1

By its appeal, the European Union Intellectual Property Office (EUIPO) seeks to have set aside the judgment of the General Court of the European Union of 16 March 2022, Nowhere v EUIPO – Ye (APE TEES) (T‑281/21, EU:T:2022:139; ‘the judgment under appeal’), by which the General Court, first, annulled the decision of the Second Board of Appeal of EUIPO of 10 February 2021 (Case R 2474/2017-2), relating to opposition proceedings between Nowhere Co. Ltd and Mr Ye (‘the decision at issue’), and, second, dismissed the action brought by Nowhere as to the remainder.

2

Under the first paragraph of Article 58a of the Statute of the Court of Justice of the European Union, an appeal brought against a decision of the General Court concerning a decision of an independent board of appeal of EUIPO is not to proceed unless the Court of Justice first decides that it should be allowed to do so.

3

In accordance with the third paragraph of Article 58a of that statute, an appeal is to be allowed to proceed, wholly or in part, in accordance with the detailed rules set out in the Rules of Procedure of the Court of Justice, where it raises an issue that is significant with respect to the unity, consistency or development of EU law.

4

Under Article 170a(1) of those rules, in the situations referred to in the first paragraph of Article 58a of that statute, the appellant is to annex to the appeal a request that the appeal be allowed to proceed, setting out the issue raised by the appeal that is significant with respect to the unity, consistency or development of EU law and containing all the information necessary to enable the Court of Justice to rule on that request.

5

In accordance with Article 170b(1) and (3) of those rules, the Court’s decision on the request that the appeal be allowed to proceed is to be taken as soon as possible in the form of a reasoned order.

6

In support of its request that the appeal be allowed to proceed, EUIPO claims that its single ground of appeal raises issues that are significant with respect to the unity, consistency and development of EU law.

7

In that regard, in the first place, EUIPO reiterates the content of its single ground of appeal and the six parts of which it is composed.

8

First, by its single ground of appeal, EUIPO submits that the General Court infringed Article 8(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). According to EUIPO, the General Court wrongly held, in paragraphs 28 to 31 of the judgment under appeal, that, since the substantive law applicable ratione temporis was determined by the filing date of the application for registration and the application for registration of the contested mark was filed before the expiry of the transition period established by Articles 126 and 127 (‘the transition period’) of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the Withdrawal Agreement’), which was adopted on 17 October 2019 and entered into force on 1 February 2020, the Board of Appeal should have taken into account the earlier non-registered UK trade marks relied on by the applicant at first instance. Moreover, the General Court wrongly rejected, in paragraph 46 of that judgment, the argument that the relevant date with regard to the outcome of the dispute at issue is the date on which the decision at issue was adopted.

9

Second, by the first part of the single ground of appeal, EUIPO is criticising the General Court for having confused, in paragraphs 28 to 31 of the judgment under appeal, the preliminary issue of determining the applicable law ratione temporis with the procedural and substantive issue of the validity of the earlier right on the date of adoption of the decision on the opposition.

10

Third, by the second part of the single ground of appeal, EUIPO submits that, in paragraphs 29 and 30 of the judgment under appeal, the General Court wrongly relied on case-law that is not applicable in the present case, since that case-law relates to the fact that the earlier right could no longer be capable of being relied upon after the adoption of the decision which was the subject matter of the action before the General Court, that fact having no bearing on the lawfulness of that decision.

11

Fourth, by the third part of the single ground of appeal, EUIPO complains that the General Court wrongly relied on the absence, in the Withdrawal Agreement, of any provision relating to oppositions filed before the end of the transition period, instead of applying the general rule that the earlier right must be valid at the time when the final decision on the opposition is adopted.

12

Fifth, by the fourth part of the single ground of appeal, EUIPO claims that the General Court failed to have regard to the case-law of the Court of Justice concerning the distinction between infringement proceedings and administrative proceedings relating to EU trade marks, as set out, inter alia, in paragraph 47 of the judgment of 21 February 2013, Fédération Cynologique Internationale (C‑561/11, EU:C:2013:91), and paragraphs 61 and 62 of the judgment of 21 July 2016, Apple and Pear Australia and Star Fruits Diffusion v EUIPO (C‑226/15 P, EU:C:2016:582), by wrongly assuming that refusal to register the contested EU trade mark would ensure the protection of earlier rights against unlawful use of that mark, during the period between the date of filing of that mark and the end of the transition period. Consequently, according to EUIPO, that error of law led the General Court to conclude, incorrectly, in paragraph 42 of the judgment under appeal, first, that there was a conflict between that EU trade mark application and the earlier UK rights at issue during that period and, second, that the applicant at first instance had a legitimate interest in the success of its opposition.

13

Sixth, by the fifth part of the single ground of appeal, EUIPO complains that the General Court failed to take account of the intention of the EU legislature, which is reflected in Article 1(2) of Regulation No 207/2009, and of the principle of the territoriality of intellectual property rights in finding, in paragraph 45 of the judgment under appeal, that a possible conversion of the contested EU trade mark application into national trade mark applications would not have an effect on the interest of the applicant at first instance in the success of the opposition or on the existence of a conflict between the earlier UK rights and the EU trade mark concerned by that application, and between those rights and any national trade marks resulting from the conversion of that application.

14

Seventh, by the sixth part of the single ground of appeal, EUIPO criticises the General Court for failing to interpret, in paragraphs 30, 31, 34 and 36 to 39 of the judgment under appeal, Article 8(4) of Regulation No 207/2009 in the light of its wording, context and objectives, contrary to the requirements of the case-law of the Court of Justice and, in particular, for disregarding the objective, referred to in that provision, of protecting the interests of proprietors of earlier rights by preserving the essential function of those rights in relation to conflicts with possible subsequent EU trade marks.

15

In the second place, EUIPO submits that the appeal raises the issue of the effect of the fact that, during the administrative proceedings, the earlier right ceased, ex nunc, to be capable of being relied upon, on the opponent’s interest in the success of the opposition proceedings and whether or not it is obliged to take that right into consideration, since that issue is significant with respect to the unity, consistency and development of EU law, within the meaning of the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union.

16

In that regard, first, EUIPO claims that the appeal raises a cross-cutting issue, that is to say, whether the fundamental condition of an interest in bringing proceedings and in pursuing the proceedings before the EU judicature, set out in particular in paragraph 42 of the judgment of 7 June 2007, Wunenburger v Commission (C‑362/05 P, EU:C:2007:322), and recalled in points 63 to 68 of the Opinion of Advocate General Pitruzzella in Izba Gospodarcza Producentów i Operatorów Urządzeń Rozrywkowych v Commission (C‑560/18 P, EU:C:2019:1052), is relevant for the interpretation of provisions such as Article 8(4) of Regulation No 207/2009 which govern administrative proceedings relating to EU trade marks. Furthermore, that question relates to the purpose of the opposition proceedings, in the light of the essential function of the earlier right, which constitutes one of the foundations of intellectual property rights and the EU trade mark system.

17

Second, EUIPO claims that the issue raised by the appeal goes beyond the grounds of the appeal themselves, so that clarification by the Court of Justice is necessary both for individuals and for the competent national authorities. First of all, that issue is not exclusively linked to the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union, but extends to any other case of the earlier right ceasing, ex nunc, in the course of the administrative proceedings, to be capable of being relied upon, in particular in the context of the frequent circumstances in which that right has expired, has been revoked or has been surrendered in the course of those proceedings. Next, that issue is not limited to the interpretation of Article 8(4) of Regulation No 207/2009 or the earlier non-registered trade marks ceasing to be capable of being relied upon, but extends to all relative grounds for refusal and invalidity, provided for in Articles 8 and 53 of that regulation, and to the failure to be able to rely, on those grounds, on any earlier right, since that earlier right may be a right of more than mere local significance, an EU trade mark, a national trade mark, a copyright, a design or a patent. Lastly, that same issue concerns not only proceedings before EUIPO, but all proceedings before the national administrative or judicial authorities concerning relative grounds for refusal and invalidity based on earlier rights, in accordance with the national laws transposing Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1), in particular Article 5 thereof.

18

Third, EUIPO submits that the issue raised by the appeal concerns the question already examined by the Court of Justice of the fundamental difference between administrative proceedings relating to EU trade marks and infringement proceedings, which the General Court failed to take into account in the judgment under appeal.

19

Fourth, EUIPO claims that that issue relates to the fundamental principle of territoriality of intellectual property rights, which the General Court disregarded in concluding that there was a potential conflict between the earlier UK rights and national trade marks resulting from a possible conversion of the contested EU trade mark application.

20

Fifth, EUIPO claims that the same issue has been treated differently in the case-law of the General Court. According to EUIPO, until recently, it was consistently apparent from the judgments of the General Court, in particular the judgments of 13 September 2006, MIP Metro v OHIM – Tesco Stores (METRO) (T‑191/04, EU:T:2006:254, paragraphs 30 to 34 and the case-law cited), and of 2 June 2021, Style & Taste v EUIPO – The Polo/Lauren Company (Representation of a polo player) (T‑169/19, EU:T:2021:318, paragraphs 22 to 32 and the case-law cited), and the order of 20 July 2021, Coravin v EUIPO – Cora (CORAVIN) (T‑500/19, not published, EU:T:2021:493, paragraphs 32 to 47 and the case-law cited), that the earlier right must be valid at the time when EUIPO decides on the opposition or the application for a declaration of invalidity. By contrast, the General Court departed from that case-law in a series of judgments delivered in the context of the United Kingdom’s withdrawal from the European Union, in particular in the judgments of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE) (T‑598/18, EU:T:2020:22), and of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS) (T‑421/18, EU:T:2020:433), from which it is apparent, in essence, that only the validity of that earlier right on the date on which the EU trade mark application was filed is relevant. In the judgment under appeal, the General Court ignored the existence of those diverging lines of case-law and did not explain the approach taken in that judgment, which in itself raises an issue that is significant with respect to the unity, consistency and development of EU law.

21

Sixth, EUIPO states that the appeal touches on the fundamental principle of unity of EU trade marks, which reflects the EU legislature’s intention to provide for a unitary system for EU trade marks, as an alternative to national trade marks, for undertakings wishing to develop their activities at EU level, and raises the issue of the division of powers between the legislature and the judiciary, since the General Court substituted a new rule for the general rule according to which the earlier right must be valid at the time of the adoption of EUIPO’s final decision on the opposition.

22

Seventh, EUIPO submits that the General Court’s approach in the judgment under appeal entails a risk of legal uncertainty and lack of reciprocity, in that it disregards the effects of Article 50(3) TEU and Articles 126 and 127 of the Withdrawal Agreement and imposes on it the obligation to examine a relative ground for refusal in relation to a territory in which the contested EU trade mark will not enjoy any protection. Such an approach would thus risk creating an unfair imbalance in favour of UK rights, which are better protected in the European Union than EU trade marks in the United Kingdom.

23

As a preliminary point, it must be recalled that it is for the appellant to demonstrate that the issues raised by its appeal are significant with respect to the unity, consistency or development of EU law (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 20 and the case-law cited).

24

Furthermore, as is apparent from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read together with Article 170a(1) and Article 170b(4) of the Rules of Procedure, the request that an appeal be allowed to proceed must contain all the information necessary to enable the Court to give a ruling on whether the appeal should be allowed to proceed and to specify, where the appeal is allowed to proceed in part, the pleas in law or parts of the appeal to which the response must relate. Given that the objective of the mechanism provided for in Article 58a of that statute whereby the Court determines whether an appeal should be allowed to proceed is to restrict review by the Court to issues that are significant with respect to the unity, consistency and development of EU law, only grounds of appeal that raise such issues and that are established by the appellant are to be examined by the Court in an appeal (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21, and of 7 June 2022, Magic Box Int. Toys v EUIPO, C‑194/22 P, not published, EU:C:2022:463, paragraph 14).

25

Accordingly, a request that an appeal be allowed to proceed must, in any event, set out clearly and in detail the grounds on which the appeal is based, identify with equal clarity and detail the issue of law raised by each ground of appeal, specify whether that issue is significant with respect to the unity, consistency or development of EU law and set out the specific reasons why that issue is significant according to that criterion. As regards, in particular, the grounds of appeal, the request that an appeal be allowed to proceed must specify the provision of EU law or the case-law that has been infringed by the judgment or order under appeal, explain succinctly the nature of the error of law allegedly committed by the General Court, and indicate to what extent that error had an effect on the outcome of the judgment or order under appeal. Where the error of law relied on results from an infringement of the case-law, the request that the appeal be allowed to proceed must explain, in a succinct but clear and precise manner, first, where the alleged contradiction lies, by identifying the paragraphs of the judgment or order under appeal which the appellant is calling into question as well as those of the ruling of the Court of Justice or the General Court alleged to have been infringed, and, second, the concrete reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 22 and the case-law cited).

26

In the present case, it follows from paragraphs 28 to 31 of the judgment under appeal, cited by EUIPO, that, according to the General Court, it follows from its ‘now settled’ case-law, that, as in the case-law of the Court of Justice, according to which it is the date of filing of the application for registration of a mark against which an opposition is brought that is decisive for the purposes of identifying the applicable substantive law, the existence of a relative ground for refusal must be assessed at the time when that application for registration is filed. Therefore, the fact that the earlier mark might lose the status of a trade mark in a Member State after the filing of the application for registration of the EU trade mark, in particular following the possible withdrawal of the Member State concerned from the European Union, is irrelevant. The General Court concluded from this, first, that since the application for registration of the contested mark had been filed before the expiry of the transition period, or even before the entry into force of the Withdrawal Agreement, the earlier non-registered marks relied on in support of the opposition brought against that application were, in so far as they had been used in the course of trade in the United Kingdom, in principle, capable of forming the basis for such an opposition and, second, that the Board of Appeal should have taken them into account in its assessment, but refused to do so solely on the ground that the transition period had expired at the time of adoption of that decision.

27

Furthermore, in paragraph 42 of the judgment under appeal, also cited by EUIPO, the General Court held that, even if it were to be accepted that, after the end of the transition period, a conflict between the marks at issue could no longer arise, the fact remained that, if the mark applied for was registered, such a conflict could nevertheless have existed during the period between the date on which the EU trade mark application was filed and the expiry of the transition period. The General Court concluded, as EUIPO points out, that the applicant at first instance had a legitimate interest in the success of its opposition in relation to that period.

28

Accordingly, in the context of the United Kingdom’s withdrawal from the European Union and the expiry of the transition period during the administrative proceedings before EUIPO, the General Court, as EUIPO points out, held, in paragraph 46 of the judgment under appeal, that none of the arguments put forward by EUIPO was capable of supporting its position that the date of adoption of the decision at issue, the only event in the present case which took place after the expiry of the transition period, was the relevant date with regard to the outcome of the case and that the single plea in law should therefore be upheld and the decision at issue annulled, in accordance with the first head of claim put forward by the applicant at first instance.

29

It should be noted, in the first place, that EUIPO describes its single ground of appeal, alleging infringement of Article 8(4) of Regulation No 207/2009, precisely and clearly, stating, first of all, that the General Court confused the preliminary question of determining the applicable law ratione temporis with the procedural and substantive question of the validity of the earlier right on the date of adoption of the decision on the opposition, next, that the General Court disregarded the distinction, established by the case-law of the Court of Justice, between infringement proceedings and administrative proceedings relating to EU trade marks by assuming that refusal to register the contested EU trade mark application would ensure the protection of earlier rights against unlawful use of that mark in the period between the filing of that application and the end of the transition period, and, lastly, that the General Court, contrary to the case-law of the Court of Justice, failed to take account of the objective, referred to in Article 8(4) of Regulation No 207/2009, of protecting the interests of the proprietors of earlier rights by preserving the essential function of those rights in relation to conflicts with subsequent EU trade marks.

30

In particular, as regards, inter alia, the arguments that the General Court failed to have regard to the case-law of the Court of Justice concerning the distinction between infringement proceedings and administrative proceedings relating to EU trade marks, as resulting from the judgments of 21 February 2013, Fédération Cynologique Internationale (C‑561/11, EU:C:2013:91, paragraph 47), and of 21 July 2016, Apple and Pear Australia and Star Fruits Diffusion v EUIPO (C‑226/15 P, EU:C:2016:582, paragraphs 61 and 62), the settled case-law of the General Court on the effects of the earlier right ceasing to be capable of being relied upon during opposition proceedings and invalidity proceedings before EUIPO, as resulting from the judgments of 13 September 2006, MIP Metro v OHIM – Tesco Stores (METRO) (T‑191/04, EU:T:2006:254, paragraphs 30 and 34), and of 2 June 2021, Style & Taste v EUIPO – The Polo/Lauren Company (Representation of a polo player) (T‑169/19, EU:T:2021:318, paragraphs 22 to 32 and the case-law cited), and the objective of Article 8(4) of Regulation No 207/2009, which is to protect the essential function of the earlier mark, it must be held that EUIPO identified both the paragraphs at issue of the judgment under appeal and the paragraphs of the decisions and provisions allegedly infringed.

31

In the second place, EUIPO criticises the General Court, in particular, for having concluded, in paragraph 31 of the judgment under appeal, that the earlier non-registered UK trade marks at issue were, in principle, capable of forming the basis for the opposition of the applicant at first instance and that the Board of Appeal should therefore have taken them into account in its assessment, notwithstanding the fact that the transition period had expired at the time of the adoption of the decision at issue, and, in paragraph 42 of that judgment, for having specified, in response to an argument from EUIPO, that the applicant at first instance had a legitimate interest in the success of its opposition in respect of the period between the date of filing of the contested EU trade mark application and the date on which the transition period expired. As EUIPO points out, it was on the basis, inter alia, of those considerations that the General Court annulled the decision at issue. Thus, it is clear from the request that the appeal be allowed to proceed that the allegedly incorrect interpretation of the procedural and substantive requirements applicable to opposition proceedings before EUIPO, adopted by the General Court, had a decisive impact on the outcome of the judgment under appeal.

32

In the third place, in accordance with the burden of proof which lies with an appellant requesting that an appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law invoked in its appeal, the appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 27).

33

In order to demonstrate that that is the case, it is necessary to establish both the existence and significance of such issues by means of concrete evidence specific to the particular case, and not simply arguments of a general nature (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 28).

34

In the present case, EUIPO identifies the issue raised by its single ground of appeal, which consists, in essence, in determining the date and circumstances to be taken into account in assessing the legitimate interest of the proprietor of an earlier right in the success of an opposition to an EU trade mark application and EUIPO’s obligation to take that earlier right into consideration, where, first, the dispute brought before the General Court concerns a decision adopted following opposition proceedings based on an earlier right protected only in the United Kingdom and, second, the transition period had expired by the date of adoption of that decision. More generally, according to EUIPO, that issue concerns the effect of the earlier right ceasing, ex nunc, in the course of opposition or invalidity proceedings before EUIPO, to be capable of being relied upon on the outcome of those proceedings.

35

Moreover, EUIPO sets out the specific reasons why such an issue is significant with respect to the unity, consistency and development of EU law.

36

In particular, EUIPO submits that that issue concerns the applicability to administrative proceedings relating to EU trade marks of the fundamental requirement of an interest in bringing proceedings and in pursuing the proceedings and principles forming pillars of intellectual property law, namely the principle of territoriality, the principle of the unitary character of the EU trade mark and the fundamental concept of the essential function of the trade mark, in the context of the end of the transition period. Furthermore, such an issue concerns the essential difference, established by the case-law, between, on the one hand, administrative proceedings relating to EU trade marks and, on the other hand, infringement proceedings.

37

In that regard, first of all, EUIPO emphasises the horizontal nature of the issue whether the condition of an interest in bringing proceedings and in continuing the proceedings, applied in the context of the judicial proceedings before the General Court and the Court of Justice, is relevant in the context of administrative proceedings relating to EU trade marks and whether, ultimately, the legitimate interest in the success of an administrative action must be taken into consideration for the purposes of interpreting Article 8(4) of Regulation No 207/2009 and, by extension, for the purposes of interpreting other provisions of that regulation concerning such proceedings.

38

Next, it submits that clarification by the Court of Justice is necessary both for the users of the EU trade mark system and for the national courts, in particular in view of the fact that the issue raised concerns not only the effect of the United Kingdom’s withdrawal from the European Union, but also all situations, frequently regarding intellectual property, where an earlier right ceases to exist during the administrative proceedings, in particular in the event of revocation or expiry of that right. In that connection, as regards the issue whether the earlier right must be valid at the time of EUIPO’s final decision or only at the date of the application for registration of the contested EU trade mark, EUIPO sets out the contradictory case-law of the General Court in that area and emphasises the connection between that issue and that of the fact that such an earlier right ceased, ex nunc, to be capable of being relied upon during the judicial proceedings, emphasising that it relied on that issue in the context of a case pending before the Court of Justice.

39

Lastly, it submits, in essence, that the issue which it raises concerns the fundamental principle of the unitary character of the EU trade mark, which the EU legislature sought when that mark was introduced into the EU legal order, in a context in which, in the absence of specific rules laid down by Regulation No 207/2009 or in the Withdrawal Agreement, the General Court, in the judgment under appeal, laid down a rule which, disregarding the effects of Article 50(3) TEU and Articles 126 and 127 of the Withdrawal Agreement, obliges EUIPO to examine a relative ground for refusal in relation to a territory in which, in any event, the EU trade mark applied for will not enjoy any protection. It adds that, in addition to the risks created by that approach in the light of the principle of legal certainty, that approach also poses risks with regard to the principle of reciprocity, since it is likely to create an imbalance between the protection of earlier UK rights in the European Union and the protection of EU trade marks in the United Kingdom.

40

Thus, it is apparent from the request that the appeal be allowed to proceed that the issue goes beyond the scope of the judgment under appeal and, ultimately, that of the appeal.

41

In the light of the matters set out by EUIPO, it must be held that its request that the appeal be allowed to proceed demonstrates to the requisite legal standard that the appeal raises an issue that is significant with respect to the unity, consistency and development of EU law.

42

In the light of the foregoing considerations, the appeal should be allowed to proceed in its entirety.

43

Under Article 170b(4) of the Rules of Procedure, where an appeal is allowed to proceed, wholly or in part, having regard to the criteria set out in the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, the proceedings are to continue in accordance with Articles 171 to 190a of those rules.

44

Under Article 137 of those rules, applicable to proceedings on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the judgment or order which closes the proceedings.

45

Accordingly, since the request that the appeal be allowed to proceed must be allowed, the costs must be reserved.

On those grounds, the Court (Chamber determining whether appeals may proceed) hereby orders: