In Case T‑281/21, the General Court has ruled that grounds of opposition to trademark applications should be assessed as at the time of the trademark application, not the opposition. Pre-Brexit UK rights, including common law actions for passing off, do not fall away, apparently even where the opposition was made after Brexit (and after the expiry of the transition period) as long as the opposed trademark application was made before 1 January 2021.
For brand owners with an interest in protecting their rights in the EU, but with a historically stronger trading position in the UK, this judgment means they might want to re-think EUIPO strategies, arguments and evidence, and do so before any further deadlines expire.
This judgment is contrary to previous guidance issued, and decisions made, by the EUIPO. For example, the General Court's judgment is contrary to Communication No 2/2020 made by the Executive Director of the EUIPO, who said that as from 1 January 2021, UK rights ceased, as a matter of law, to count as "earlier rights" for the purposes of inter partes proceedings in the EUIPO (oppositions and invalidity actions).
The same Communication stated that as from 1 January 2021, evidence relating to the UK could no longer sustain or contribute to the protection of an EU trademark, for example proving reputation of an EUTM, even if that evidence predated 1 January 2021. In the light of the General Court's ruling in T-281/21, the legal foundation for this position would seem questionable too.
Consequently, opponents whose oppositions have been dismissed by the EUIPO on the basis that they were founded upon UK rights in existence before 1 January 2021, and any other stakeholders with an interest in relying upon pre-Brexit UK rights in the EUIPO, may wish to re-consider their options.
In the T‑281/21 case, the application for the trademark was filed on 30 June 2015. An opposition was filed on 8 March 2016 and was rejected by the Opposition Division on 20 September 2017. The opposition alleged infringement of Article 8(4) of Regulation No 207/2009. On 10 February 2021, the Board of Appeal dismissed the appeal, rejecting the opposition insofar as those marks were used in the course of trade in the UK. The Board of Appeal found that, following Brexit and after the expiry of the transitional period on 31 December 2020, rights that might exist in the UK no longer provided a basis for opposition proceedings for the purposes of Article 8(4) of Regulation 207/2009.
The General Court's 16 March 2022 judgment in case T-281/21
The General Court disagreed with this decision and noted the following:
Settled case-law states that the existence of a relative ground for refusal must be assessed as at the time of filing of the trademark application
Where oppositions are brought on relative grounds for refusal, that an opponent's trademark registered in a Member State could lose its status as a trademark after the filing of the opposed application is irrelevant to the outcome of the opposition. The same applies to non-registered trademarks used in the course of trade, and therefore to rights in passing off protected at common law in the UK.
The use of the present tense in Article 8(4) of Regulation No 207/2009 does not mean it should be interpreted as only applying when the opposition is brought
The General Court disagreed with the EUIPO's argument that prior rights relied upon to found an opposition must exist at the time of the opposition. The key provision in the relevant legislation (article 8(4) of Regulation 207/2009, which begins "[u]pon opposition by the proprietor of a non-registered trade mark") does not limit the time to when the contested judicial decision is adopted, and should instead be considered at the time of the application for the trademark in respect of which the opposition was filed.
The General Court's judgment could, potentially, be appealed to the Court of Justice (CJEU).
The General Court's judgment 16 March 2021 judgment in the T‑281/21 case is a sensible interpretation of the legislation governing the EU trademark system, including in light of the Agreement on the UK's withdrawal. It is also consistent with the generally recognised principle that legislation does not have retroactive effect.
The General Court's judgment in T‑281/21 may have wider reach. In particular, in view of the court's reiteration that the date for the assessment of relative grounds challenges is the date of the application for the trademark, the basis for the EUIPO's guidance that evidence relating to the UK cannot sustain or contribute to the protection of an EU trademark, for example in the context of proving reputation, even if that evidence predates 1 January 2021, would seem questionable.
Notably, the UK continues to recognise, for UK trademark rights extracted from EU trademarks on 31 December 2020, 'reputation' in the EU before the expiry of the transition period.
 Judgment of the General Court (Third Chamber), 16 March 2022
 Communication No 2/20 of the Executive Director of the Office of 10 September 2020
 See Grupo Textil Brownie v EUIPO - The Guide Association (BROWNIE), T 598/18, EU:T:2020:22 (30 January 2020); Bauer Radio v EUIPO - Weinstein (MUSIKISS), T 421/18, EU:T:2020:433 (23 September 2020), paragraph 34; Sony Interactive Entertainment Europe v EUIPO - Wong (GT RACING), T 463/20, not published, under appeal, EU:T:2021:530 (1 September 2020), paragraph 118; and Inditex v EUIPO - Ffauf Italia (ZARA), T 467/20, not published, EU:T:2021:842 (1 December 2021), paragraph 58.