Navigating Relative Grounds Disputes in a Post-Brexit Era

In intellectual property law, particularly in trademark disputes, recent cases like BASMATI and APE TEES have stirred considerable interest among practitioners in the United Kingdom. These cases, along with the related SHOPPI decision, not only shed light on the aftermath of Brexit but also raise crucial questions regarding determining the relevant date for assessing relative grounds disputes at the European Union Intellectual Property Office (EUIPO).

The crux of the matter revolves around identifying the pertinent date for evaluating legal decisions. In the UK legal framework, there’s a longstanding understanding that only one relevant date exists for such assessments. However, EU case law introduced a nuanced approach, where, for EUTM relative grounds disputes, two distinct dates are deemed relevant: the filing date of the opposed application and the date of the decision by the EUIPO.

This duality in determining relevant dates stems from the METRO case, where it was established that the Board of Appeal must consider the facts as they stand at the time of its decision to safeguard the essential function of the trademark. However, Brexit has overshadowed this established principle, as highlighted in recent decisions such as BASMATI and APE TEES. The crux of the issue lies in whether earlier UK rights can be relied upon in opposition even though UK rights no longer hold validity for EU oppositions post-Brexit.

In the APE TEES decision, the General Court confirmed the view that the application’s filing date is decisive in identifying the applicable substantive law in relative grounds disputes. This clarity is crucial for ensuring legal certainty. However, the implications of these decisions, particularly in cases like BASMATI, are far-reaching. The decision not to allow reliance on earlier UK rights in EU oppositions poses significant challenges, especially concerning equity and the protection of trademark holders’ rights.

Consider the hypothetical scenario in the BASMATI case, where the opponent’s earlier UK rights are proven. Denying the opponent the ability to prevent registration of the later EUTM based on UK common law rights, as they existed on the relevant date, seems inequitable. The rejection of the EUTM application in favor of national rights in other EU territories might seem like the correct course of action. However, it raises concerns regarding legal correctness and the potential for system exploitation.

Moreover, the timing of decisions holds substantial implications for both parties involved. If the EUTM application is rejected, the applicant may still claim compensation for using the opponent’s mark in the UK during a specific period. Conversely, if the application is accepted, it could lead to legal complexities and potential claims for compensation for EU-wide use of the mark. Thus, determining the relevant date becomes pivotal in ensuring fairness and protecting the rights of all parties involved.

The upcoming decisions by the Court of Justice will provide much-needed clarity on this matter. These decisions must address the fundamental principle rather than merely focusing on the Brexit context. Whether it’s oppositions or relative grounds invalidity actions, the relevant date for assessment should ideally remain consistent, centered around the filing date of the application/registration.

In conclusion, while the BASMATI and APE TEES cases have sparked debates and uncertainties, they also present an opportunity to reaffirm foundational principles in trademark law. By addressing the complexities arising from Brexit and clarifying the determination of relevant dates, these cases can enhance legal certainty and fairness in trademark disputes within the EU framework.