EUIPO Refers First Questions on EUTMR Interpretation to Grand Board

The European Union Mental Property Workplace (EUIPO) announced today that it has for the primary time referred questions of legal interpretation of the EU Commerce Mark Regulation (EUTMR) to the enlarged Board of Enchantment.

The EUIPO’s Government Director, João Negrão, requested the Workplace’s Grand Board of Enchantment to weigh in on 5 questions regarding the follow of “conversion,” which permits an EU Commerce Mark (EUTM) utility or registration to be transformed into a number of nationwide purposes when obligatory. The method is supposed to handle conditions wherein an EUTM faces a floor of non-registrability in a single or a number of Member States; by way of conversion, “the EUTM applicant can convert the EUTM into a number of commerce mark purposes within the Member States not affected by the issue,” defined the Government Director’s Referral of Questions.

The EUIPO’s follow since 2006 has been {that a} choice to refuse an EUTM utility suffices to exclude conversion of the mark even when the appliance is withdrawn previous to the choice changing into ultimate. This interpretation adopted a choice generally known as Optima wherein the Grand Board held that it’s doable to withdraw an EUTM utility through the attraction interval, which the Workplace interpreted to imply that such an EUTM “is not going to be handled as refused within the Workplace database and within the Register however as withdrawn.” Nonetheless, the EUIPO’s view has been that the choice of refusal “stays in existence and will have ‘doable results’ underneath sure provisions of the EUTMR comparable to excluding a request on conversion Article 139(2)(b) EUTMR.”

However the Fourth Board of Enchantment dominated in September 2022 in a case regarding the trademark NIGHTWATCH that when an EUTM utility is withdrawn earlier than a refusal choice has change into ultimate, conversion stays an possibility. In that case, the EUIPO had refused the EUTM utility as being “descriptive and devoid of distinctive character for the English-speaking public,” however the utility was then withdrawn through the attraction interval and subsequently didn’t change into ultimate.

“[F]ollowing an efficient withdrawal of an utility, as within the current case, it stays a matter for the related nationwide commerce mark authorities to resolve on the protectability of the transformed mark,” wrote the Fourth Board of Enchantment.

Based on the February 22 Referral, which was simply revealed within the April version of the Official Journal of the Workplace, “Nightwatch’ has precipitated a stir within the IP world and prompted questions from consumer associations as to why the matter was not despatched to the Grand Board and whether or not the Pointers will probably be up to date because of this.” Since “authorized certainty” rests on a choice of the Grand Board or increased court docket, Negrão requested the Grand Board to offer perception in order to “present the Workplace with readability and a correct authorized footing” within the case {that a} change is required.

The particular questions the EUIPO is asking the Grand Board to reply are:

1. Does the expression ‘the choice of the Workplace’ in Article 139(2)(b) EUTMR embrace choices of the Workplace containing grounds of refusal of an EUTM utility, the place no attraction is introduced underneath Article 66 EUTMR however the place the EUTM is withdrawn through the attraction interval set out in Article 68(1) EUTMR?
2. Does the reply to query 1 differ the place an attraction towards the grounds of refusal is introduced underneath Article 66 EUTMR however the place the EUTM is withdrawn previous to a ultimate dismissal of that attraction?
3. Ought to Article 71(3) EUTMR be interpreted to imply that Article 139(2)(b) EUTMR consists of choices of the Boards of Enchantment containing grounds of refusal of an EUTM utility the place no motion is introduced underneath Article 72 EUTMR however the place the EUTM is withdrawn through the interval set out in Article 72(5) EUTMR?
4. Does the reply to query 3 differ the place an motion towards the grounds of refusal is lodged underneath Article 72 EUTMR however the place the EUTM is withdrawn previous to a ultimate dismissal of that motion?
5. Does the reply to questions 1 to 4 differ the place the related choice is rendered in ex parte or inter partes proceedings? If that’s the case, to what extent?

Feedback will be submitted to the Grand Board two months from the date of publication within the Official Journal (April 2).

The press launch revealed right this moment mentioned the referral is “a part of a broader dialogue between the Government Director and the Grand Board.” Particularly, Negrão additionally requested an invite to touch upon a Spanish case that handled the “necessities for authorized individuals ruled by public legislation to be proprietors of European Union collective marks.”