Preventicus v EUIPO (NIGHTWATCH)

Court

EUIPO enlarged Board of Appeal (Grand Board)

Our Position

Provided the relevant decision has not become final yet (i.e., the withdrawal must occur either during the appeal period or, where an appeal was filed, before its dismissal), it should be possible to convert a previously refused EUTM into a national mark, even in the Member States where the grounds of refusal apply, and without first needing to appeal the refusal decision (and pay the appeal fee).

This should also apply to all pre-registration and post-registration actions and the approach should not differ based on whether the relevant decision is rendered in ex parte or inter partes proceedings.

Accordingly, the Grand Board should answer all questions raised in the EUIPO Executive Director’s Referral in the negative, in line with the conclusions of the September 26, 2022, decision of the Fourth Board of Appeal in the case R 1241/2020-4, “Nightwatch.”

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