Judgment of the General Court Tenth Chamber of 13 October 2021, Škoda Investment v EUIPO – Škoda Auto Representation of an arrow with wing, T-712/20

• Date: 13 October 2021
• Year: 2021

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The General Court annuls the decision of the Board of Appeal of EUIPO and adjudicates on the effects

of the withdrawal of the United Kingdom from the European Union on pen ding cases relating to EU

trade marks.

Findings of the Court

In the first place, the Court holds that the withdrawal of the United Kingdom from the European

Union has not rendered the dispute devoid of purpose.

First, it points out that the withdrawal agreement,

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which sets out the arrangements for the

withdrawal of the United Kingdom from the European Union, entered into force on 1 February 2020

and provides for a transition period from 1 February to 31 December 2020, during which EU law

continues to be applicable in the United Kingdom.

Next, the Court notes that the decision of the Board of Appeal was taken on 2 April 2020, that is to

say, during the transition period. Until the end of that period, the earlier mark continued to receive

the same protection as it would have received had the United Kingdom not withdrawn from the

European Union.

Finally, since the purpose of the action before the Court is to review the legality of decisions of the

Boards of Appeal of EUIPO, the Court must take into account the date of the contested decision when

assessing that legality. For the Court to find that the litigation becomes devoid of purpose following

the withdrawal of the United Kingdom from the European Union would amount, for the Court, to

taking into account matters arising after the adoption of the contest ed decision, which do not affect

its merits.

In the second place, the Court finds that Indo European Foods retains an interest in bringing

proceedings. In that regard, the Court recalls that the interest in bringing proceedings must continue

until the final decision, which presupposes that the action must be able to procure an advantage to

the party bringing it. First, it rejects EUIPO’s argument that the trade mark applicant had no interest in

bringing proceedings because, if the opposition were upheld, th e applicant would be able to convert

his mark into national trade mark applications in all EU Member States. Those considerations apply, in

principle, to any opposition proceedings. Secondly, the Court finds that if it were to annul the decision

of the Board of Appeal and refer the case back, the Board of Appeal would not be obliged to dismiss

the action in the absence of an earlier trade mark protected by the law of a Member State. Following

the annulment of a decision of the Board of Appeal, the Board of Appeal must take a new decision on

that same action by reference to the situation at the time that the action was brought, since the action

is again pending at the same stage as it was before the contested decision.

Moreover, the Court annuls the decision of the Board of Appeal on the ground that the Board of

Appeal misapplied the legal tests for the extended form of passing off under the law applicable in the

United Kingdom, in that it ruled out the risk of misrepresentation and damage to the goodwill enjoyed

by the term ‘basmati’.

Judgment of the General Court (Tenth Chamber) of 13 October 2021, Škoda Investment v

EUIPO – Škoda Auto (Representation of an arrow with wing), T-712/20

Link to the complete text of the judgment

EU trade mark – Opposition proceedings – Application for an EU figurative mark representing an arrow

with wing – Earlier EU figurative mark representing an arrow with wing – Relative ground for refusal –

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Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European

Atomic Energy Community (OJ 2020 L 29, p. 7).