On 15 October 2024, the EUIPO's Grand Board of Appeal
issued an important opinion on the controversy surrounding the
conversion of EU trade mark applications that are subject to
non-final refusal decisions. The Grand Board of Appeal clarified
that if a trade mark application is withdrawn during the appeal
period, the EUIPO's refusal is rendered inoperative and does
not prevent conversion in to EU member states.
Background
When an EU trade mark application or registration is refused,
cancelled or withdrawn, the owner can, depending on the reasons for
the EU trade mark ceasing to exist, convert it in to national trade
mark applications in EU member states. Conversion is regarded as
countering the negative effects of an EU trade mark's unitary
character by allowing applicants and proprietors the possibility of
protecting the mark at the national level of the EU whilst
retaining the filing, priority and seniority dates of the EU trade
mark (Article 139(3) EUTMR).
