We are pleased to inform our members that ECTA has recently filed its first Amicus Curiae Brief ever in the Referral by the EUIPO Executive Director of 22 February 2024, regarding the decision of the Fourth Board of Appeal in the case R 1241/2020-4 of 9 September 2022, ‘Nightwatch’.

The case, which will be heard by the EUIPO enlarged Board of Appeal (Grand Board), regards the Board’s decision that ‘conversion’ shall not be excluded under Article 139(2) EUTMR where the Office refuses an EUTM application and then the EUTM applicant withdraws its application during the appeal period without filing first an appeal.

Since the Board decision contradicts the long-standing practice in the Office’s Guidelines concerning conversion of an EUTM, and the matter has not come before the Court of Justice of the European Union (‘CJEU’), it was considered appropriate, in the interest of legal certainty and consistency, to obtain the Grand Board’s opinion which would bind the Boards of Appeals pursuant to Article 166(8) EUTMR and which would not be impeachable by any later Board of Appeal decision. Accordingly, the EUIPO Executive Director posed five questions to the Grand Board, which were analysed and answered by ECTA in the submitted brief, with the assistance of its ECTA Amicus Curiae Task Force.

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We wish to extend our gratitude to the ECTA Amicus Curiae Task Force for their dedicated efforts in compiling the recommendations for the Grand Board and for reaching this significant milestone in the history of our association.