In its judgment of 5 February 2026 (C-337/22 P), the Court of Justice (“CJEU”) clarified the impact of Brexit on EU trade mark opposition proceedings. The Court held that earlier rights based only on the law of the United Kingdom (“UK”) can no longer constitute a valid basis for opposition when the European Union Intellectual Property Office (“EUIPO”) adopts its decision after the end of the Brexit transition period on 31 December 2020.
Facts of the case
The dispute originated in June 2015, when Mr. Ye filed an application for an EU trade mark for the figurative sign “APE TEES”. This application was opposed by Nowhere Co. Ltd (“Nowhere”) on the ground of Article 8(4) of Regulation 207/2009 on the Community Trade Mark (“Regulation 207/2009”, repealed and replaced by Regulation 2017/1001 on the European Union Trade Mark). Nowhere based its opposition on three earlier unregistered UK trade marks used in the course of trade in the UK.
Following a complex procedural history, the second Board of Appeal of EUIPO rejected the opposition of Nowhere on 10 February 2021. It decided that, following the end of the Brexit transition period on 31 December 2020, rights based solely on UK law could no longer serve as a valid basis for opposition.
Nowhere challenged that decision before the General Court, which held that the existence of a prior right should be assessed at the filing date of the EU trade mark application. As the application had been filed before the end of the Brexit transition period, it concluded that the UK rights could still be taken into account. EUIPO then brought an appeal against this judgment before the CJEU.
Findings of the Court of Justice
The CJEU has set aside the judgment of the General Court and upheld the decision of EUIPO.
Interpretation of Article 8(4) of Regulation 207/2009
First, the Court analysed the wording of Article 8(4), which allows opposition to a new European trade mark based on non-registered signs when two conditions are met. On the one hand, the rights to that sign must be acquired prior to the filing date of the EU trade mark application. On the other hand, this earlier sign must entitle its holder to prohibit the use of a more recent trade mark under EU law or the law of a Member State.
While the first requirement serves to establish the priority of the earlier sign, the second condition requires that legal protection continues to exist during the proceedings. The Court of Justice observes that the wording of the provision, drafted in the present tense, precludes an opposition to succeed when it is based on earlier rights that ceased to have legal effect before EUIPO takes its decision.
Second, regarding the objectives of opposition proceedings, the Court emphasised the preventive purpose of these proceedings, aiming to avoid a potential conflict between the new EU trade mark and earlier rights. As in this case the EU trade mark would only become valid and enforceable after the Brexit transition period, there was no potential conflict with those earlier rights. As a result, the Court found that Nowhere no longer had a ‘legitimate interest’ in the refusal to register the EU trade mark.
Brexit and the principle of territoriality
Third, the Court focused on the principle of territoriality, under which the legal effects of a trade mark are limited to the territory in which it is protected.
The Court found that the Withdrawal Agreement between the EU and the UK did not provide for an EU trade mark registered after the end of the transition period to have effect in the territory of the UK, nor did it provide the continuation of UK rights in pending opposition proceedings. Consequently, at the end of the Brexit transition period, rights based only on UK law no longer fall within the territorial scope of EU law. As a result, no potential conflict could arise between an earlier UK sign and an EU trade mark registered after the end of the transition period, as they have legal effect in different territories.
The Court of Justice held that, given the state of the proceedings, it could give final judgment and dismissed the action brought by Nowhere against the decision of EUIPO.
Final remarks
By confirming EUIPO’s pre-existing practice in opposition proceedings regarding the temporal assessment of earlier rights, the judgment ensures predictability and procedural stability.
While the case arose in the specific context of Brexit, the Court’s reasoning has broader implications as it applies to any earlier rights that may lose enforceability during opposition proceedings for example, by revocation, surrender, expiry or changes in territorial protection.
Finally, this ruling might have some strategic consequences. As the durability of earlier rights becomes a decisive factor, applicants may attempt to challenge the earlier right during the opposition proceedings. As a result, the opposing party should monitor the validity and enforceability of their earlier rights throughout the entire opposition proceedings.