The Court of Justice of the European Union (CJEU) has handed down a judgment confirming that earlier rights may be relied upon for the purposes of EU trade mark opposition and invalidity proceedings only if they continue to have effect up to the date of the EUIPO’s final decision, and not merely at the time that the contested application for registration was filed. Although the judgment has broader implications, it provides particular clarity concerning the status of UK-based rights following the end of the Brexit transition period.

Background

The dispute arose from an application filed in June 2015 to register the following figurative sign as an EU trade mark:

In March 2016, a Japanese company, Nowhere Ltd (‘Nowhere’), filed a notice of opposition, relying on three non-registered figurative trade marks (below):

Nowhere’s opposition relied on Article 8(4) of the European Union Trade Mark Regulation (EUTMR), which permits opposition by the proprietor of a sign used in the course of trade of more than mere local significance where:

• rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark; and

• that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Nowhere’s position was that Article 8(4) applied in its case: its opposition was based on non-registered trade marks used in the course of trade in the United Kingdom and on the UK law of passing off. Crucially, Nowhere had also filed its opposition prior to the UK leaving the EU, at a time when such rights were capable of supporting an opposition under Article 8(4).

After the EUIPO’s Opposition Division initially rejected the opposition by Nowhere, a series of subsequent hearings followed before the case eventually fell to be determined by the Second Board of Appeal of the EUIPO.

It dismissed Nowhere’s appeal, holding that the rights on which Nowhere relied no longer had any effect for the purposes of opposition proceedings because, by the date of its decision, the United Kingdom had withdrawn from the EU and the transition period had expired. Therefore, Nowhere had no valid and enforceable ‘earlier rights’ on which to rely.

The Second Board of Appeal’s decision was subsequently overturned by the General Court, which held that the relevant date for establishing the validity of an earlier right in opposition proceedings is the filing date of the contested trade mark. Accordingly, given that the application had been filed before the end of the transition period, Nowhere’s rights could be relied upon, notwithstanding their subsequent loss of effect at the end of that period.

The EUIPO appealed to the CJEU. Prior to its judgment, there were conflicting views on the correct way forward, as some (including AG Cápeta in her opinion in April 2025) considered that the EUIPO’s appeal should be dismissed, while others contested that it would be wrong – and contrary to the established practice of the EUIPO – to grant an opposition based on an earlier right that no longer existed.

Decision of the CJEU

The central question before the Court was a simple one: at what point do earlier rights need to be valid in order to be relied upon in opposition proceedings?

The EUIPO argued that the proprietor of an earlier right is required to prove the existence, validity and scope of that right not only on the filing or priority date of the application for registration of the EU trade mark concerned in order to establish the priority of that right in relation to that application, but also on the date on which EUIPO gives its decision, in order to establish its continued existence.

For its part, Nowhere maintained its position that the only relevant date for the purpose of examining the opposition that it filed was the date on which the application for registration of the mark applied for was filed.

To resolve this, the CJEU turned to the precise wording of Article 8(4) EUTMR.

The Court noted that while Article 8(4)(a) refers to the acquisition of rights prior to the filing date, Article 8(4)(b) requires that the sign “confers” on its proprietor the right to prohibit use of the later mark. Importantly, the Court pointed out that the word ‘confers’ is drafted in the present tense and does not refer to any specific date on which it should be satisfied.

As a result, the Court held that “it is necessary, in order for [an] opposition to be upheld, that that earlier right confers on its proprietor the ‘right to prohibit the use of a subsequent trade mark’ under the legislation of a Member State or that of the European Union, not only on that date, but also at the later date on which that opposition was filed and until the date on which a decision is taken as to whether ‘the trade mark applied for shall not be registered’.

Applying this to the facts of the case, the rights relied on by Nowhere no longer had effect within the EU after the end of the transition period, including at the time the EUIPO reached its decision. As such, they could not support an opposition.

The CJEU therefore upheld the EUIPO’s appeal and set aside the judgment of the General Court.

To read the judgment in full, click here.