Can an opposition (or cancellation action) survive if the earlier right disappears before the proceedings conclude?
Recent decisions from the Court of Justice of the European Union (CJEU) and the EUIPO Board of Appeal provide important guidance on this question.
Together, Ape tees and CommuniGate confirm that rights relied upon in opposition / cancellation proceedings must remain valid and enforceable throughout the entire procedure (until the conclusion of proceedings before the Boards of Appeal, if a decision of the EUIPO is contested) – not only at the date the opposition or cancellation action was filed.
Ape tees: The CJEU clarifies the rule
In its judgment of 5 February 2026, C-337/22 P (Ape tees), the CJEU set aside the General Court’s decision in case T-281/21, Nowhere v EUIPO, clarifying that earlier rights must continue to exist throughout opposition proceedings.
In 2016, Nowhere Co. Ltd. opposed a figurative EU trade mark application under Article 8(4) EUTMR, relying on earlier UK non-registered trade marks used in the course of trade.
Following Brexit and the end of the transition period, the EUIPO concluded that those UK rights could no longer serve as a basis for opposition. The opposition was therefore rejected, and that decision was upheld by the Board of Appeal.
The General Court disagreed, holding that the existence of a relative ground for refusal should be assessed as at the filing date of the contested EU trade mark application. On that approach, the subsequent loss of an earlier right – including as a consequence of a Member State’s withdrawal from the European Union – was, in principle, irrelevant.
The CJEU rejected that reasoning.
The Court held that, under Article 8(4) of Regulation No 207/2009, an opposition can succeed only where the earlier sign confers on its proprietor the present “right to prohibit” the use of a subsequent trade mark under the law of a Member State or the European Union. This requirement is not satisfied merely because the right existed at the filing date; it must remain in force until a final decision is taken on registration, including during appeal proceedings before the Board of Appeal.
For the rights relied upon by Nowhere, this was no longer the case.
CommuniGate: The rule in practice
In its decision of 27 April 2026 in CommuniGate (R 1293/2022-1), the Board of Appeal applied the approach set out in Ape tees.
The opposition relied on several earlier rights under Article 8(4), including a French company name, a trade name, and a domain name. The Opposition Division had partially upheld the opposition based on the French company name COMMUNIGATE SYSTEMS SAS.
During the proceedings, however, the opponent changed its company name to MailSPEC SAS.
That seemingly routine change proved decisive.
Relying directly on Ape tees, the Board held that the earlier company name could no longer serve as a valid basis for opposition because it had ceased to exist before the final decision.
Practical Takeaways
These decisions make clear that earlier rights must be actively maintained throughout the entire opposition / cancellation process (all the way through to the decision of the Boards of Appeal, if an appeal is filed). It is no longer sufficient to establish a valid right solely at the outset – that right must remain in force and enforceable until the final decision is issued.
We almost certainly will see an increase in cancellation actions during opposition proceedings, emphasizing the need for rights holders to monitor and maintain their earlier rights to ensure they remain valid.
At the same time, these cases place greater emphasis on the initial choice of rights relied upon. Selecting stable earlier rights is no longer just a question of strengthening the likelihood of success on the merits – it may determine whether the opposition be successfully invoked.