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EUIPO v Szajner - when an EU TM opponents unregistered right is changed by the national courts

5 December 2016

Advocate General Kolkott’s opinion on 2 December 2016 (EUIPO v Szajner - C-598/14 P) highlights the importance of keeping up with national case law when dealing with EU trade mark opposition or invalidity appeal proceedings.

In her opinion where an earlier non-registered right protected by national law is relied upon to challenge an EU registered trade mark (or application), changes in the national court’s interpretation of the law protecting that earlier right which occur after a decision of the Board of Appeal, must be taken into account by the EU General Court on appeal.

In the UK, passing off may protect unregistered signs. In other EU Member States unfair competition is often relied upon. In this case the challenge was based upon the protection given to business names by the French Intellectual Property code. The General Court ruled, in favour of the EU trade mark owner, that the business name had a narrower field of protection than the Board of Appeal had. This was due to an interpretation of the French rules by the Cour de Cassation delivered after the Board of Appeal’s decision. In the Advocate General’s opinion the General Court was justified in doing so.

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