This is the second in a series of blogposts on CJEU decisions concerning the UK-EU Withdrawal Agreement by Luke Kelly and Charlotte McLean of Monckton Chambers. In this post, they provide an overview of certain of the Court’s decisions concerning IP rights.
One of the relatively active areas of European jurisprudence concerning the UK-EU Withdrawal Agreement has been on the topic of trademark and design right protection. Following Brexit, EU trademarks are no longer protected trademarks in the UK. However, the Withdrawal Agreement provides that during the transition period, EU law continued to operate unless otherwise provided in the Agreement (pursuant to Articles 126 and 127). It also provides that, under Article 54, holders of various EU intellectual property rights, including trademarks, registered or granted before the end of the transition period shall become the holders of comparable property rights in the UK.
This has led to a series of cases focused primarily on the ongoing relevance of UK trademarks, registered as EU trademarks before Brexit. Below is a summary of several of the Withdrawal Agreement related elements of those judgments:
The first post Brexit decision on this topic was Case T-421/18 Bauer Radio v EUIPO EU:T:2020:433. Bauer Radio opposed the registration of an EU trademark on the basis of trademarks registered previously in the UK, which it claimed were distinctive and had a reputation in the UK. The Court considered the impact of Brexit on the proceedings. Under Article 127 of the Withdrawal Agreement, EU law still applied during the transition period, and so earlier trademarks registered by Bauer received the same protection as previously as EU trademarks. The existence of a relative ground for opposition must be assessed as at the time of the application for registration of the contested mark. The fact the earlier trademark could lose its status as a mark registered in a Member State after the filing of the registration was in principle irrelevant to the outcome of the opposition (see paragraphs 29 to 38) (see Cases T-755/20 Nissan Motor Co Ltd v EUIPO EU:T:2021:769, T-756/20 Nissan Motor Co Ltd v EUIPO EU:T:2021:770, Case T-463/20 Industria de Diseno Textil v EUIPO EU:T:2021:842 and Case T-463/20 Sony Interactive Entertainment Europe v EUIPO EU:T:2021:530 which also applied this case).
The next development came in Case T-342/20 Indo European Foods v EUIPO – Chakari (Abresham Super Basmati Selaa Grade One World’s Best Rice) EU:T:2021:651. The Court reiterated that opposition to a trademark based on an earlier UK trademark was not invalid because of Brexit – the applicant applied for registration in 2017 and the EUIPO decision was in 2020 i.e. during the transition period. This meant that the same protections as under EU law applied. The Court also rejected the suggestion that the proceedings were purposeless because of Brexit. The case had to be decided on the basis of the legal rights that existed at the relevant time, and could not take into account events arising after the adoption of the contested decision which were not capable of affecting the merits of that decision. It also rejected EUIPO’s suggestion that the opposing party did not have an interest in proceedings – were the Board of Appeal’s decision remitted, it would have to make its decision by reference to the situation at the time the application was brought (see paragraphs 15 to 28). This decision was upheld by the CJEU in Case C-801/21 P.
In Case T-766/20 PrenzMarien GmbH v EUIPO ECLI:EU:T:2022:123, the General Court considered whether use of a mark in the UK prior to Brexit was relevant after Brexit, where the date of the contested decision fell within the transition period. The applicant submitted that the Withdrawal Agreement did not apply because the mark had only been used in the UK and not other Member States – there was no economic reason after Brexit to allow trade mark conflicts in the European Union. They argued that the unitary character of the EU trade mark corresponds to the concept of the European Union as a unitary territory with a single market, and the term ‘Union’ must be understood as meaning ‘territory of the European Union at the time of the last decision on the matter’, that is to say, at the time of the decision in the case. This argument was rejected. The UK was a member of the EU throughout the relevant period of use and so the proven use of the contested mark took place in the EU. No specific provision of the Withdrawal Agreement provides that the use of an EU trademark in the UK before Brexit was no longer to be regarded as use in the EU. The use of the mark in the UK was accordingly use in the EU during the relevant period (see paragraphs 14 to 32).
Case T-281/21 Nowhere Co Ltd v EUIPO EU:T:2022:139 concerned opposition to a trademark where the filing for registration, the filing of the notice of opposition, the rejection of that opposition by the Opposition Division, and the decisions of the Board of Appeal all took place before the end of the transition period. The only relevant document postdating the entry into force of the Withdrawal Agreement and the end of the transition period was the contested decision. Applying Bauer Radio, the Court confirmed that the earlier trademarks used in the UK were capable of forming the basis of opposition. The provisions of the Withdrawal Agreement on intellectual property (Articles 54 to 61) remain silent as regards the treatment of opposition brought in these circumstances. The Court noted that it would however be possible for the applicant for registration to file a new application for registration of the mark as soon as the transition period expired as there would no longer be any conflict with earlier trademarks (see paragraphs 24 to 46). Judgment in the appeal is pending – AG Capeta’s Opinion of 10 April 2025 proposes that the Court dismiss the appeal, noting that the finding that the Withdrawal Agreement does not regulate the outcome of oppositions filed prior to the end of the transition period but decided thereafter did not conflict with the principle of territoriality.
In Case T-222/21 Shopify v EUIPO EU:T:2022:633, Shopify applied for a declaration of invalidity of an EU trademark, based on an earlier EU mark registered in 2017. The EUIPO dismissed the application. The decision post-dated the end of the transition period, and so the situation was different to that in Indo European Foods. As part of its decision (which upheld the EUIPO decision), the Court rejected evidence of the mark’s enhanced distinctiveness because at the time that the evidence concerning the mark’s use in the UK was submitted, the UK had left the EU (although the evidence related to its use prior to Brexit). For the evidence of enhanced distinctiveness of the earlier mark acquired through use in the UK to be relevant for the application for a declaration of invalidity, that use must still be capable of being relied on at the date on which EUIPO rules on the application for a declaration of invalidity. At the time of the contested decision the UK had left the EU (see paragraphs 96 to104).
In Case T-679/20 Dr. August Wolff v EUIPO EU:T:2025:421, the Court considered an application for the declaration of the invalidity of an EU trademark on the basis of earlier UK marks. The Board of Appeal made its decision during the transition period. EUIPO argued that since the transition period had expired by the time of the appeal, the proceedings before the Court were devoid of purpose as the earlier marks had no legal effect in the EU. Under the Withdrawal Agreement, holders of EU trademarks registered until 31 December 2020 are automatically held to have a trademark in the UK. The Court rejected this argument, finding that the end of the transition period was irrelevant for the purposes of reviewing the legality of the decision taken before the end of that period. The fact that the transition period had come to end also did not remove the applicant’s interest in obtaining an annulment of the contested decision (see paragraphs 20 to 32). The decision is subject to appeal.
Summary
These cases indicate that the EUIPO has adopted a relatively aggressive position as regards the relevance of UK trademarks post Brexit. The General Court and CJEU have in contrast been careful to delineate between cases where proceedings concern a EUIPO decision taken before or after the end of the transition period. The relevance of these cases is likely to be relatively short lived, as we move further away from the end of the transition period and so contested decisions become increasingly likely to have been adopted after its end.
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