– here is what this means for EU trademark applicants
The Grand Board of Appeal has now confirmed the position advocated by user associations[1]: an EU trademark can be withdrawn and converted after an application has been refused—whether in ex parte or inter partes proceedings—provided this is done within the appeal period before the refusal takes effect.
Conversion
For those who are not familiar with it, “conversion” is a process that allows an EU trademark (‘EUTM’) application or registration to be converted into national applications within individual EU member states if specific issues in certain member states prevent the EUTM from being registered across the entire EU.
The requirements for converting an EUTM are specified in Article 139 of the EU Trade Mark Regulation (EUTMR).
Article 139(2)(b) prohibits conversion in any Member State where “In accordance with the decision of the Office or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the EU trademark application or EU trademark.”
The Nightwatch case
Despite the prohibition in Article 139(2)(b), the Fourth Board of Appeal (‘the Fourth Board’) recently ruled in the Nightwatch case (Case R 1241/2020-4) that the EUIPO must permit conversion when an EUTM application is withdrawn before a refusal decision becomes final (i.e., before the appeal period expires). This decision contradicted the EUIPO’s long-standing practice and its Trade Mark Guidelines.
In response, the Executive Director of the EU Intellectual Property Office (‘the Executive Director’) referred the case to the Grand Board of Appeal (‘Grand Board’) to obtain a reasoned opinion for the sake of legal certainty and consistency, mainly as EUIPO’s practice had primarily been based on the Grand Board’s 2006 decision in Optima (Case R 331/2006-G). In Optima, the Grand Board had ruled that while an EUTM application could be withdrawn during the appeal period, the refusal decision should still “remain in the files” and could have “possible effects” on the applied-for mark.
The Grand Board’s primary question was whether the phrase “the decision of the Office” in Article 139(2)(b) EUTMR includes decisions where no appeal is filed under Article 66 EUTMR and the EUTM is withdrawn during the appeal period.
A related question was whether the situation would differ if an appeal was filed before the application is withdrawn, in which case Article 139(2)(b) EUTMR would not apply.
Notably, several associations, including APRAM, ECTA, INTA and MARQUES, and the Benelux IP Office, submitted written observations in general support of the Fourth Board’s decision in Nightwatch.
The Grand Board’s Reasoned Opinion
In response to the referral by the Executive Director, the Grand Board found that a conversion request submitted after the withdrawal of an EU trademark application, following a non-final decision, cannot be refused under Article 139(2)(b) EUTMR, as the prohibition only applies to final decisions, as confirmed in Nightwatch and by Amicus Curiae filings from APRAM, ECTA, INTA, MARQUES, and the Benelux IP Office.
The Grand Board clarified that a decision becomes final only if no appeal is filed. If an application is withdrawn before the appeal period ends, the decision is inoperative, meaning it has no legal effect, remaining only as a record in the EUIPO database.
The Grand Board referenced Court of Justice case law, noting that if a non-use revocation action is withdrawn before decisions by the EUIPO and the Board of Appeal (BOA) become final, those decisions are rendered inoperative under Articles 66(1) and 71(3) EUTMR.
Therefore, Article 139(2)(b) does not apply if a trademark application has been voluntarily withdrawn, as the proceedings become inoperable and the decision lacks effect. There is no need for an appeal, as the decision’s effects are suspended until it becomes final, whether appealed or not, including at the BOA or General Court stages.
Finally, the Grand Board confirmed that a conversion request for a refused EUTM application is not an attempt to bypass Article 139(2)(b) EUTMR, as national and EU trademark systems are complementary rather than hierarchical.
In summary, the Grand Board confirms that an EUTM can be withdrawn and converted after an application has been refused—whether in ex parte or inter partes proceedings—provided this is done within the appeal period, before the refusal takes effect.
Here is what it means for EU trademark applicants
The decision will make it easier, faster, and less costly to convert a refused EU trademark application, as there will no longer be a need to file an appeal first. It will also simplify attempts to rebut the EUIPO’s provisional refusals on absolute grounds.
Previously, after a provisional refusal, applicants faced a choice: respond and risk a final refusal or immediately withdraw and convert the application. The risk was that if the applicant replied and the EUIPO confirmed the refusal, withdrawal and conversion would no longer be an option without first filing an appeal and paying the associated fees. Now, applicants can freely respond to provisional refusals, as withdrawal and conversion remain options even if the EUIPO confirms the refusal.
This decision also impacts opposition proceedings. In the past, conversion was impossible if the opposing mark was an EU trademark—unless the applicant filed an appeal and then withdrew the application. Under the new approach, if the applicant loses the opposition and decides not to appeal (for example, if confusion is found only in one member state), the applicant will have two months to withdraw the application and convert it in all EU member states, including the member state where the EUIPO identified confusion.
It will be interesting to see how EUIPO users make use of these expanded options.
If you want to learn more, you can read the entire Reasoned opinion on conversion and non-final refusal decisions here: R0497/2024-G.
[1] APRAM, ECTA, INTA and MARQUES, and the Benelux IP Office, all filed written observations generally agreeing with the Fourth Board’s decision in Nightwatch.
