Earlier rights must remain legally effective throughout EUIPO opposition proceedings to block an EU trademark. On 5 February 2026, the Court of Justice of the European Union (the "Court") delivered its judgment in Case C-337/22 P, EUIPO v Nowhere Co. Ltd (Ape Tees). By its appeal, the European Union Intellectual Property Office (“EUIPO”) sought to have set aside the judgment of the General Court of 16 March 2022 (Nowhere v EUIPO – Ye (Ape Tees), T-281/21), which had annulled the decision of the Second Board of Appeal of EUIPO of 10 February 2021 in opposition proceedings between Nowhere Co. Ltd and Mr Junguo Ye.
The case raises an important question of European Union (EU) trademark law, namely the point in time at which the existence of an earlier unregistered trademark must be assessed for the purposes of opposition proceedings. As such, the judgment is likely to have significant implications for the handling of future disputes of a similar nature. Set against the backdrop of Brexit, and in particular the expiry of the transition period, the ruling also provides valuable insight into the practical consequences of the United Kingdom’s withdrawal from the Union for the protection and enforceability of intellectual property rights within the EU.
Background to the dispute: unregistered UK trademarks and the passing off action
The dispute underlying Case C-337/22 P arose from opposition proceedings before the European Union Intellectual Property Office concerning an application for registration of the EU trademark “Ape Tees”. The opposition was based on earlier rights consisting of unregistered trademarks protected under United Kingdom law, in particular through the common law action of passing off, within the meaning of Article 8(4) of Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark, now replaced by Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trademark.
The application for registration was filed on 30 June 2015 by Mr Junguo Ye. On 8 March 2016, Nowhere Co. Ltd, a Japanese streetwear company, filed a notice of opposition, alleging that the sign applied for reproduced elements of its brand identity. While the opposition proceedings were ongoing, the United Kingdom withdrew from the European Union, with the transition period ending on 31 December 2020. As a result, the earlier rights relied upon, being protected exclusively under English law, ceased to produce legal effects within the EU legal order.
By decision of 10 February 2021, the Second Board of Appeal of EUIPO dismissed the opposition, holding that, following the expiry of the transition period, rights existing solely in the United Kingdom could no longer constitute a valid basis for opposition under Article 8(4) of Regulation No 207/2009.
The issues at stake: temporal assessment of earlier rights after Brexit
The case before the Court raised a fundamental question concerning the temporal scope of earlier rights in EU trademark opposition proceedings. More specifically, it required the Court to determine the point in time at which the existence of an earlier right must be assessed, in a context shaped by the completion of the United Kingdom’s withdrawal from the European Union. The central issue was whether it is sufficient that an earlier (unregistered) trademark right exists at the date of filing of the contested EU trademark application, or whether such a right must continue to exist and produce legal effects at the time when EUIPO adopts its decision, including at the stage of appeal.
This question is not entirely novel. The EU judicature has previously addressed aspects of the temporal assessment of earlier rights, notably in cases such as Grupo Textil Brownie v EUIPO (T-598/18) and EUIPO v Indo European Foods Ltd (C-801/21 P). However, the present case required the Court to clarify this issue in a context where the disappearance of the earlier rights was not due to their intrinsic characteristics, but to a structural change in the territorial scope of EU law.
The implications of this question extend beyond the specific circumstances of the case. While the dispute concerned unregistered rights protected under national law, the reasoning adopted by the Court is equally relevant to registered trademarks, which may also cease to produce legal effects during proceedings, for example due to revocation, non-use or invalidity. The case therefore raises broader considerations as to the dynamic nature of intellectual property rights and their interaction with procedural frameworks.
At the same time, the legal framework governing opposition proceedings, in particular Article 8(4) of Regulation No 207/2009, is grounded in the objective of preventing the registration of signs that conflict with earlier rights protected within the European Union. From this perspective, allowing reliance on rights that no longer produce legal effects within the Union would risk undermining the coherence and effectiveness of the EU trademark system.
Against this background, Brexit played a decisive role in crystallising the issue. The withdrawal of the United Kingdom and the expiry of the transition period resulted in the cessation of the application of EU law to United Kingdom rights, thereby reasserting the principle of territoriality underlying EU trademark protection. The case thus required the Court to address how this structural change affects the operation of EUIPO opposition proceedings and the assessment of earlier rights within the EU legal order.
The findings of the Court: a dynamic and territorial approach
The Court set aside the judgment of the General Court and upheld the position adopted by EUIPO in the context of an appeal challenging the interpretation of Article 8(4) of Regulation No 207/2009 and the effects of the United Kingdom’s withdrawal from the European Union.
As regards the interpretation of Article 8(4), the Court clarified that the provision contains a dual temporal requirement. While the earlier right must predate the filing of the contested EU trademark application (or the relevant priority date), it must also continue to exist and confer on its proprietor the right to prohibit the use of a subsequent mark at the time when EUIPO adopts its decision. The Court thus held that, in opposition proceedings, earlier rights must not only exist at the relevant filing date but must also continue to produce legal effects throughout the proceedings. On that basis, it rejected the approach adopted by the General Court, which had limited the assessment to the filing date of the contested application.
The Court further examined the consequences of Brexit. It recalled that, pursuant to Article 50 TEU and the EU–UK Withdrawal Agreement, EU law ceased to apply to the United Kingdom at the end of the transition period on 31 December 2020. As a result, rights protected solely under United Kingdom law no longer constituted rights protected within the legal order of the Union. In this context, the Court reaffirmed the principle of territoriality, according to which trademark rights produce effects only within the territory in which they are protected. For the purposes of Article 8(4), only rights capable of producing legal effects within the European Union may be relied upon in opposition proceedings.
Consequently, the Court held that no conflict could arise between earlier rights protected exclusively in the United Kingdom and an EU trademark, once those rights no longer produce effects within the Union. EUIPO must therefore take into account changes in the legal and factual situation occurring during the proceedings, including the loss of protection of earlier rights within the EU.
The way forward: implications for practitioners and the EU trademark system
The judgment in EUIPO v Nowhere Co. Ltd provides important clarification on the temporal scope of earlier rights in EU trademark opposition proceedings. First, it confirms a dynamic approach to the assessment of earlier rights, requiring their continued existence throughout the administrative process. This reinforces the principle that EU trademark protection is inherently territorial and contingent upon rights that are effective within the Union at the time of the decision. Secondly, the ruling has implications extending beyond the specific context of Brexit. It applies equally to situations in which earlier rights expire, are revoked or declared invalid, are surrendered, or otherwise cease to produce legal effects during the course of proceedings.
For practitioners, the judgment highlights the importance of actively monitoring the validity and territorial scope of earlier rights throughout opposition and appeal proceedings. It also underscores the need to anticipate potential changes affecting such rights and to adapt litigation strategies accordingly. More broadly, the decision contributes to the consistency and effectiveness of the EU trademark system by ensuring that registration decisions are based on rights that are legally operative at the time they are taken. At the same time, it raises questions of procedural fairness in cases where the loss of rights is linked to external or unforeseen events. In this respect, the case illustrates the broader tension between legal certainty and procedural efficiency, on the one hand, and the evolving nature of rights within the internal market, on the other.
Beyond its immediate procedural implications, the judgment reflects a broader tendency of the Court to interpret EU law in a manner that preserves the coherence and autonomy of the Union legal order. In the specific context of Brexit, it confirms that rights originating in a former Member State cannot continue to produce effects within EU procedures once they fall outside the territorial scope of Union law. Rather than constituting a sanction against non-EU operators, the ruling illustrates a more internally focused interpretation of EU legal concepts, limiting the extent to which external or former Member State situations can influence the operation of EU mechanisms such as opposition proceedings.
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