other,

ii. having relied on its own, incorrect, case-law, in any event not applicable to the case at hand,

iii. having drawn an incorrect legal conclusion from the absence of any provisions in the Withdrawal Agreement concerning oppositions brought before the end of the transition period against EU trade mark applications,

iv. having disregarded the Court of Justice’s case law concerning differences between infringement and administrative/registration proceedings and consequently erroneously holding that a. there was a conflict between the contested EU trade mark application and the earlier UK rights in the period between the filing date of the contested EU trade mark application and the end of the transition period and that b. the Applicant at first instance had, after the end of the transition period, a legitimate interest in the success of its opposition.

v. having disregarded the legislator’s will and the principle of territoriality of intellectual property rights when it held that a possible conversion of the contested EU trade mark application in national trade marks that would be identical in their scope of protection to that of the contested EU trade mark application if registered, had no bearing a. on the Applicant in first instance’s interest in the success in the opposition and b. on the existence of a conflict between the earlier UK rights and the contested EU trade mark application,

vi. having failed to give proper weight to the wording, that is, grammar and syntax, of the provision of Article 8(4) of Regulation 207/2009, to the context of the provisions of Rules 19(2)(d) and 20(1) of Regulation 2868/95 (3) concerning substantiation of the earlier rights, to the context of the provisions of Article 42 of Regulation 207/2009 concerning the proof of use defence, and in particular to the objectives of Article 8(4) of Regulation 207/2009 and essential purpose of opposition proceedings, which is to protect interests of proprietors of earlier rights in preserving the essential function of those rights against conflicts with later EU trade marks, in case the latter would be registered.

(1) Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009, L 78, p. 1).

(2) Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community2019/C 384 I/01 (OJ 2019, C 384I, p. 1).

(3) Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995, L 303, p. 1).