The requirement that, in order to oppose the registration of a trademark, one must —as a general rule— be the holder of an earlier right is nothing new.
The European Union Trade Mark Regulation is indeed based on a system of opposition grounded in the existence of prior rights with current legal effects, which grant their holder the right to oppose the use of later identical or similar signs.
However, until recently, it had not been expressly addressed whether this condition must be maintained continuously throughout the entire procedure or whether it is sufficient for it to exist at the initial stage of the opposition.
The ruling of the Court of Justice of the European Union specifically clarifies this temporal element of earlier rights.
In particular, the CJEU (Case C‑337/22 P) establishes that what matters is not only that the earlier right existed at the beginning of the proceedings, but also that it continues to produce legal effects at the time when the Office rules on the opposition.
From our perspective, this requirement is fully consistent with the logic of the trademark system: it would make little sense to prevent the registration of a trademark based on a right that, at the time of the decision, no longer exists or no longer produces effects within the Union.
The issue arises in the context of Brexit, in opposition proceedings against the figurative mark APE TEES, based on unregistered rights in the United Kingdom protected under the regime of the action for passing off. During the course of the proceedings, which lasted approximately seven years, the transitional period provided for in Article 126 of the Withdrawal Agreement came to an end. As a result, the United Kingdom ceased to be part of the European Union legal system, and the rights invoked as the basis for the opposition ceased to have effect within the territory of the Union.
In the context of proceedings that began before Brexit took place and concluded afterwards, it became necessary to address the following question: at what point must the earlier right exist? Is it sufficient that it is valid at the date of filing the opposition, or must it also subsist at the time the decision is adopted?
The Court answered this question in its judgment of 5 February 2026, establishing that the earlier right must exist not only at the filing date, but also at the time of the decision.
Specifically, the Court held that:
“…it is true that the acquisition of the earlier right relied on in support of an opposition based on that provision must be assessed by reference to the filing date of the European Union trade mark application at issue or, where appropriate, the priority date. However, it also follows that, for that opposition to be upheld, the earlier right must confer on its proprietor the ‘right to prohibit the use of a later trade mark’ under the law of a Member State or European Union law, not only at that date, but also at the subsequent date of the filing of that opposition and until the date on which it is decided whether ‘the registration of the mark applied for is to be refused’.”
In other words, it is not sufficient that the earlier right merely existed; it must also exist at the time when the Office adopts its decision.
In conclusion, the judgment clarifies a key temporal aspect of opposition proceedings and reinforces the coherence and legal certainty of the European Union trademark system, by preventing the blocking of registration on the basis of rights that no longer have legal effect at the decisive moment of the procedure. At the same time, it highlights the need for active and strategic management of earlier rights throughout the entire opposition process, particularly ensuring that such rights remain in force throughout the proceedings, especially in contexts of regulatory or territorial change such as that resulting from Brexit. It is important for trademark holders not only to periodically review the territorial scope and actual effectiveness of their rights, but also to monitor their validity and the status of ongoing proceedings.
The full judgment is available here.
Article by Patrizia Lombardo.
Published in ElDerecho.com.
