CJEU Overturns “BROWNIE” Line: Earlier Trademark Rights Must Subsist Until the Final Decision in Opposition Proceedings

Introduction

The CJEU held that an earlier right relied upon in opposition proceedings must not only exist at the filing (or priority) date of the contested EU trademark (EUTM) application, but must also continue to subsist at the time the final decision on the opposition is adopted.

In doing so, the CJEU rejected the General Court’s earlier “BROWNIE” approach and clarified that opposition proceedings are designed to resolve actual and subsisting conflicts — not historical ones.

Background of the Case

The dispute concerned an EUTM application filed on 30 June 2015 for the sign APE TEES. The opposition was based on non-registered earlier rights protected under UK law pursuant to Article 8(4) of Regulation 207/2009 (now Article 8(4) EUTMR). Because the application was filed in 2015, the case was governed substantively by Regulation 207/2009 and procedurally by Regulation 2017/1001. The decisive procedural fact was that the Board of Appeal issued its decision on 10 February 2021 — after the end of the Brexit transition period on 31 December 2020. At that point, UK law had ceased to be the law of a Member State.

CJEU Ends the “Snapshot” Doctrine in EUIPO Opposition Practice

Under the General Court’s earlier “BROWNIE” case-law (T-598/18), the existence of a relative ground for refusal was assessed solely at the filing date of the EUTM application. Events occurring after that date — such as expiry, surrender, revocation, or geopolitical changes — were considered irrelevant. This “snapshot” doctrine meant that if a conflict existed at the filing date, the opposition could succeed even if the earlier right later ceased to exist.The CJEU rejected this approach.

Earlier Rights Must Continue to Exist Until the EUIPO Final Decision

The Court held that an earlier right relied upon under Article 8(4) must subsist until the date on which EUIPO adopts its final decision. Its reasoning rests on three key elements.

1. Literal and Systematic Interpretation: Article 8(4) requires that the earlier sign “confers on its proprietor the right to prohibit” the use of the contested mark. The Court emphasised the present tense of this wording and interpreted it in conjunction with Article 8(4)’s function within the refusal system (“shall not be registered”). The provision therefore requires not only that the right was acquired prior to the filing date, but also that it continues to confer a prohibitory right at the time of decision.
2. Subsistence as a “Preliminary Issue”: The existence of a valid earlier right constitutes a preliminary issue that EUIPO must verify before assessing the substantive conditions of Article 8(4). If the earlier right ceases to exist during the proceedings — including at the appeal stage — the opposition becomes unfounded. EUIPO cannot prohibit registration on the basis of a right that no longer exists.
3. Purpose of Opposition Proceedings: Opposition proceedings aim to prevent the registration of marks that would conflict with existing earlier rights. If the earlier right has expired, been surrendered, revoked, or otherwise ceased to apply in the relevant territory before the decision is taken, registration of the contested mark can no longer jeopardise that right. The Court therefore rejected the idea that a “potential conflict” during an earlier period is sufficient. The conflict must still be capable of arising at the time of the decision.

Brexit and UK Earlier Rights: Impact on EU Trade Mark Opposition After 31 December 2020

The case arose in the specific context of Brexit. Once the transition period ended on 31 December 2020, UK law ceased to constitute the law of a Member State. Because the Board of Appeal decided the case on 10 February 2021, the UK-based earlier rights could no longer qualify as earlier rights under Article 8(4) EUTMR. The General Court had considered that a conflict existed during the transition period and that this was sufficient. The CJEU disagreed. Since the EUTM would only take effect after the transition period, there could no longer be any conflict within the EU legal order at the time of registration.

Procedural Duties Before EUIPO: Monitoring the Status of Earlier Rights

Although the judgment directly concerns Article 8(4), its reasoning — particularly the emphasis on the decision date and the preliminary nature of subsistence — strongly supports a broader “decision-date” approach in opposition proceedings.

Practical Consequences

1. Continued Validity Is Essential: Opponents must ensure that the earlier right relied upon remains valid and enforceable until EUIPO adopts its final decision.
2. Strategic Monitoring for Applicants: Applicants should closely monitor the status of earlier rights invoked against them. If an earlier right expires, is revoked, surrendered, or otherwise ceases to exist while opposition proceedings are pending — even at appeal stage — the opposition must fail.
3. Procedural Vigilance: While EUIPO must assess the subsistence of earlier rights at the time of decision, in inter partes proceedings it is typically for the parties to bring relevant changes in status to the Office’s attention.

Conclusion: Fundamental Shift in EU Trade Mark Opposition Law After C-337/22 P

With this judgment, the CJEU has definitively moved away from a purely historical assessment of relative grounds for refusal. Opposition proceedings under the EUTM system are intended to resolve present and legally effective conflicts. If the earlier right on which an opposition is based ceases to exist before the final decision is taken, the opposition cannot survive. The decision marks a significant shift in EU trade mark practice and will require both opponents and applicants to adjust their procedural strategies accordingly.

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Author: Markus Richardt