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MARQUES files amicus brief in EUTM conversion case

On 30 May 2024, MARQUES submitted a brief to the EUIPO in a case before the Grand Board of Appeal concerning the conditions under which conversion is admissible under Article 139(2)(b) of the EUTM Regulation.

The brief is available to download on the Amicus Curiae Team page on the MARQUES website (log-in required).

The law on conversion

The case is the first time that the EUIPO Executive Director has referred questions on points of law to the Grand Board under Article 157(4)(l) of the EUTMR.

The issue arose after the Fourth Board of Appeal in Case R 1241/2020-4, ‘Nightwatch’, challenged the established interpretation of Article 139(2)(b). The previous practice was based on a Grand Board of Appeal decision of 27/09/2006 in R 331/2006-G “Optima”, which bars conversion in those Member States where a decision of the Office identifies grounds of refusal.

In the ‘Nightwatch’ decision, however, the Board of Appeal allowed the conversion of a refused EUTM application, following its withdrawal during the appeal period. It addressed several points regarding the effects of the EUIPO’s decision to refuse the application for conversion.

The EUIPO Executive Director referred five questions to the Grand Board concerning the conditions under which the conversion of EUTMs is admissible.


In its amicus brief, MARQUES proposes the following answers (in bold) to the questions referred:

  1. Does the expression ‘the decision of the Office’ in Article 139(2)(b) EUTMR include decisions of the Office containing grounds of refusal of an EUTM application, where no appeal is brought under Article 66 EUTMR but where the EUTM is withdrawn during the appeal period set out in Article 68(1) EUTMR? No – as there is not a final decision in this case
  2. Does the answer to question 1 differ where an appeal against the grounds of refusal is brought under Article 66 EUTMR but where the EUTM is withdrawn prior to a final dismissal of that appeal? No – for the same reason under the answer to Question 1
  3. Should Article 71(3) EUTMR be interpreted to mean that Article 139(2)(b) EUTMR includes decisions of the Boards of Appeal containing grounds of refusal of an EUTM application where no action is brought under Article 72 EUTMR but where the EUTM is withdrawn during the period set out in Article 72(5) EUTMR? Yes, since there is no final decision
  4. Does the answer to question 3 differ where an action against the grounds of refusal is lodged under Article 72 EUTMR but where the EUTM is withdrawn prior to a final dismissal of that action? No, for the same reasons as under Question 2
  5. Does the answer to questions 1 to 4 differ where the relevant decision is rendered in ex parte or inter partes proceedings? If so, to what extent? No, there is no legal basis to justify a different approach

The amicus brief concludes: “MARQUES is aware that various approaches and views are possible and defensible in this matter. In particular, MARQUES acknowledges that its preferred approach as laid down in this Submission and in the answers to the Executive Director’s questions, may have considerable consequences for trade mark owners in inter partes proceedings. However, taking into account all circumstances, MARQUES believes that the primary interest of improving consistency and legal certainty as described in this Submission, is best served with the approach preferred by MARQUES.”

The brief is authored by Roderick Chalmers Hoynck van Papendrecht, Elisa Vittone, Antonella Pagliara and Emmy Hunt, who are all members of the MARQUES Amicus Curiae Team.

Posted by: Blog Administrator @ 10.09
Tags: Amicus, EUIPO, conversion, EUTM,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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