CJEU orders EUIPO to take earlier UK rights into consideration

The CJEU has handed down the long-awaited decision in the BASMATI rice case (C-801/21) and ordered the EUIPO to reconsider its dismissal of an opposition based solely on earlier UK rights.

The EUIPO dismissed an opposition based on passing off rights in 2019 and the Board of Appeal dismissed the Opponent’s appeal in 2020. By the time of the hearing of the Opponent’s appeal to the General Court, the UK had left the EU. Before the General Court, the EUIPO argued that UK rights should not be taken into consideration anymore as the UK had left the EU and so the Opponent had no continuing interest in the opposition. That was rejected and the EUIPO appealed.

The CJEU has dismissed the appeal. It held that holders of earlier UK rights continue to have an interest in the outcome of pre-Brexit Oppositions and applications and those earlier rights should be considered.

This decision will be a hammer blow to the EUIPO who had expected to dismiss all grounds based on earlier UK rights without having to decide them. It even issued an Executive Order setting that Out. The EUIPO has many unresolved cases waiting for the decision in this test case. The EUIPO’s next step will be interesting to see. Quite apart from the cases that the EUIPO will now need to consider, there will be many cases that the EUIPO will have already dismissed on a wrongful basis, applying its Executive Order.

Andrew Norris KC represented the successful respondent with Mills and Reeve instructing.