First referral of questions by the Executive Director to the ‘Grand Board’ of Appeal

The Executive Director of the EUIPO has sought clarification from the enlarged Board of Appeal on legal interpretations of the EU Trade Mark Regulation (EUTMR). This is the first time Article 157(4)(l) of the EUTMR, which states that the Executive Director may refer questions on a point of law to the Grand Board and designed to ensure uniform application of the EUTMR, has been used.

The questions relate to ‘conversion’, a process allowing for a EUTM application or registration to be converted into one or more EU national applications, should issues of registrability arise in specific Member States. This process, intended to overcome the downsides of the EUTM’s unitary character, preserves priority dates from the initial EUTM application.

The questions referred to the Grand Board specifically address the conditions under which conversion is admissible, particularly the interpretation of Article 139(2)(b) of the EUTMR. This clause bars conversion in those states where a decision of the Office identifies grounds for refusal. However, this raises questions about whether the decision must have become final in order to prevent conversion. This is relevant when the Office refuses an EUTM application, but the application is withdrawn during the appeal process. The practice of the Office since 2006 is that the decision of the EUIPO is sufficient to exclude conversion even when it did not become ‘final’ due to the withdrawal of the application.

However, a decision by the Fourth Board of Appeal from September 26, 2022 (Case R 1241/2020-4, ‘Nightwatch’), challenges this interpretation. Contrary to the practice of the Office, the Fourth Board of Appeal decided that the Office must allow conversion where there is withdrawal of an EUTM application before a refusal decision becomes final. As the matter has not come before the Court of Justice of the European Union, the Executive Director considers it appropriate, in the interest of legal certainty, to obtain the reasoned opinion of the Grand Board.

Importantly, interested parties like user groups have the right to present observations to the Grand Board on this matter under Article 37(6) EUTMDR. They will have two months from the date of publication of the referral in the April edition of the Official Journal of the Office.

This referral is part of a broader dialogue between the Executive Director and the Grand Board. Last summer, the Executive Director requested the chairperson and members of the Grand Boards of Appeal to invite him to comment on Case R0378/2020-G relating to the requirements for legal persons governed by public law to be proprietors of European Union collective marks.

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