Baby Milo has become unwittingly embroiled in a procedural debate at the European Union Intellectual Property Office (EUIPO) with important practical consequences for EU trade mark oppositions: at what point in such proceedings must “earlier rights” exist?

Background

A European Union trade mark (EUTM) application for “APE TEES” was opposed by Nowhere Co Ltd (the entity responsible for BAPE) based on its UK unregistered rights, including passing off, in Baby Milo.  

At the time the opposition was filed, those UK rights were valid as a basis to oppose an EUTM. But by the time the EUIPO came to issue its decision, Brexit had taken effect and those rights no longer had effect within the EU legal framework.

The issue

The CJEU’s decision in EUIPO v Nowhere (C-337/22 P) clarifies a key point about EU trade mark oppositions. If you want to rely on an earlier right in EU opposition proceedings, it is not enough for that earlier right to exist at the filing date of the contested EU trade mark application. It must also remain in force and be enforceable at the time the EUIPO issues its final decision. If the right relied upon falls away during the proceedings, the opposition fails with it.

This decision clarifies a point that had become surprisingly uncertain given the differing decisions of the EUIPO and the EU appellate courts. It restores the EUIPO’s established approach that the relevant period to assess the rights relied on in an opposition stretches across the entire life of the proceedings.

Practical takeaways

The fact that earlier rights are no longer a “set and forget” asset in EUTM oppositions impacts prosecution practice in a number of ways.

The big picture point is that the risk to the opponent increases and extends throughout the opposition lifetime, which can last several years with appeals. This means that any earlier right is potentially vulnerable. Registrations can expire if not renewed. They can be revoked for non-use. They can be invalidated. Where any of those events occur before the decision, it can be fatal to an opposition. This, in turn, feeds through to the type of rights parties choose to rely on. For example, rights with shorter lifespans now carry greater risk in EU proceedings, simply because they may be less likely to survive to the end of a long-running case. Where possible, more stable registered rights may offer a safer foundation for EU opposition proceedings.

For rights holders, this puts a spotlight on portfolio management during opposition proceedings. It is no longer enough to file an opposition and focus purely on the trade mark arguments. The underlying right needs to be maintained and defended throughout. Renewal deadlines, use requirements and potential validity challenges all become part of managing an opposition.

For trade mark applicants, the decision opens up possibilities to fight oppositions on more strategic grounds rather than being based predominantly on a comparison between the rights asserted and applied for mark.  For example, can the earlier right relied on be challenged based on its durability? Is it close to expiry? Has it been genuinely used? Is it open to challenge? In some cases, there may be value in applying pressure to that right or simply allowing time to do the work.

Further EU-UK divergence

The BAPE ruling also creates further divergence between EU and UK trade mark practice. In the UK, the focus remains largely on the position at the filing date of the contested application. In the EU, the position at the date of decision is now critical. That means parallel disputes could produce different outcomes, and strategies may need to be adapted accordingly.

For any existing EUTM oppositions still ongoing that are based on UK-only rights (especially unregistered rights) that existed at the start of the opposition proceedings, these will no longer support the EU opposition following Brexit and the opposition can be expected to fail.