Judgment of the Court of Justice of June 20, 2024, (C-801/21 P)
1. Facts
On June 17, 2017, Mr. Hamid Ahmad Chakari filed a European Union trademark application to identify rice products in classes 30 and 31, with the following graphic representation:
Abresham Super Basmati Selaa Grade
Indo European Foods filed an opposition with the EUIPO, invoking an unregistered prior right in the United Kingdom based on the continuous use of the designation “BASMATI” for rice. Indo argued that such use constituted an enforceable prior right under Article 8(4) of the EUTMR and, in particular, invoked the“action for passing off,” which allows for the prevention of the use of signs that create an improper commercial association and may cause economic harm to the prior user.
In April 2019, the Opposition Division dismissed the opposition, finding that the evidence submitted did not sufficiently establish the existence of a prior right. The Board of Appeals upheld this decision in April 2020, reiterating that the documentation and evidence did not demonstrate the effective protection claimed.
Indo European Foods filed an appeal with the General Court (GC) seeking annulment of the Board of Appeal’s decision. While the appeal was pending, the transition period provided for in the United Kingdom Withdrawal Agreement ended on December 31, 2020, with the result that unregistered rights in the United Kingdom could no longer be invoked before the EUIPO as a basis for oppositions under Article 8(4) of the EU Trade Mark Regulation. In light of this circumstance, the EUIPO argued that the appeal had become moot, since the right invoked by Indo no longer existed.
The General Court rejected this argument and set aside the decision, finding that the subsequent lapse of the earlier right did not affect the appellant’s legitimate interest in obtaining a review of legality while the right was still enforceable. The EUIPO filed an appeal before the Court of Justice of the European Union (CJEU) against this judgment.
2. Statements
The Court of Justice confirmed that the appeal filed with the General Court remained admissible and that the interest in appealing does not cease to exist due to the subsequent loss of the prior right invoked. In particular, the fact that the prior right could no longer be invoked after the end of the transitional period does not eliminate either the subject matter of the appeal or Indo European Foods’ interest in obtaining a review of the decision.
The General Court held that the Board of Appeal acted correctly in assessing the allegation of infringement of Article 8(4) of the EUTM Regulation. It concluded that the dismissal of the opposition harmed the economic interests of Indo European Foods, justifying the continuation of the proceedings despite the subsequent lapse of the prior right. It also rejected the EUIPO’s arguments regarding the essential function of the trademark, territoriality, or the possible conversion into national applications, as these did not affect the interest in appealing.
The General Court further emphasized that the General Advocate may, at any stage of the proceedings, examine on its own initiative whether there is an interest in pursuing the action, by assessing whether a possible annulment of the decision could result in benefits or prevent harm to the appellant. Likewise, it rejected the EUIPO’s arguments regarding the essential function of the trademark, territoriality, or the possible conversion of the contested trademark into national applications, finding that they did not affect the interest in appealing.
Finally, the General Court dismissed EUIPO’s appeal, holding that the subsequent lapse of the earlier right did not constitute an obstacle and imposing no additional obligations on the Board of Appeal with respect to the new decision.
3. Comment
The ruling confirms that the review of the legality of a decision by the Board of Appeal must focus on the time when the decision was adopted, and that subsequent changes in the regulations or in the protection of the rights invoked cannot render the appeal moot.
Furthermore, the Court emphasizes that the right to have a decision reviewed by a higher court does not depend solely on whether the right invoked remains in force thereafter, but rather on the possibility of reviewing the decision that affected the appellant’s economic or legal interests, all with the aim of safeguarding the courts’ role as guarantors of rights.
The Court remands the case to the Board of Appeals so that it may rule on the point in time at which the requirements of the prior right must be assessed. In this way, a fundamental issue for resolving the merits of the case is left to the Board of Appeals.
In short, the ruling reinforces an interpretation that is faithful to the structure of the Regulation and to the role of judicial review in trademark matters. The subsequent extinction of the prior right does not nullify the courts’ review function nor does it diminish the need to examine the correctness of administrative action. The ruling thus helps reinforce the stability of the system and provides clear guidelines on the possible sudden loss of rights, in a context marked by significant regulatory changes—in this case, as a result of the United Kingdom’s withdrawal from the European Union.
Enrique Jacobo, Attorney in the Trademark Practice Group at ELZABURU.