
July 2024
The Executive Director of the EUIPO used the provisions of Article 157(4)(l) of the EU Trade Mark Regulation (EUTMR) for the first time and requested clarification from the Grand Board of Appeal regarding the legal interpretations of the EUTMR, a premier that will be etched into the narrative of 2024.
The questions raised by the Director primarily focus on the conditions for allowing conversion, particularly on the interpretation of Article 139(2)(b) of the EUTMR, which prohibits conversion in states where the Office has identified grounds for refusal.
The key issue is whether the refusal decision must be final to prevent conversion, especially in cases where the application is withdrawn after receiving a refusal decision but within the time frame open for further appeal.
These questions carry significant weight, particularly in the wake of a decision rendered by the Fourth Board of Appeal on September 26, 2022 (Case R 1241/2020-4, ‘Nightwatch’), which revealed an approach misaligned to that of the Office.
So far, the Office’s interpretation in applying Article 139(2)b) is that a refusal decision is sufficient to exclude conversion even if the application was withdrawn and the decision did not become ‘final’.
Due to the relevance of these aspects for the users of the EU trademarks system, User Associations such as Marques, ECTA, and INTA filed Amicus Briefs, revealing a rather unitary approach to answering the Director’s decisions.
In this context, Andreea Bende and Marta Darcu authored an article summarizing the events leading up to the Director’s questions and the position revealed in the Amicus Briefs filed by the User Associations. The piece was published by juridice.ro and is also available, in Romanian, HERE.
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