Court of Justice of the EU and the General Court

Yes, a party adversely affected by a decision of EUIPO Board of Appeal (BOA) can appeal to the General Court (GC) of the Court of Justice of the European Union (CJEU) in Luxembourg. Such parties are typically owners of European Union Trademark (EUTM) or European Registered Design (EURD) rights, or parties attacking such rights. The BOA decision at issue is the result of the first appeal from the EUTM or EURD decision at first instance from the EUIPO Examination Division, Opposition Division or Cancellation Division.

An appeal from the BOA to the GC is an appeal as a matter of right, whereas further appeal from the GC to the CJEU is discretionary. Permission to further appeal to the CJEU itself is rarely granted for EUTM and EURD matters, often positioning the GC as having the final say here. That said, the relatively rare cases accepted by the CJEU often have the most precedential value.

No, no new or additional evidence is generally allowed on appeal to the General Court (GC). This is because the GC reviews the legality of the decision of the EUIPO Board of Appeal (BOA), based on the evidence before the Board. In rare exceptions, evidence of subsequent legal developments following the decision might be allowed.

Appellants may not be aware of this rule when appealing to the GC, because appeals to the BOA allow new evidence to be filed, which may or may not be accepted at the BOA’s discretion.

There are no official fees for EUTM or EURD appeals from the EUIPO Board of Appeal (BOA) to the General Court (GC). Attorney fees for lodging and prosecuting an EUTM appeal to the GC vary, depending on numerous factors such as subject matter (lack of distinctiveness or other ex parte matter, opposition, cancellation), the status of the client (appellant, respondent, or intervener), and whether or not a physical hearing is held at the GC in Luxembourg. Here are some potential scenarios but please note that all cost figures are estimates, and the final sum will depend on multiple factors:

1. Lack of distinctiveness: A client’s EUTM application was refused for lack of distinctiveness by the EUIPO Examination Division, and that decision was affirmed on appeal to the BOA. A further GC Appeal will cost around €4,500 - €7,000, if no hearing is held, although this figure could rise if, for example, acquired distinctiveness has been claimed. Preparing for and participating in a hearing will generally cost around €3,000 - €4,000.

2. Opposition: A client lodged an opposition against an EUTM application but lost at first instance due to insufficient proof of use of the client’s mark in the EU. Additional evidence was filed on appeal to the BOA, which found there was no likelihood of confusion due to lack of similarity of goods. A GC Appeal will cost around €5,500 - €7,500, if no hearing is held. Preparing for and participating in a hearing will generally cost around €3,000 - €4,000.

3. Intervention: A client’s EUTM application has been met with an opposition, which has successfully been defended, both at first instance and on appeal to the EUIPO Board of Appeal. However the opponent has appealed further to the GC, which gives the EUTM applicant the opportunity to intervene in that appeal. The cost of intervening will cost around €3,000 - €5,500, if no hearing is held. Preparing for and participating in a hearing will generally cost around €3,000 - €4,000, but this may rise depending on the complexity of the evidence.

4. Cancellation: A cancellation was filed against a client’s EURD based on lack of individual character. This was successful at first instance, but the EURD holder appealed, and filed additional evidence on appeal, after which the BOA held there was sufficient individual character. Appealing to the GC would cost around €5,500 - €7,500, if no hearing is held. Preparing for and participating in a hearing will generally cost around €3,500 to €4,500.

5. Well-known mark: A client lodges an opposition against an EUTM application, claiming that the opponent’s mark is well-known in the EU and enjoys extended protection as regards similarity of goods/services. This opposition is unsuccessful at first instance because no reputation was held proven. Further evidence of notoriety was filed on appeal to the EUIPO Board of Appeal, which held that the mark was well-known, but nevertheless found likelihood of confusion, due to an insufficient link between the two marks. The cost of appeal to the GC will be in the ballpark of €6,500 - €9,500, if no hearing is held. Preparing for and participating in a hearing will generally cost around €4,500 - €5,500.

Ex parte conflicts include refusals based on lack of distinctiveness, and other so-called ‘absolute grounds’, where the counterparty is the EUIPO. The appeal must be lodged within two months and ten days after notification of the adverse decision and must be fully substantiated. The respondent is the EUIPO Board of Appeal, which files a single brief in response.

The General Court will typically ask the parties if they would like to request a hearing. If no hearing is held, the court will render a decision, usually within about 12 months of the filing of the appeal. If a hearing is requested, and the court grants the request, then a hearing is scheduled in Luxembourg within a month or so. If a hearing is held, a decision will be typically rendered within around 15-18 months after the appeal is filed.