EU court rules UK JOULES trademarks could not support opposition after Brexit

The EU General Court has confirmed that UK trademark rights could no longer support an opposition to an EU trademark application after the end of the Brexit transition period, highlighting the continuing practical consequences of the UK’s departure from the EU trademark system.

In Joules Ltd v. European Union Intellectual Property Office (EUIPO) – Star Gold GmbH (Jules Gents) (T-294/21), the General Court dismissed Joules’ challenge to an EUIPO decision rejecting its opposition to the registration of the figurative Jules Gents trademark. The judgment was delivered on September 30 by the Court’s Ninth Chamber, sitting in extended composition.

The dispute concerned an EU trademark application filed by Germany-based Star Gold GmbH for the figurative Jules Gents mark, covering goods including jewelry, chronoscopes, and cases for watches and clocks.

Joules had opposed the application on the basis of several earlier rights, including two UK word marks for JOULES, an international registration for JOULES with protection in the EU, and an earlier EU figurative trademark. The opposition proceedings therefore began while the UK was still within the EU trademark system.

UK rights lost relevance during proceedings

The EUIPO Opposition Division initially upheld the opposition on the basis of a likelihood of confusion with one of Joules’ UK trademarks.

However, by the time the EUIPO Board of Appeal issued its final decision on March 15, 2021, the Brexit transition period had ended. The Board of Appeal concluded that the UK trademarks could no longer serve as earlier rights for the purposes of the EU opposition.

The General Court has now confirmed that approach. The Court held that the existence of a relative ground for refusal relied upon in an opposition must be assessed not only on the date on which the later EU trademark application was filed, but also on the date on which EUIPO gives its final decision on the opposition.

The Court applied that principle to the Brexit transition period, which expired on December 31, 2020. By the time the Board of Appeal adopted its decision, the UK trademarks no longer had the status of trademarks protected in an EU member state for the purposes of the applicable EU trademark rules. They therefore could no longer form the basis of Joules’ opposition.

The ruling does not mean that Joules’ UK trademark registrations ceased to be valid or enforceable in the UK. Rather, the Court’s finding concerns their ability to function as earlier rights in these EU opposition proceedings after the end of the Brexit transition period.

EU territory excludes the UK

The Court also addressed the territorial assessment required in relation to Joules’ remaining EU rights. For the purposes of assessing likelihood of confusion based on the earlier EU trademark, the relevant territory was the EU excluding the UK.

The Court found that the goods covered by the earlier EU trademark and the Jules Gents application were identical or similar, but that the signs had only a low degree of visual and phonetic similarity and were conceptually different. Those similarities were insufficient to establish a likelihood of confusion, even in relation to identical or similar goods.

The Court reached a similar conclusion in relation to Joules’ international registration designating the EU. It found only a low degree of visual and phonetic similarity between the signs, together with conceptual differences, while the relevant goods and services were either not similar or only slightly similar.

UK evidence could not establish EU reputation

Joules also relied on the enhanced protection available to trademarks with a reputation under Article 8(5) of the applicable EU trademark regulation.

The Court rejected that argument. Evidence relating to the UK could not establish the reputation of Joules’ earlier EU trademarks within the relevant EU territory, which excluded the UK. The remaining evidence was also insufficient to demonstrate the required level of recognition among a significant part of the relevant EU public.

The General Court therefore dismissed Joules’ action in its entirety.

Brexit continues to affect EU trademark disputes

The judgment provides a practical illustration of how Brexit can affect EU trademark disputes even where an opposition began before the UK’s departure from the EU.

The critical issue was not simply the date on which the later trademark application was filed. The Court confirmed that the continuing existence of the relevant earlier right must also be considered when EUIPO reaches its final decision.

That principle meant that rights which could initially support an EU opposition while the UK was an EU member state could no longer do so once the Brexit transition period had expired.

The judgment also illustrates the territorial consequences of Brexit for EU trademark enforcement. Evidence concerning the UK cannot simply be treated as evidence of reputation or consumer perception in the remaining EU territory when the relevant assessment is made after the UK has left the EU.

The judgment is Joules Ltd v. European Union Intellectual Property Office (EUIPO) – Star Gold GmbH (Jules Gents), Case T-294/21, ECLI:EU:T:2026:618.

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