The General Court recently issued an interesting and potentially helpful decision for UK rights holders undergoing proceedings at the EUIPO. Whilst I suspect that this case will have limited application, it is certainly worth consideration if the relevant facts apply.
In brief, the General Court has not followed the EUIPO's declaration that all UK rights are to be dismissed from all EUIPO proceedings due to Brexit.
In this particular case, an EUTM application for a figurative mark containing the element 'basmati' was opposed in 2017 on the basis of an earlier non-registered word in the UK for BASMATI. The Opponent argued that it had grounds under the extended form of passing off in the UK. This argument was dismissed in April 2019 and the Opponent appealed in May 2019. This appeal was subsequently dismissed in April 2020. Whilst the Board of Appeal found that the first three conditions of the extended form of passing off were met, they argued that the Opponent did not satisfy the final criteria (details of the four criteria below). The Opponent appealed to the General Court in June 2020, with a hearing taking place on 29 June 2021.
In addition to considering the point of law, the General Court were also required to consider whether the appeal was valid given that the UK left the EU on 31 December 2020 after the expiry of the transition period. The EUIPO has taken the position that any on-going actions relying solely on UK rights at the time of exit were to be dismissed. Where an action includes a valid EU right, the UK right would be removed from the action. Accordingly, the EUIPO argued that should apply here and the opposition be dismissed on that basis.
However, the General Court rejected this argument as the rights were valid when the mark were filed and opposed, and at the date of the Board of Appeal decision in April 2020. Therefore, it would appear that it is not always the case that all pending EU proceedings based solely on UK rights should be dismissed.
Should you require any advice on EU proceedings, do get in touch.
* first, the name ‘basmati’ denotes a clearly defined class of goods; secondly, that name has a reputation giving rise to goodwill amongst a significant section of the UK public; thirdly, the applicant is one of many traders entitled to rely upon the goodwill associated with that name; fourthly, there is a misrepresentation by the trade mark applicant leading or likely to lead the public to believe that the goods offered under the contested sign are ‘basmati’ rice; and fifthly, the applicant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by that misrepresentation. (para 11)