TRADEMARK | The EUIPO Grand Board of Appeal on conversion of EU trademark applications

On 15 October 2024, the Grand Board of Appeal of the European Intellectual Property Office (EUIPO) issued its decision in case R 497/2024-G, confirming that the conversion of a European trademark application to a national application is allowed when the application is withdrawn before the refusal decision has become final. The Grand Board stated that the expression “decision of the Office” in Article 139(2)(b) of Regulation EC No. 1001/2017 should be interpreted as referring to a final decision, considering that a decision of the Office only takes effect either (a) when the statutory period for filing the appeal has elapsed or (b) when the appeal is dismissed and is therefore inoperative before such events. Furthermore, the Grand Board stated that conversion is still admissible even when the refusal decision was subject to an appeal which had not yet been finally dismissed. Finally, the Grand Board excluded that such withdrawal could be qualified as a circumvention of law.

Newsletter n. 101 – November 2024