The APE TEES case: how Brexit shut the door on a trade mark opposition

In early February, the Court of Justice of the European Union ruled on Case C-337/22. Although it was an apparently technical matter, it is of considerable practical importance in the context of Brexit. The question was whether earlier rights based exclusively on UK law could continue to support an opposition before EUIPO, where the Office issues its decision after the end of the transition period. 

The dispute began in 2015 when Mr Junguo Ye applied to EUIPO to register the figurative trade mark APE TEES (no. 014319578), consisting of a stylised depiction of a monkey in shades of brown and yellow accompanied by the words 'APE TEES'. The application covered goods and services in Classes 3, 9, 14, 18, 25 and 35, including cosmetics, technological products, jewellery, leather goods, clothing and related commercial services. 

In March 2016, the Japanese company Nowhere Co. Ltd filed an opposition based, amongst other rights, on three unregistered figurative trade marks used in the United Kingdom, all of which featured a monkey as their central image. One showed only the monkey's head peering over a horizontal line; another depicted the monkey's face within a circle; and the third reproduced the monkey in full in a style closely resembling that of the applied-for mark. The legal basis for the opposition was Article 8(4) of Regulation 207/2009, which permits opposition to the registration of an EU trade mark if it is based on a non-registered sign that is protected under the law of a Member State. This is possible as long as the sign has given rise to earlier rights and confers on its proprietor the right to prohibit the use of a subsequent trade mark. In this case, Nowhere Co. Ltd relied on the UK common law action of passing off, which protects commercial goodwill against deceptive practices in the marketplace. 

The opposition proceedings were protracted. In 2017, the Opposition Division rejected the opposition, a decision that was subsequently set aside on account of an error attributable to EUIPO itself. In 2018, the Second Board of Appeal did likewise. In its second decision, issued in February 2021, the Board of Appeal again dismissed the appeal, this time on a ground directly connected to Brexit. Following the expiry of the transition period on 31 December 2020, rights based exclusively on UK law could no longer form the basis of an opposition before EUIPO. 

Nowhere appealed to the General Court and obtained a favourable judgment in March 2022. The General Court ruled that, as the application for the APE TEES trade mark had been filed before the UK's withdrawal from the EU, the unregistered UK trade marks remained relevant, despite EUIPO's subsequent ruling. The decisive moment was the date of filing of the application. 

EUIPO appealed on a point of law and the Court of Justice ruled in its favour, overturning the General Court's judgment. 

The essence of the ruling lies in the interpretation of Article 8(4), which the Court has divided into two distinct requirements. The first requirement is anteriority: the sign in question must have given rise to the acquisition of rights before the filing or priority date of the EU trade mark application. The second requirement concerns continued existence: at the time EUIPO adopts its decision, the sign in question must still confer on its owner the right to prohibit the use of a subsequent trade mark. 

The Court stressed that this second condition is written in the present tense, and that its wording and purpose prevent an opposition from succeeding on the basis of a right that has ceased to be effective before the decision is made. Rather than protecting historical or abstract conflicts, opposition proceedings protect the potential coexistence of two valid and enforceable rights within the territory of the Union at the time the Office makes its decision. 

Furthermore, the principle of territoriality must be considered. From the end of the transition period, UK law ceased to constitute the 'law of a Member State' referred to in Article 8(4). While the Withdrawal Agreement includes provisions for the continued protection of certain EU trade marks, it does not include a transitional rule that would permit rights based solely on UK law to be invoked in opposition proceedings where the decision is made after 31 December 2020. 

In response to the argument that this outcome left Nowhere without protection, the Court stated that an opposition before EUIPO examines potential conflicts between competing rights rather than actual use in the marketplace. If Nowhere held the right to prohibit use of the mark in the United Kingdom under UK law, it was entitled to enforce that right before the UK courts. However, this did not oblige EUIPO to accept an opposition based on rights that were no longer territorially relevant within the EU trade mark system. As a result, The Court of Justice resolved the dispute definitively without referring the matter back to the General Court, dismissing Nowhere's action. 

In summary, the ruling clarifies that, following Brexit, a UK right must not only have existed at the start of the proceedings, but also remain enforceable when the EUIPO issues its decision. For oppositions based exclusively on signs protected in the UK, it confirms that this option closed at the end of the transition period on 31 December 2020.