Parabolica Limited v Tesla Holding AS

The Deputy Judge: Introduction

1. This is an appeal from a successful opposition in the Trade Marks Registry. It raises an important point of principle and practice concerning the relevant date for the assessment of absolute ground objections for UK trade mark applications derived from earlier EU applications made before the UK exited the EU.

2. The Applicant/Appellant, Parabolica Limited, originally applied for an EU trade mark application no. 5838727 designating the UK and filed on 17 April 2007 (the “EU Filing Date”) with a priority date of 17 October 2006 (the “EU Priority Date”). The Applicant describes itself as a business engaged in the development and exploitation of new trade mark rights.

3. The mark applied for is for the word TESLA in classes 12, 25 and 28.

4. As the mark had not reached grant in the EU by IP Completion Day on 31 December 2020, the Applicant was permitted to file an application for a UK trade mark, no. 3694874, which it did on 14 September 2021 (the “UK Filing Date”) pursuant to Article 59(1) of the Withdrawal Agreement between the EU and the UK and Schedule 2A of the Trade Marks Act 1994 .

5. The Opponent/Respondent, Tesla Holding A.S., opposed the application under ss. 3(6) and 5(1), (2)(a) and (3) of the Trade Marks Act 1994 . It is part of a Czech manufacturing group . For its s.5 grounds it relied on various earlier registered marks, including marks for TESLA in classes 9, 10 and 11. There is a separate opposition to the same mark brought by Tes la Inc. , the manufacturer of electric vehicles , which I refer to in §43 below.

6. The opposition was determined by the Registrar’s Hearing Officer, Rosie Le Breton, following a telephone hearing attended by the Opponent (only) on 21 March 2025. In a decision dated 31 October 2025 the Hearing Officer rejected the s.5(1) and s.5(3) grounds, partially upheld the opposition under s.5(2)(a) and upheld the entirety of the opposition under s.3(6) on the grounds of bad faith based on an assessment made as at the UK Filing Date.

7. The Applicant appeals the decision under s.3(6) saying that the correct date for assessment was the EU Priority Date. There is no effective challenge to the decision of the Hearing Officer on the assumption she used the correct date to assess bad faith, and so I do not need to deal with the substance of the allegation that she upheld.

8. Neither party challenges the conclusions of the Hearing Officer under s.5. The specification of goods left following the parts of the Decision dealing with relative grounds was as follows: 12 accessories for vehicles, included in class 12, namely trailer hitches, bicycle carriers, roof racks, travel baggage of the following materials, leathers, aluminum, titanium, fabrics made from natural fibres, namely cotton, jute, flax, viscose, restraints and fine animal hairs (wool), synthetic fibre industry and plastics, for transport in electric vehicles, child’s seats, tarpaulins, namely the aforesaid relating to the following vehicles, electric land vehicles, electrically operated air vehicles, electric amphibious vehicles and electrically powered water vehicles; snow chains, namely the aforesaid for cars, two-wheeled vehicles, buses, utility vehicles, forestry machines, military vehicles, 4x4 and SUV vehicles, tractors, electrically operated special-purpose vehicles; 25 clothing, footwear, headgear; and 28 gymnastic and sporting articles; games. Why we are here

9. This is part of a long-running dispute between the Applicant, the director of the Applicant, a Mr Erich Auer, and the Respondent. In the TM55 Notice of Appeal Mr Auer described himself as the “author/creator/developer of the EU and UK trademark TESLA”. Mr Auer has also been involved in several other trade mark disputes throughout Europe (e.g. Case T-82/14 Copernicus ). None of the foregoing is relevant to the issues arising before me on this appeal.

10. The appeal was originally filed to be heard by an Appointed Person. It was allocated to me, sitting in that role. When I read the Decision and the grounds of appeal it appeared to me that there was an important point of principle at large.

11. The same issue had arisen before me sitting as an Appointed Person in case BL O/0882/25 MIND THE GAP as part of the Respondent’s Notice. The Respondent in that case argued that the Registry was applying the wrong date to assessments of bad faith for applications which had been converted from pending EU applications. As I had already dismissed the appeal there was no need for me to determine the point, but I observed as follows at §30:

30. I now do not need to decide this point and I decline to do so. Nevertheless, I consider there is merit in the Respondent’s arguments that the Withdrawal Agreement and Schedule 2A should be understood to support its interpretation. However, this debate would be assisted by submissions on behalf of the Registrar and if the point ever needs to be decided in a future case I consider that this would help the appropriate tribunal.

12. Section 76(1) -(3) of the Trade Marks Act 1994 states as follows: 76 Appeals from the registrar. (1) An appeal lies from any decision of the registrar under this Act , except as otherwise expressly provided by rules. For this purpose “decision” includes any act of the registrar in exercise of a discretion vested in him by or under this Act . (2) Any such appeal may be brought either to an appointed person or to the court. (3) Where an appeal is made to an appointed person, he may refer the appeal to the court if— (a) it appears to him that a point of general legal importance is involved, (b) the registrar requests that it be so referred, or (c) such a request is made by any party to the proceedings before the registrar in which the decision appealed against was made. Before doing so the appointed person shall give the appellant and any other party to the appeal an opportunity to make representations as to whether the appeal should be referred to the court.

13. I considered that s.76(3) (a) applied here. Pursuant to s.76(3) I asked the parties to comment on this, and as neither party objected on 16 January 2026 I ordered the case to be transferred to the High Court and expedited. I also asked the Registrar to be added as an Intervenor to assist the Court. Following the practice first adopted by Simon Thorley QC in the BUD/Budweiser Budbräu series of cases (O/504/01 & [2002] RPC 38 ) and given the fact that the outcome of this case might affect other proceedings, it has come on before me sitting as a Deputy Judge promptly and within the same window that I had originally proposed that it be heard as an appeal to the Appointed Person.

14. I should record at this stage that the Appellant filed a very lengthy annex to its TM55 (74 pages) but indicated in it that it did not wish to make further or oral representations on any appeal. I consider that its case is adequately set out in the TM55. In the event I did receive supplementary written submissions from the Appellant on the morning of the hearing. I have taken these into account.

15. On this appeal the Respondent has been represented by Benjamin Fitzmaurice instructed by Kangs Solicitors and the Intervenor by Jamie Muir Wood instructed by the Government Legal Service. I am grateful to both for their written and oral submissions. I am particularly grateful for the additional legal research undertaken by the Intervenor and the balanced way in which those materials were presented to the Court. The intervention has greatly assisted in the determination of this appeal. Preliminary Point – Priority Date or Filing Date

16. As recorded above, the Appellant’s TM55 argues that the correct date to be used to assess bad faith is the EU Priority Date and not the UK Filing Date. However, the TM55 goes on to cite various European and UK cases in which it is clearly stated that bad faith should be assessed as at the filing date, and not at the priority date.

17. It is not necessary for me to refer to multiple cases to establish this. In Lord Kitchin’s summary paragraph [240] in Sky v SkyKick [2024] UKSC 36 [2025] 2 All ER 1 he explained as follows: (ii) The date for assessing whether an application to register an EU trade mark was made in bad faith is the date the application for registration was made (Lindt, para 35). (iii) Bad faith in this context is an autonomous concept of EU law which must be given a uniform interpretation in the European Union, and must be interpreted in the context of Directive 89/104 in the same manner as in the context of Regulation 40/94 (Malaysia Dairy, para 29; Sky CJEU, para 73).

18. He had earlier explained when beginning his discussion of his category (i) cases: Category (i) cases [158] This category of case is generally concerned with conduct by an applicant which was intended to undermine the interests of one or more third parties, although the circumstances which may justify a finding that the application was made in bad faith may vary a great deal from case to case. The applicant may, for example, have appropriated the mark of another trader; or made the application in breach of an agreement or fiduciary duty; or even sought to secure by registration a right to prevent one or more third parties from using a mark in relation to particular goods or services despite those third parties having an earlier right to use the mark in that way. Nor do these circumstances necessarily involve any suggestion that the applicant has not used or does not intend to use the mark itself. Indeed, the impugned conduct may very well involve the use of the mark by the applicant. [159] Nevertheless, I must refer to some of the significant authorities concerning conduct which was said to amount to bad faith of this kind because they illustrate many of the key principles underpinning any assessment of bad faith in this area and irrespective of whether it is a category (i) or (ii) case. Lindt [160] The starting point here is Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (C-529/07) EU:C:2009:361; [2010] Bus LR 443 ; [2009] ETMR 56 (‘Lindt’) which gave the CJEU one of its first opportunities to explain and give guidance on the concept of bad faith within the meaning of the European Union rules governing the application for use and registration of trade marks. … [164] In answering those questions, the CJEU explained, first, that it is apparent from the wording of art 51(1)(b) of Regulation 40/94 that whether an application for registration was made in bad faith must be assessed as of the date that the application was filed (para 35).

19. This is binding on me, and I dismiss the Appellant’s suggestion that the correct date for assessing bad faith could ever be the EU Priority Date. The real issue on this appeal is whether the correct date for the purposes of this opposition is the EU Filing Date or the UK Filing Date. Relevant Legislation

20. The provisions relevant to the determination of this dispute are as follows. Withdrawal Agreement

21. First, as trailed above, there is the Withdrawal Agreement between the EU and the UK. Article 59(1) reads as follows (emphasis added): Right of priority with respect to pending applications for European Union trade marks , Community designs and Community plant variety rights

1. Where a person has filed an application for a European Union trade mark or a Community design in accordance with Union law before the end of the transition period and where that application was accorded a date of filing, that person shall have, for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed in the Union or for the same design, the right to file an application in the United Kingdom within 9 months from the end of the transition period. An application made pursuant to this Article shall be deemed to have the same filing date and date of priority as the corresponding application filed in the Union and, where appropriate, the seniority of a trade mark of the United Kingdom claimed under Article 39 or 40 of Regulation (EU) 2017/1001.

22. The Intervenor pointed out to me that in the course of the negotiation of the Withdrawal Agreement, there was a material change to the drafting of this provision. In an earlier version it used to read as follows (originally Article 55(1)) (emphasis added): Right of priority with respect to pending applications for European Union trade marks and Community plant variety rights

1. Where a person filed an application for a European Union trade mark in accordance with Union law before the end of the transition period and where that application was accorded a date of filing, that person shall have, for the purpose of filing a trade mark application in the United Kingdom for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed in the Union, an ad hoc right of priority in the United Kingdom during a period of six months from the end of the transition period. That right of priority shall have the effect that the date of priority of the application for the European Union trade mark counts as the date of filing of the trade mark application in the United Kingdom for the purpose of establishing which rights take precedence .

23. So it would appear that the original provisions were intended to refer to priority only. Further, they did not seek to deal with Community designs.

24. The Intervenor also reminded me that the Withdrawal Agreement should be interpreted as an international treaty in accordance with the guidance given in Articles 31 and 32 of the Vienna Convention on the Law of Treaties. The approach to interpreting articles 31 and 32 was set out by Mummery J in IRC v. Commerzbank [1990] STC 285 and approved by the Court of Appeal in HMRC v. Smallwood [2010] EWCA Civ 778 , at §26. The key is to focus on the ordinary meaning of the words in light of the purpose of the treaty. It is only if the meaning is ambiguous that recourse should be had to supplementary means of interpretation. Withdrawal Act

25. The Withdrawal Agreement was implemented in the UK by the Withdrawal Act 2019. The Intervenor pointed out to me that as originally drafted, the Withdrawal Act had stated as follows (emphasis added): 9 Implementing the withdrawal agreement (1) A Minister of the Crown may by regulations make such provision as the Minister considers appropriate for the purposes of implementing the withdrawal agreement if the Minister considers that such provision should be in force on or before exit day, subject to the prior enactment of a statute by Parliament approving the final terms of withdrawal of the United Kingdom from the EU. … (4) No regulations may be made under this section after exit day.

26. However, by the time of IP Completion Day s.9 had been deleted by the European Union (Withdrawal Agreement) Act 2020 and replaced by s.7 A, the relevant part of which reads as follows (emphasis added): 7A General implementation of remainder of withdrawal agreement (1) Subsection (2) applies to— (a) all such rights, powers, liabilities, obligations and restrictions from time to time created or arising by or under the withdrawal agreement, and (b) all such remedies and procedures from time to time provided for by or under the withdrawal agreement, as in accordance with the withdrawal agreement are without further enactment to be given legal effect or used in the United Kingdom. (2) The rights, powers, liabilities, obligations, restrictions, remedies and procedures concerned are to be— (a) recognised and available in domestic law, and (b) enforced, allowed and followed accordingly. (3) Every enactment (including an enactment contained in this Act ) is to be read and has effect subject to subsection (2).

27. In other words, whereas before IP Completion Day there was power given to Ministers to implement the Withdrawal Agreement by making regulations, as of IP Completion Day this power was rescinded (as envisaged by original s.9(4) of the Withdrawal Act) and instead the Withdrawal Agreement was given “direct effect” by s.7 A of the Withdrawal Act (as amended). TM Regulations

28. Pursuant to s.9 of the Withdrawal Act whilst it was still in force, and therefore before IP Completion Day, Schedule 2A to the Trade Marks Act 1994 was added by The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/269) (“ the TM Regulations ”) . Schedule 2A is headed “European Union Trade Marks” and states at §25 (emphasis added): and updated by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050) to change references to “exit day” to “IP Completion Day”. For convenience I have referred to the latest version. Application for registration under this Act based upon an existing EUTM application 25(1) This paragraph applies where a person who has filed an existing EUTM application or a successor in title of that person applies for registration of the same trade mark under this Act for some or all of the same goods or services. (2) Where an application for registration referred to in sub-paragraph (1) is made within a period beginning with IP completion day and ending with the end of the relevant period— (a) the relevant date for the purposes of establishing which rights take precedence is the earliest of— (i) the filing date accorded pursuant to Article 32 to the existing EUTM application; (ii) the date of priority (if any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application; and (b) the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in paragraph (a) and the date of the application under this Act .

29. Note the reference to the relevant date “ for the purposes of establishing which rights take precedence ”. This is the basis for the Respondent’s argument that §25(2) applies only to relative grounds.

30. Confusingly, there are two explanatory texts accompanying the TM Regulations. At the end of the Regulations is an Explanatory Note which is headed “(This note is not part of the Regulations)”. The note goes on to state (emphasis added): Part 3 provides that where an application for a European Union trade mark is pending on exit day, the applicant may file an application for registration of the same mark under the 1994 Act and such application may claim the filing date, the priority date (if any) and seniority of another national mark (if any) of the application for the European Union trade mark on which it is based. Such an application must be made within 9 months of exit day.

31. This note does not suggest that the effect of the earlier filing date is restricted to relative grounds.

32. There is also a document entitled Explanatory Memorandum to the Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 No. 269 with the code DExEU/EM/7-2018.2. It begins as follows:

1. Introduction 1.1 This explanatory memorandum has been prepared by the Intellectual Property Office, an Executive Agency of the Department for Business, Energy, and Industrial Strategy and is laid before Parliament by Act.

2. Purpose of the instrument 2.1 This instrument primarily amends the Trade Marks Act 1994 (TMA) and the Trade Mark Rules 2008 (TMR), to correct deficiencies in, and failures of, retained EU law to operate effectively as a result of the United Kingdom leaving the European Union.

33. Later on there is specific reference to existing EU trade marks and applications (emphasis added): 7.8 Creating comparable rights This SI allows the UK Government to ensure continued protection in the UK for registered EUTMs, with no loss of rights, by granting the owner a comparable UK trade mark. On exit day, in-force EUTMs (including those within their six-month late renewal period) will be copied across to the relevant UK register and become UK rights. These comparable UK rights will be fully independent UK trade marks which can be challenged, assigned, licensed or renewed, separately from the original EUTM. 7.9 Pending applications It is estimated that there will be approximately 85,000 EUTM applications pending at exit day. Those with such pending applications will be able to file a new application in the UK, claiming the earlier filing or priority date of the EUTM, for the same trade mark in respect of goods and services which are identical to or contained within the EU application . In order to claim the earlier filing date, such an application must be submitted to the IPO within nine months of exit day.

34. There is nothing in here either to suggest that the EU filing date is relevant only to relative grounds. Registered Designs Act

35. By way of comparison, the Intervenor also drew my attention to the Registered Designs Act 1949 and the way in which EU design applications were ported into the UK following Brexit. This was provided for in Article 59(1) of the Withdrawal Agreement but had been absent from original Article 55(1). Schedule 1A to the Registered Designs Act was inserted by The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019 (S.I. 2019/638) . Part 2, as amended, reads as follows (emphasis added): and updated by The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020 (S.I. 2020/1050) to change references to “exit day” to “ IP Completion Day ” . For convenience I have again referred to the latest version. Part 2 Applications for registered Community designs which are pending at IP completion day Applications for registration pending immediately before IP completion day 11(1) In this Part references to an existing EU application are to an application for registration of a design under the Community Design Regulation in respect of which the conditions in sub-paragraph (2) are satisfied. (2) The conditions referred to in sub-paragraph (1) are that immediately before IP completion day— (a) the application has been accorded a filing date pursuant to Article 38; and (b) the application has been neither granted nor refused by the European Union Intellectual Property Office. 12(1) Where a person who has filed an existing EU application or a successor in title of that person applies for registration of the same design under this Act within a period beginning with IP completion day and ending with the end of the relevant period, the relevant date for the purposes of establishing whether (or to what extent) the design which is the subject of the application under this Act is new or has individual character is the earliest of— (a) the filing date accorded pursuant to Article 38 to the existing EU application; (b) the date of priority (if any) claimed under Article 42 in respect of the existing EU application. (2) In sub-paragraph (1), the “relevant period” means the period of nine months beginning with the day after that on which IP completion day falls. (3) For the purposes of this Act — (a) where an application is made of the type referred to in sub-paragraph (1) within the period referred to in that sub-paragraph, the date of the application is the filing date accorded pursuant to Article 38 to the existing EU application , and (b) where the registrar registers a design which is the subject of an application of the type referred to in sub-paragraph (1) which is made within the period referred to in that sub-paragraph, the date of registration of the design is the filing date accorded pursuant to Article 38 to the existing EU application . (4) Accordingly section 3C does not apply in relation to the design.

36. As the Intervenor explained, one purpose of this is to fix the application date of any registered design by reference to the EU filing date (or priority date) to prevent the EU application becoming prior art for the UK application for the same design. However, the use of the EU filing date as the application date is not limited to this and is specified for all validity considerations (e.g. public policy/morality considerations under s.1D). The provisions are clear that the application date is the original EU filing date. The Hearing Officer’s Decision (and other decisions in the Registry)

37. The Hearing Officer addressed the question of which date to use for the bad faith assessment at §11 of the Decision as follows: The contested mark was applied for pursuant to Article 59 of the Withdrawal Agreement between the United Kingdom and the European Union. This provision allows those who had a pending EU Trade Mark (“EUTM”) at the end of the transition period to file a comparable UK application and claim the filing or priority date of the earlier EUTM as the priority date for the UK application. At IP completion day, namely 31 December 2020, the applicant had a relevant pending EUTM and it filed the comparable UK trade mark application within the nine month period allowed for doing so. Therefore, in accordance with section 6(2A) and paragraph 25 of Schedule 2A of the Act , the Applicant is entitled to rely on the priority date of its EUTM as the priority date for its comparable UK application for the purpose of establishing which rights take precedence. This means that the priority date of the EUTM, which was 17 October 2006, is the relevant date for determining priority against any conflicting third party trade mark applications. However, the relevant date for determining whether the trade mark is subject to refusal on absolute grounds, in this case the section 3(6) ground, is the actual filing date of the application in the UK. Consequently, the relevant date for the purposes of the opposition based on section 3(6) of the Act is 14 September 2021.

38. As can be seen, the Hearing Officer cited only §25 of Schedule 2A (which refers to “which rights take precedence”). The Hearing Officer did not also consider the specific wording of article 59(1) of the Withdrawal Agreement in assessing the relevant date.

39. The approach of the Hearing Officer was consistent with the approach adopted by other hearing officers in previous hearings. Taking them in chronological order, in BL O/1116/22 senior hearing officer Allan James considered §25 and came to a similar conclusion. However, as in the Decision before me, Mr James did not refer to the specific wording of article 59(1) of the Withdrawal Agreement.

40. In BL O/0421/24, Clare Boucher addressed the position in some detail at §§15-34. This included an analysis of the Withdrawal Agreement itself. She held that the intention of the Withdrawal Agreement was not to put the applicant of an EU mark in the identical position as if the application had been made in the UK on the equivalent date. All that was required was legal certainty, and that was achieved by a narrow interpretation of §25. Moreover, she held that there was a public interest in not allowing registration of marks which were non-distinctive at the UK application date even if they had been distinctive at the EU application date.

41. In BL O/1216/24, Matthew Williams assessed the position briefly at §14 and reached the same conclusion.

42. In BL O/1219/24, Mr James again dealt with the matter, this time in more detail at §§119-129. This was the MIND THE GAP decision which I determined as Appointed Person and to which I have referred above. His reasoning was consistent with the decisions which preceded his, but he addressed the policy arguments in §128, determining that there was a difference between pre-registered EU marks automatically registered as comparable UK marks on IP Completion Day, and pending EU applications:

128. By contrast, Article 59 of the Withdrawal Agreement only provides a right to re-file a pending EU trade mark application in the UK. Such re-filed applications are subject to examination on absolute grounds, and to opposition on absolute and relative grounds. There is no presumption in favour of registration. It would clearly be inequitable for such applications to be blocked by third party trade mark rights acquired in the UK whilst the EU trade mark application was pending before the EUIPO, and the UK was a member of the EU. Therefore, it makes perfect sense for re-filed UK applications to be given a right of priority over such intervening rights. There is no obvious policy reason why examination or opposition on absolute grounds should assess the position at any date other than the actual filing date of the UK application. Take, for example, a mark that is generic at that date. The fact that it may not have been generic when the EU trade mark application was filed is not a compelling reason to accept a re-filed application for registration in the UK. This is because granting an exclusive right to a generic term is anti-competitive and against the public interest. Further, the approach advocated by the applicant could lead to absurd results. Suppose a party with a pending EU trade mark application at the date of Brexit subsequently assigns its interest in the mark or makes an agreement not to exercise its right to apply to register the mark in the UK, but then goes on to apply to register the mark in the UK in its own name claiming priority from the EU filing. On the applicant’s interpretation of the legislation, the party to whom the applicant had assigned its interest in the mark, or with whom it had reached an agreement not to apply for registration in the UK, would have no entitlement to oppose the application on bad faith grounds despite the applicant’s manifest bad faith action, because the matter relied on post-dates the relevant date.

43. Finally, and most recently, in BL O/0106/26 (which I understand is the parallel opposition to the same mark brought by Tesla Inc.), Leisa Davies dealt with the matter at §§15-21, reaching the same conclusion as those hearing officers before her. Analysis

44. In its written skeleton argument, the Intervenor proposed three alternative approaches to the interpretation of the relevant legislation.

45. Under the first, it submitted that by reference to §25 of Schedule 2A (only) the relevant date for determining the question of bad faith was the UK Application Date of 14 September 2021. This was because §25 of schedule 2A was expressly limited to rights which take precedence and made no reference to absolute grounds. The Intervenor contended that the explanatory notes can also be read to be merely referring to the relevant date for the purposes of relative grounds, since they do not explicitly go further.

46. The second approach takes into account the Withdrawal Agreement but ends up with the same conclusion. The heading of article 59(1) only refers to ‘rights of priority’. The Intervenor compared article 59(1) with article 54, which deals with automatically generated comparable marks, and noted that article 59(1) does not guarantee a registration so that registrability must be assessed.

47. Unsurprisingly the Respondent favoured one or other of these approaches.

48. Under the third approach, the Intervenor acknowledged the wording of article 59(1) itself. Whilst the earlier draft in old Article 55(1) was apparently limited to the issue of priority, the final wording adopted by the UK and EU expressly states that the new application ‘ shall be deemed to have the same filing date…as the corresponding application filed in the Union ’.

49. The Intervenor suggested that this wording may have been amended at the point when registered designs were added into article 59(1). Accordingly, whilst the original intention may have been to limit the effect to the priority date (and therefore relative grounds), the article in its final form goes further. This is reflected in the express provisions of the Registered Designs Act, as amended, which implements the equivalent wording in Article 59 in respect of designs. On this basis the only way to give effect to the deeming provision is to use the EU application date for all relevant purposes for trade marks too.

50. At the hearing before me I asked Mr Muir Wood which interpretation (if any) was favoured by the Intervenor. He explained that upon reflection the Intervenor favoured the third interpretation. He submitted that the TM Regulations did not fully implement the Withdrawal Agreement, but that full effect could be given to it pursuant to s.7 A of the Withdrawal Act. Accordingly, he submitted that I should allow the appeal.

51. That is the conclusion that I have also reached. Whilst I have to come to my own decision in relation to the matters before me, and I have done so taking into account all of the arguments ventilated, I am reassured that my own analysis leads to the same outcome as is now proposed by the Comptroller General.

52. As for the detailed reasoning, I acknowledge that §25 on its own might be said to be limited to relative grounds as a result of the specific language used (“which rights take precedence”). However, there is a tension between that language and the more general language of either explanatory text. Had it been the intention of the legislators to confine §25 to relative rights only, it might have been expected that that point would have been made in one or other of the explanatory documents. I accept therefore that the interpretation of §25 on its own is unclear.

53. Turning to Article 59(1), I consider that there can be no real doubt that the parties intended the EU Filing Date to be used as the application date for all relevant purposes. That is the effect of the express words – the application “ shall be deemed to have the same filing date … as the corresponding application filed in the Union ”. The only possible counterpoint to this is the reference to the right of priority in the title, but the text of the article is clear that it is dealing with priority date, application date and seniority. Those words override the title, which itself seems to be a hangover from old Article 55.

54. This interpretation is supported by the way in which the Registered Designs Act has been updated to refer to the application date (and not just priority date) of registered designs and the express wording that the date of the application for all purposes under that Act is the EU filing date.

55. It is also consistent with policy. Contrary to the conclusions reached by the hearing officer in case BL O/0421/24, I consider that the intention of the Withdrawal Agreement was to put the applicant of an EU trade mark in the same position as someone whose EU mark had already been registered at the date the UK exited the EU. I acknowledge that there was still an additional step required for such applicants to apply for the UK mark – in contrast to existing registrations which were automatically ported into comparable marks. But I do not think the signatories of the Withdrawal Agreement intended that parties should find themselves in a materially worse position merely because their pending application had not reached grant. There is no rational policy reason for this.

56. Moreover, the policy reasons aired in some of the earlier cases to support the conclusions of the hearing officers do not really hold water upon further analysis. If a mark was distinctive/not generic at the EU Filing Date, then the applicant is entitled to have it registered and to benefit from the monopoly for the period in which it is valid. If it has become non-distinctive/generic by the time the UK application is approved, it will be liable to be revoked or declared invalid pursuant to an application made under ss.46 or 47 of the Trade Marks Act, as the case may be. This is no different to a wholly UK mark which is similarly liable to be revoked/declared invalid if circumstances change.

57. Similarly, a party who assigns its interest in a mark prior to the UK application would either not be entitled to make the application as it did not meet the requirements of §25(1) (“a person who has filed an existing EUTM or a successor in title of that person”) or would be dealt with as a matter of contract law. That ought to end up with the same outcome as the application of a bad faith consideration using the later UK Filing Date. If there was no bad faith at the EU Filing Date then I cannot see why the application should be refused on those grounds.

58. Finally, all the talk of “relative grounds” ignores the fact that at least Lord Kitchin’s category (i) of bad faith often has to consider the position of relative rights holders. See [158] of Sky quoted above and in particular his example of a party who has sought to register a right to prevent a third party from using a mark for goods despite that third party already having an earlier right to use the mark in that way.

59. Drawing these threads together, it is tempting to use what I consider to be the clear meaning of Article 59 to clear up the ambiguity in §25 in favour of a wider interpretation of the latter. But upon reflection I consider that the explanation given by the Intervenor as to the intentions of the legislators in their implementation of the Withdrawal Agreement is to be preferred.

60. Thus, I consider that the reference to “ the purposes of establishing which rights take precedence ” in §25 is probably a hangover from the same reference in original Article 55 and therefore §25 does only implement the use of the EU Filing date for priority/relative grounds. Its wording is express in this regard and it is difficult to ignore it in determining its interpretation. I suggest that the drafters of the explanatory texts were perhaps more focussed on the meaning and effect of Article 59(1) which explains why the wording in those texts is more general. However, I do not consider that those texts can displace the express wording in §25.

61. But this is all by the by once s.7 A of the Withdrawal Act is taken into account and the Withdrawal Agreement is given “direct effect”. For the reasons I have given I consider that Article 59 is clear in its intention to deem the application date of any EU application ported to the UK to be the EU Filing Date. Whether by “interpretation” of §25 or direct application, the effect is the same. The Hearing Officer therefore used the wrong date in her assessment of bad faith in this case, and I allow this appeal.

62. The right thing to do in such circumstances is to remit the case back to the Registry for a reassessment of the bad faith allegation by a hearing officer using the EU Filing Date. Costs and other matters

63. The parties addressed me briefly on costs at the conclusion of the hearing. In relation to the costs of this appeal, given that the appeal has succeeded, the Respondent should bear its own costs. The Intervenor indicated that it was also prepared to bear its own costs.

64. As for the costs below, these will need to be revisited once the further determination under s.3(6) has been made. In the circumstances I consider the correct thing to do is to set aside the costs order made below and ask the hearing officer who determines the bad faith ground using the correct date to arrive at an overall assessment taking into account the s.3(6) matters together with the mixed result under s.5.

65. Finally, I note that as any appeal from this decision would be a second appeal, permission for that can only be given by the Court of Appeal pursuant to CPR 52.7.