The transitional regime for pending EUTM applications
As part of the transitional arrangements governing the United Kingdom’s withdrawal from the European Union (Brexit), owners of EUTM applications which were still pending and not yet registered on IP Completion Day (31 December 2020) were given a nine-month window to file equivalent UK trade mark applications for the same mark and goods and services, which would retain the filing and priority dates of the corresponding EUTM applications.
In several decisions of the UK Intellectual Property Office (UK IPO),[1] it had been consistently held that the relevant date for assessing whether any absolute grounds for refusal applied for these filings under the transitional regime was the actual date of filing of the new UK application, rather than the deemed UK filing date deriving from the original EUTM filing date.
These conclusions were deduced from the wording of Section 25 of Schedule 2A to the Trade Marks Act 1994[2] (TMA 1994), which states that the filing or priority dates of the related EUTM are relevant “for the purposes of establishing which rights take precedence”. The provisions therefore only explicitly refer to relative grounds for refusal and are silent on absolute grounds.
The recurring justification found in these decisions tended to reference the public policy reason that marks which are objectionable in the UK at the time of their filing should not be registered, even if they were not objectionable at the time of their filing in the EU. It was also noted that, unlike for registered EUTMs which resulted in the automatic creation of a comparable UK registration under the transitional regime, new UK applications filed under the regime were still expected to undergo examination, just like any normal UK application.
The Parabolica appeal
The present case concerned an appeal by Parabolica Limited against a UK IPO decision in an opposition brought by Czech manufacturing group Tesla Holding A.S.
At first instance, the UK IPO Hearing Officer upheld the opposition under section 3(6) TMA 1994, assessing Tesla’s claim that the application was filed by Parabolica in bad faith against the actual UK filing date of 14 September 2021. Parabolica appealed the decision to the Appointed Person, arguing that the relevant date for assessing the bad faith ground ought to be the EUTM priority date of 17 October 2006, creating a gap of almost 15 years between the competing dates.
Given the importance of the legal issue, the Appointed Person Tom Mitcheson KC took the decision to transfer the appeal to the High Court and the Comptroller General of Patents, Designs and Trade Marks was invited to intervene on behalf of the UK IPO.
The High Court’s decision
Tom Mitcheson KC, now sitting as a Deputy Judge of the High Court, rejected Parabolica’s argument that the EUTM priority date is the relevant date for assessing whether any absolute grounds for refusal apply. However, he decided that the correct point of reference is the EUTM filing date, in this case 17 April 2007.
In reaching that conclusion, he primarily relied on the premise that Schedule 2A TMA 1994 could not be interpreted in isolation from Article 59(1) of the Withdrawal Agreement, which states that an application filed under that provision “shall be deemed to have the same filing date and date of priority as the corresponding application filed in the Union“. In any case Article 59(1) trumped Schedule 2A, because the provisions of the Withdrawal Agreement had since been given direct effect in the UK via other implementing legislation.
The Court supported its reasoning by analysing the wording and legislative background of the Withdrawal Agreement and analogous transitional provisions concerning Community design applications.
The Court’s policy analysis
The Court further considered that Article 59(1) was intended to place applicants with pending EUTM applications, insofar as possible, in the same position as an owner whose EUTM had registered by IP Completion Day. Treating the actual UK filing date as the relevant date for the purposes of assessing registrability would put such applicants in a materially worse position than those with registered marks, for no good policy reason.
As for the policy concerns that objectionable trade marks ought not to be registered, the Court held that if any marks filed under the transitional regime did happen to be objectionable in the UK at their actual date of filing, those marks would likely be liable to be revoked or invalidated as appropriate and so adequate mechanisms already existed to address such cases.
Outcome and practical implications
The appeal was allowed and the case was remitted to the UK IPO for a fresh assessment of the bad faith claim based on the EUTM filing date. It will be interesting to see how the bad-faith claim is re-assessed, given that the EU application was filed in 2007, creating a 14-year gap between the EU and UK filing dates.
It was estimated that there were 85,000 pending EUTM applications at IP Completion Day,[3] all of which could have potentially made use of the transitional regime to file in the UK. While the number of affected cases is likely to be limited, practitioners and brand owners should keep this decision in mind when considering invalidation actions against trade marks which were filed pursuant to Article 59 of the Withdrawal Agreement. Those cases can be identified by a note added in the “Mark Description/Limitation” field, which will state that “This case is filed pursuant to Article 59 of the Withdrawal Agreement between the United Kingdom and the European Union and the EU filing date was dd/mm/yyyy”.
Parabolica Limited v Tesla Holding A.S. [2026] EWHC 386 (Ch)
[1] BL O/1116/22; BL O/0421/24; BL O/1216/24; BL O/1219/24; BL O/0106/26.
[2] Added by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269) and updated by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050) to change references to “exit day” to “IP Completion Day”.
[3] Paragraph 7.9 Explanatory Memorandum to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 No. 269 [DExEU/EM/7-2018.2]
