In a spate of recent cases, the EU General Court and the UK High Court have clarified some of the outstanding trade mark issues caused by Brexit.

Key points to note from the decisions are:

• The EU General Court has held that the relevant date for assessing a relative ground of opposition in the context of Brexit is the priority/filing date of the EUTM opposed. If that date is on or before 31 December 2020, UK prior rights should be taken into account. This ruling could have a number of important implications for rights holders (see below).
• The EU General Court has declared an appeal inadmissible as the UK lawyers representing the appellant were not authorised to act post-Brexit. The case is a useful reminder that, while UK lawyers might be able to continue to act on EUIPO and CJEU cases that were pending on 31 December 2020, they cannot act on appeals from the Board of Appeal to the CJEU. 
• The UK High Court has confirmed that extra-territorial relief is available in EUTM infringement cases pending in the UK on 31 December 2020 under Article 67 of the Withdrawal Agreement. While this only affects a small number of cases, it is useful clarification of Article 67.

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UK prior rights are relevant to EUTMs after all

In Inditex v EUIPO, the EU General Court has held that the relevant date for assessing a relative ground of opposition is the priority/filing date of the mark opposed. If that date is on or before 31 December 2020 (when the Brexit transition period ended), then UK prior rights should be taken into account. According to the court, the fact that an earlier trade mark could cease being a relevant prior right for the purposes of an opposition (eg because of the withdrawal of the member state concerned from the EU) is in principle irrelevant to the outcome of the opposition.

This decision goes against recent EUIPO practice which has been to disregard UK prior rights in all EUTM opposition and invalidity actions decided after the end of the Brexit transition period (and to dismiss any such actions based solely on UK prior rights). But, it is in line with (but goes further than) an earlier General Court decision in Indo European Foods v EUIPO (Basmati rice).

In Indo European Foods, the General Court held that UK prior rights (in that case, prior passing off rights) should be taken into account where the Opposition Division and Board of Appeal rulings were issued before the end of the Brexit transition period. The purpose of the General Court is to review the legality of the Board of Appeal decision. As the Board of Appeal decision had been issued before the end of the Brexit transition period, UK prior rights were still relevant.

Permission to appeal to the ECJ has been requested in both the Inditex and Indo European Foods cases. The Inditex case, in particular, has potentially very significant consequences for rights holders. Noteably:

• Those who have had their rights curtailed as a result of the EUIPO's practice of disregarding UK prior rights in opposition and invalidity actions should seek advice on any potential ways forward. This includes those who have had actions dismissed or confined to non-UK prior rights. 
• The decision suggests that opposition and invalidity actions based on UK prior rights could even be filed now, provided that the priority/filing date of the EUTM under attack pre-dates the end of the Brexit transition period. 
• The decision could have implications for other areas of EUIPO practice such as the practice of disregarding UK reputation for an EUTM even where that reputation was acquired before the end of the Brexit transition period or requiring prior rights to be in existence (not invalidated/revoked) when a decision is rendered.

EU General Court declares appeal inadmissible as UK lawyers representing appellant were not authorised to act post-Brexit

The EU General Court has held that an appeal (from a Board of Appeal decision) is inadmissible as the lawyers acting for the appellant were not entitled to act before the General Court. The two UK lawyers were authorised to practice before the UK courts and tribunals. But, the action was not covered by any of the situations set out in the Withdrawal Agreement entitling a UK lawyer to continue to represent an applicant in proceedings before the CJEU post-Brexit. This is a useful reminder that UK lawyers can only continue to act in:

• EUIPO (including Board of Appeal) proceedings if those proceedings were pending at the end of the Brexit transition period; and 
• CJEU (GC and ECJ) proceedings if those proceedings were pending at the end of the Brexit transition period.

An appeal from the Board of Appeal to the General Court does not fall within either of these categories.

Extra-territorial relief available in EUTM infringement cases pending in UK at end of Brexit transition period

The UK High Court has confirmed that extra-territorial relief is available in EUTM infringement cases pending in the UK on 31 December 2020 (the end of the Brexit transition period). The Court therefore dismissed an application to strike out a claim for such relief. Although the UK no longer has any courts designated as EUTM courts, Article 67 of the Withdrawal Agreement preserves the provisions of the EUTM Regulation relating to jurisdiction for cases pending at the end of the Brexit transition period. This includes jurisdiction to grant pan-EU injunctions under Article 130 of the EUTM Regulation, where appropriate. The Withdrawal Agreement also provides that the courts of all EU member states and the EUIPO will recognise and enforce any measures or judgments issued by the UK courts under Article 67.

The position is the same for EUTM courts in the remaining 27 EU member states – they can order measures and give judgments which extend to the UK in cases that were pending at the end of the transition period and the UK courts will recognise and enforce them. See, for example, the recent Aurora-Soma Products Limited decision issued by the District Court of the Hague.

This is a useful ruling since the wording of Article 67 is arguably not completely clear (although the court did not consider all potential issues around that wording in this case).