When "earlier" is not enough: CJEU sets timing rules for validity of earlier rights in EU trademark opposition and invalidity proceedings

In its landmark decision C-337/22 P (EUIPO v. Nowhere)[1], the ECJ delivered crucial guidance on when an earlier trademark must be valid to prevail in EU opposition and invalidity proceedings. The takeaway is simple but powerful: dates matter twice.

To successfully oppose or invalidate an EU trademark, the earlier right must:

• be valid on the date of application or priority of the contested trademark, i.e. it must pre-date the contested mark; and
• still be valid and legally effective when the EUIPO issues its final decision on the merits, including at the appeal stage before the Board of Appeal.

In other words, an earlier right must survive the entire administrative process of proceedings.

If that right ceases to have effect before the final EUIPO decision – whether due to Brexit, revocation, expiry, surrender or loss of territorial protection – the opposition or invalidity action must fail and be dismissed (at least insofar as it relies on such right).

Why? Once the earlier right disappears (no longer "confers on its proprietor the right to prohibit the use of a subsequent [EU] trademark", see article 8(4) EUTMR), there is no longer a conflict between valid rights and thus no legitimate interest in blocking a later trademark.

The Brexit backdrop

The case arose from an opposition based on UK unregistered trademark rights that were valid at the time an opposition was filed. However, during the proceedings, the Brexit transition period ended and those (former) "earlier" UK rights no longer produced legal effects in the territory of the EU.

While the EUIPO Board of Appeal dismissed the opposition because the earlier right seized to have effect during the proceedings, the General Court of the EU (GC) overturned the decision, stating in the essence that the filing (or priority) date of the opposed trademark would be the only relevant point in time for which the validity of the earlier right must be assessed – thereby questioning established IP office practice and case law all across Europe. Now, the CJEU ultimately confirmed the EUIPO position: rights that no longer have effect in the EU cannot prevent the registration of an EU trademark.

The bigger picture

This ruling extends far beyond Brexit. It establishes a general principle: EU trademark proceedings are about preventing conflicts between existing rights. If the earlier right disappears, so does the conflict.

For trademark owners and practitioners, the message is clear: an earlier right must not only come first – it must also remain in force (at least until the EUIPO's final decision).

This makes it crucial to carefully consider which rights to rely upon in opposition and invalidity proceedings. Strategic portfolio assessment before bringing an opposition or application for invalidity is key.

At the same time, parties defending against oppositions should explore potential vulnerabilities of earlier rights invoked by the opponent and consider challenging such.

Author: Anna Katharina Tipotsch