A GLINT OF HOPE

On 13 February 2024, the First Board of Appeal of the European Union Intellectual Property Office (the “Board”) handed down an interim decision in case R 994/2023-1.  By that decision, proceedings have been stayed pending the outcome of C-337/22 P (APE TEES), which is pending before the Court of Justice of the European Union (the “CJEU”).

In the current proceedings, the appellant (our client), Glint Pay Limited (“GPL”), has opposed registration of the device mark  (the “Device”) by Global Stability Union (“GSU”) for various goods and services relating to financial software.  One of the grounds of opposition relied upon earlier unregistered rights said by GPL to exist in the United Kingdom, arising through its use of a highly similar device for highly similar financial goods and services.

The Opposition Division refused the opposition under that ground as, at the date of its decision, the United Kingdom was no longer a member state, the transition period had ended and the unregistered rights had ceased to be relevant to any proceedings before it.

The Board noted parallels with C-801/21 P (Basmati), also pending before the CJEU.  It pointed out, however, that the difference with the Basmati case is that the decisions of the Opposition Division and the Board had been made prior to the end of the transition period and, accordingly, that it could be distinguished from the current proceedings.

In the APE TEES proceedings, however, the General Court has found that the relevant date for assessing earlier rights is the application date, rather than the date of any decision, whether by the Opposition Division or the Board of Appeal.  Accordingly, even though the decisions of the Opposition Division and the Board of Appeal were after the end of the transition period, rights that had existed at the application date were still relevant.  That decision is, however, the subject of a further appeal to the CJEU.

In the circumstances, the Board concluded that, pending a decision from the CJEU as to the correct date on which to consider the earlier unregistered rights, the current proceedings should be stayed.  It found, rightly, that to do so would balance the interests of the parties.

We and our client GPL await the decision of the CJEU in the Ape Tees case with interest.  Silvia Baumgart and Joanna Stephenson of Saunders Law have instructed Jamie Muir Wood of Hogarth Chambers who has also written this short summary of the latest decision in this case.