We have previously discussed on our blog the topic of converting a European Trademark at the EU national level. You can refer to our quick guide to EUTM Conversion procedures across European IP offices.
Today, we will revisit this topic because the Executive Director of the EUIPO has raised a legal question regarding this matter to the enlarged Board of Appeal. This marks the first time this authority stated by Article 157(4)(I) of the EUTMR is being utilized.
The Executive Director seeks clarification on the conditions for admissible conversion, particularly concerning the interpretation of Article 139(2)(b) of the EUTMR. This article prohibits conversion in states where an Office decision identifies grounds for refusal. However, it’s unclear whether the decision must be final to prevent conversion. This is pertinent when the Office rejects an application but the application is withdrawn during the appeal process.
Traditionally, the Office’s practice has been that the EUIPO decision is sufficient to exclude conversion even if it hasn’t become final due to application withdrawal.
However, a recent decision on September 26, 2022, in Case R 1241/2020-4, “Nightwatch” by the Fourth Board of Appeal challenges this interpretation. The Board decided that conversion must be allowed when an EUTM application is withdrawn before a refusal decision becomes final.
Since this case hasn’t been brought before the Court of Justice of the EU, the Executive Director has deemed it appropriate, for legal certainty, to seek the opinion of the Grand Board.
We will have to await the Grand Board’s opinion to clarify the matter.
For info: europe@ipwisely.com
