British trademark is no longer eligible to oppose the EU Trademark / EUIPO B 003029595

The European Union Intellectual Property Office (EUIPO) decided on a trademark discrepancy on February 12, 2021. The opponent is the owner of a word mark registered in Great Britain and a word mark / symbolic mark registered in Great Britain. Appellant objects to the presumed similar EU trademark registration by a German applicant.

What is the problem?

The United Kingdom left the European Union with effect from 1 January 2021. Therefore, the question was whether opposition based on trademarks registered in Great Britain before 01.01.2021 was permitted. The decisive factor in this question is the evaluation according to Article 8 (2) and Article 8 (1), (4) and (5) of ITU Regulation on Trademarks.

In addition to the question of how to deal with the ongoing proceedings, it was also questionable whether trademarks registered in the United Kingdom prior to 01.01.2021 still provided a basis for opposition proceedings to EUIPO.

Decision of the European Union Intellectual Property Office

The European Union Intellectual Property Mission rejected the opposition.

In the opinion of the European Union Intellectual Property Office, the drafting of the text of the regulation in its presence is crucial to the fact that the requirements of Article 8 paragraphs 1, 4 and 5 were still in place at the time of the decision, i.e. here after 01.01. 2021. So Great Britain still has to be a member state of the European Union. This is not the case because of Brexit. So I refused the opposition.

In the opinion of EUIPO, with the UK’s withdrawal on December 31, 2020, the protective effect of UK trademark rights as “prior rights in a member state” in the sense of art.

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Consequences of practice

In practice, the EUIPO decision has dire consequences for British trademark rights holders. The protective effect of trademarks registered in Great Britain is no longer an obstacle to the introduction of similar trademarks to the Union.

Even more interesting, however, is the question of freedom of action under trademark law that the decision of the European Union Intellectual Property Office opens up. Purely British trademark right holders are now defenseless from the territory of the European Union. The EUIPO decision expressly excludes any protective effect of trademark rights from the time of British membership in the European Union.

So British trademark rights holders should immediately check whether an extension of property rights to the territory of the European Union or individual member states makes sense.

The law firm Hämmerling von Leitner-Scharfenberg provides you with comprehensive and expert countrywide advice on trademark registration. Our trademark registration offer also includes a registrability check as standard. The same applies to advice on choosing the goods and services to be protected. Even after registration, we can support you to protect and defend your trademark.

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