Much for the first known decision from 2021 on dealing with UK trademarks in an affiliate opposition proceeding against union brands according to BREXIT: straight.de

#SorryBro – Trademark contrast from UK national brand to European brands

– Terhaag & Partner Rechtsanwälte’s success –
A short essay by RA Michael Terhaag, MA

The first (previously known) decision regarding dealing with English trademarks in opposition proceedings pending against trademark applications in the European Union before the European Intellectual Property Office (EUIPO). The original decision #SORRYBRO is available in English at https://www.aufrecht.de/9142 and we have already tried to make a German version available here at https://www.aufrecht.de/ 9143.

About the issue:

In the summer of 2017, the managing director of a local but internationally active fashion company mandated our law firm to apply for the registration of the word mark “#sorrybro” for clothing, headwear and footwear items with the European Trademark Office EUIPO. A trademark search for registered trademarks was conducted at the European Trademarks and Patent Office (EUIPO) as well as the authority responsible for Germany DPMA. In addition, the applicant was not aware of any corresponding labels for the usual clothing and accessories items from third parties.
In December 2017, he then received a warning over allegations of older rights for English comedian Ben Phillips, who not only claimed a fair degree of popularity, but also, according to his own information, the YouTube channel may be successful (with possibly Prankvideos) has been running, has a comic show and can verify two trademarks, the #SORRYBRO keyword tag and the word tag But it can only be protected in Great Britain.

After that, he filed an opposition against the European Union trademark with EUIPO, in which it relied on registered and unregistered trademarks, and a detailed decision on huete was taken four days ago by the opposition division of EUIPO.

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the decision:

In the context of the procedures, in addition to other extensive factual and legal reports, especially those that appeared at the beginning but were completed at the same time, the importance of Brexit has increased. It has often been said that the UK has only implemented Brexit since the end of 2020, but correctly, the UK had already left the EU on January 31, 2020 at 11 PM local time and midnight CET since then. , Is no longer entitled to take action on English trademarks against those of the European Union:

‘The opponent bases its objection on one or two trademark registrations in the United Kingdom.
Since the United Kingdom left the European Union in Janwary 31st at 11 pm UTC (midnight Central European Time), no longer a member state. Instead, it has been a third country since then.
An opposition based on registering a trademark from outside the European Union in the sense that it is from a third country has not been registered in Article 8 and cannot be successful. “

After the transition ended at the end of 2020, the opposition section of the European Union Intellectual Property Office submitted such an assessment on February 12, 2021 and basically decided:

1) On February 1, 2020, the United Kingdom (United Kingdom) withdrew from the European Union until December 31, 2020, subject to a transition period. During this transition period, European Union law remained in effect in the United Kingdom.
From 01/01/2021, UK rights will no longer be as protected as previous rights “in a member state” for actions on proportional grounds. The requirements for the application of Article 8, paragraphs 1, 4 and 5 of the European Convention on Emergency Control, which were formulated in the current model, must also be met at the time of the decision.

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2) Since unregistered trademarks are not protected at the European Union level, the unregistered trademark of the European Union is not a basis for eligibility for opposition.

3) The United Kingdom cannot be claimed as a valid territory in the relevant case, as the rights of the United Kingdom are no longer protected from the previous rights “in a Member State” for the purposes of the proceedings on a proportional basis.

4) The mere citation of the provisions of British law in the text of the opposition is not sufficient in any case to justify the opposition in relation to Article 8 (4) of the European Convention to the Basel Convention.

Thus the objection was rejected entirely.

The decision is not yet final, but from our point of view it is now the only correct decision and should be useful in many other procedures. We are happy with this success.

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