In June 2022, Cavour Srl filed a figurative trademark application in the European Union for services in Class 43 relating to temporary accommodation. However, Consulta GmbH filed an opposition to the application on the grounds that there was a likelihood of confusion with its earlier trademark right.

The opposition proceedings were suspended in May 2023 at the opponent’s request, as there were ongoing invalidity proceedings concerning the earlier trademark. Furthermore, the General Court upheld the First Board of Appeal’s decision to declare the opponent’s trademark invalid. In February 2024, the opponent applied for the conversion of the earlier EU trademark into various European national trademarks. Conversion was possible in Austria, Germany and Portugal.

In May 2024, the opponent was notified that the opposition would be withdrawn as it was unfounded, following the revocation of the earlier trademark on which it was based. For that reason, the opponent filed a reply in the ongoing opposition proceedings, requesting that the opposition be continued on the basis of the three national trademark applications. However, the Opposition Division dismissed the opposition in its entirety on the grounds that the earlier right had ceased to exist.

The opponent appealed against the decision, seeking its annulment on the grounds that the Opposition Division had failed to consider the conversion of the cancelled trademark into national registrations. This constituted a clear defect in the statement of reasons. Conversely, the applicant argued that the conversion into national trademarks cannot retroactively remedy an opposition based on a trademark that has been cancelled on the grounds of lack of distinctive character.

In view of the foregoing, the Court held that, according to the European case-law, opposition proceedings may continue when a request for conversion has been filed at the same time that the European Union trademark on which the opposition was based has ceased to exist. As the opponent completed the formalities for converting the trademark within the prescribed time limit, the Opposition Division wrongly dismissed the opposition. It should have based its decision on the rights arising from the conversion.

For these reasons, the opponent’s appeal is upheld, the contested decision is annulled and the case is remitted to the Opposition Division for further prosecution

Decision of the First Board of Appeal of 4 May 2026 in Case R 1744/2025-1