Nissan Jidosha v OHIM (CVTC) (Judgment) [2015] EUECJ T-572/12 (04 March 2015)

Judgment Background to the dispute On 23 April 2001, the applicant — Nissan Jidosha KK — filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). The mark in respect of which registration was sought (‘the mark at issue’) is the following figurative sign: The goods in respect of which registration was sought are in Classes 7, 9 and 12 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended. The mark at issue was registered on 29 October 2003 in respect of goods in those three classes. On 27 September 2010, OHIM informed the applicant that the mark at issue was due for renewal before 23 April 2011. On 27 January 2011, renewal of the mark at issue was requested in respect of some of the goods covered by the registration, namely those in Classes 7 and 12. On 9 May 2011, OHIM informed the applicant that the renewal of the mark at issue in respect of the goods in Classes 7 and 12 had been recorded in the Register of Community trade marks on 8 May 2011 and that the registration in respect of the Class 9 goods had been removed from the Register. On 14 July, 22 July and 1 August 2011, the applicant asked OHIM to include the Class 9 goods in the renewal of the mark at issue. On 26 August 2011, OHIM refused the applicant’s request. On 29 August 2011, the applicant asked OHIM to annul the decision of 26 August 2011. On 28 September 2011, the Administration of Trade Marks Division confirmed the decision of 26 August 2011. On 25 November 2011, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Administration of Trade Marks Division. By decision of 6 September 2012 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. In essence, the Board of Appeal found that the request for renewal of the mark at issue in respect of the goods in Classes 7 and 12 constituted an express and unequivocal partial surrender, for the purposes of Article 50 of Regulation No 207/2009, in relation to the goods in Class 9, which took effect vis-à-vis the proprietor of the mark at issue as soon as it was received. Not only was that surrender received, but it was also registered and the applicant notified accordingly. According to the Board of Appeal, the proprietor of the mark is bound by the declaration of surrender, which cannot be affected by the six-month grace period allowed under the third sentence of Article 47(3) of Regulation No 207/2009. Furthermore, observing that the partial renewal of the mark at issue had been registered by OHIM and notified to the applicant, upon which it had been effective erga omnes , the Board of Appeal found that, for reasons of legal certainty, the applicant could not be allowed to reverse its decision not to renew the mark at issue in respect of certain goods. Forms of order sought The applicant claims that the Court should: – annul the contested decision; – order OHIM to pay the costs incurred before the Board of Appeal and before the Court. OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law In support of its action, the applicant relies on a single plea in law, alleging, in essence, infringement of Article 47 and Article 50 of Regulation No 207/2009. First, the applicant submits that the Board of Appeal erred in finding that the request for partial renewal of the mark at issue constituted a surrender for the purposes of Article 50 of Regulation No 207/2009, given that: (i) that request was based on Article 47 of Regulation No 207/2009, which establishes a procedure that is separate from the surrender procedure provided for in Article 50 of that regulation, particularly as regards the person who may cause the procedure to be initiated and the date on which the outcome takes effect; (ii) the request was made using the standard form for the renewal of marks, which makes no mention of surrender; and (iii) the request did not include the address of the proprietor of the mark, as required for a surrender under Rule 36 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1). The applicant argues, therefore, that the contested decision erroneously applied the effects of Article 50 of Regulation No 207/2009, regarding surrender, to a request for renewal based on Article 47 of that regulation and that the contested decision misapplied Article 50 in any event. Moreover, according to the applicant, the decision to treat the request for renewal as equivalent to a surrender of rights was in breach of Article 17(1) of the Charter of Fundamental Rights of the European Union (‘the Charter’). Secondly, the applicant submits that Article 47 of Regulation No 207/2009 permits requests for the renewal of Community trade marks to be staggered over time. According to the applicant, the mark at issue has been the subject of two successive requests for partial renewal and such requests, staggered over time, are not prohibited either by Regulation No 207/2009 or by Regulation No 2868/95. The applicant accordingly argues that, in order to renew a trade mark, it is sufficient to submit such requests and pay the requisite fees within the time allowed under the third sentence of Article 47(3) of Regulation No 207/2009. Thirdly, the applicant submits that the cancellation in respect of the Class 9 goods constitutes an alteration of the mark at issue which is impermissible under Article 48 of Regulation No 207/2009; that the publication of the partial renewal took place before the expiry of the grace period and at a date when a decision should not yet have been made; and that OHIM has accepted successive partial renewals on two previous occasions. In that regard, it should be borne in mind as regards the renewal of a Community trademark that, under Article 46 of Regulation No 207/2009, the registration of such marks remains valid for a period of 10 years from the date on which the application was filed and may be renewed for further periods of 10 years. Under the first sentence of Article 47(3) of Regulation No 207/2009, the request for renewal must be submitted within a period of six months ending on the last day of the month in which protection ends (‘the initial period’) and the fees must also be paid within that period. Failing that, the request may be submitted and the fees paid, in accordance with the third sentence of Article 47(3) of Regulation No 207/2009, within a further period of six months calculated from the day following the last day of the month in which protection ends (‘the grace period’), provided that an additional fee is paid within that period. Moreover, under Article 47(4) of Regulation No 207/2009, where the request is submitted, or the fees paid, in respect of only some of the goods or services for which the Community trade mark is registered, registration is to be renewed for those goods or services only. Lastly, Article 47(5) of Regulation No 207/2009 states that renewal is to take effect from the day following the date on which the existing registration expires. It should also be borne in mind that, as regards surrender, Article 50(1) of Regulation No 207/2009 provides that a Community trade mark may be surrendered in respect of some or all of the goods or services for which it is registered. In accordance with Article 50(2), that surrender must be declared to OHIM in writing by the proprietor of the trade mark. The surrender does not take effect until it has been entered in the Register. In the present case, the Board of Appeal found that the request for partial renewal of the mark at issue — that is to say, for the goods in Classes 7 and 12 — constituted an express and unequivocal partial surrender, for the purposes of Article 50 of Regulation No 207/2009, in relation to the Class 9 goods. However, it must be held that, as the applicant claims, the Board of Appeal erred in treating the request for partial renewal as equivalent to a surrender. There is no evidence to support the conclusion that, as required under Article 50 of Regulation No 207/2009, the applicant declared to OHIM in writing that it was surrendering the mark at issue in respect of the Class 9 goods. In particular, it should be noted that, even though the form sent to OHIM on 27 January 2011 by the applicant’s representative expressly stated that the applicant was requesting only a partial renewal of the mark at issue, it cannot be inferred that, in so doing, the applicant was declaring the surrender of that mark in respect of the goods for which it did not enter a request for renewal on that form. Such a surrender must, under Article 50 of Regulation No 207/2009, be ‘declared to [OHIM] in writing by the proprietor of the trade mark’. However, on the form submitted in the present case, entitled ‘Renewal of Community trade marks’, there is no express written ‘declaration’ of ‘surrender’, for the purposes of that provision, of the mark at issue in respect of the Class 9 goods, but merely a request for the renewal of that mark in respect of certain goods only. Moreover, such a surrender cannot be legitimately deduced from that form, since it was submitted by a representative of the proprietor of the mark, and not by the proprietor itself, as required under Article 50 of Regulation No 207/2009. It follows that the Board of Appeal erred in finding that the non-renewal of the mark at issue for the Class 9 goods constituted an express and unequivocal partial surrender of the mark in relation to those goods. However, that finding cannot, in the circumstances of the present case, result in the annulment of the contested decision. Although the assessment made by the Board of Appeal was primarily based on the assumption that the non-renewal of the mark at issue in respect of the Class 9 goods was equivalent to a partial surrender for the purposes of Article 50 of Regulation No 207/2009, the fact remains that the Board also noted, in paragraph 17 of the contested decision, that the partial renewal of the mark at issue had been registered by OHIM and notified to the proprietor of the mark on 9 May 2011, thereupon taking effect erga omnes . The Board concluded that, for reasons of legal certainty, the proprietor of the mark could not be allowed to reverse its decision not to renew the mark in respect of certain goods. That line of reasoning, however succinct, must be read in the light of the statement of reasons set out in the decision of the Administration of Trade Marks Division, which must also be taken into account. Given that the Board of Appeal endorsed that decision in its entirety, and in view of the continuity in terms of function between the Administration of Trade Marks Division and boards of appeal, to which Article 64(1) of Regulation No 207/2009 attests (see, to that effect, judgments of 13 March 2007 in OHIM v Kaul , C‑29/05 P, ECR, EU:C:2007:162 , paragraph 30, and 10 July 2006 in La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE) , T‑323/03, ECR, EU:T:2006:197, paragraphs 57 and 58), that decision, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to carry out fully its review (see, to that effect, judgment of 21 November 2007 in Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT) , T‑111/06, EU:T:2007:352, paragraph 64). It is clear from the decision of the Administration of Trade Marks Division that that division took the view that the applicant was not entitled to the grace period, given that, during the initial period, its representative had requested renewal, and paid the related fees, in respect of two classes only and that, consequently, OHIM had renewed the registration only for those two classes. It is common ground in the present case that the request for renewal submitted by the applicant’s representative during the initial period, on 27 January 2011, related only to the goods in Classes 7 and 12. In that regard, it should be pointed out that the request was uncontestably a request for partial renewal. On the renewal form, the applicant had placed a cross in the box indicating ‘Partial’ and in the box indicating ‘Renewal is requested only for the following goods and services covered by the registration’. In that connection, only the goods in Classes 7 and 12 are mentioned on the form. It can also be seen from that form that the applicant’s representative asked for the renewal fee to be debited, upon expiry of the mark at issue, from the account that that representative holds with OHIM. In those circumstances, in the light of the first sentence of Article 47(3) and of Article 47(5) of Regulation No 207/2009, OHIM was justified in renewing the mark at issue only in respect of the goods in Classes 7 and 12 and in not renewing that mark in respect of the Class 9 goods. Admittedly, the third sentence of Article 47(3) of Regulation No 207/2009 provides in essence that, failing submission of a request for renewal during the initial period, such a request may be submitted during the grace period, provided that an additional fee is paid. However, it is clear from the wording of that provision and, more specifically, from the expression ‘failing’, that the possibility of submitting a request for renewal after the expiry of the initial period is conditional on no request for renewal having been submitted during that period. Accordingly, the request for renewal must, as a general rule, be submitted during the initial period and it is only by way of exception, where no request has been submitted during the initial period, that the proprietor of a mark or any person expressly authorised by him may submit such a request during the grace period, in return for the payment of a surcharge. The applicant is therefore incorrect in claiming, in essence, that the third sentence of Article 47(3) of Regulation No 207/2009 does not include a requirement to the effect that no partial request may have been submitted before the expiry of the initial period, given that the wording of that provision precludes such an interpretation. It should also be made clear that neither the wording of Article 47(3) of Regulation No 207/2009 nor the broad logic of that provision supports the inference that that provision permits the proprietor of a trade mark or any person expressly authorised by him to submit, with regard to a single mark, successive requests for partial renewal throughout the initial period and the grace period, in respect of different classes of goods or services. On the contrary, the need for legal certainty requires that, after a request for partial renewal of a mark has been submitted and the related fees have been duly paid during the initial period, and the renewal subsequently registered by OHIM, it must no longer be possible to supplement that request after the date on which the registration originally expired — in the present case, during the grace period. Indeed, under Article 47(5) of Regulation No 207/2009, the renewal of a mark takes effect from the day after the date on which the existing registration expires. Accordingly, if a request for partial renewal has been submitted before the date on which the existing registration expires and the related fees have been paid, the renewal takes effect from the day following that date. As of that date, the renewal has effect erga omnes and, consequently, the principle of legal certainty precludes supplementation of the request for renewal after that renewal has taken effect. The applicant is therefore wrong in asserting that Article 47 of Regulation No 207/2009 permits requests for renewal of Community trade marks to be staggered over time. In the present case, it is common ground that the request for partial renewal in respect of the goods in Classes 7 and 12 was submitted before the date on which the registration expired; that the related fee was duly paid by that date; and that the request for renewal in respect of the Class 9 goods was submitted after that date and later also than the date on which the partial renewal was entered in the Register of Community trade marks and the date on which that renewal was notified to the applicant. It follows that OHIM was justified in not renewing the registration of the mark at issue in respect of the Class 9 goods. None of the arguments put forward by the applicant is capable of casting doubt on that finding. First of all, as regards the alleged infringement of the right flowing from Article 5 bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended, it must be noted that — apart from the fact that that provision establishes a period of grace for the payment of fees for the maintenance of rights and not a period of grace for requesting renewal of the registration — if the applicant had not made a request for partial renewal before the date on which the registration of the mark expired, it would have been able to request that renewal during the grace period in accordance with the third sentence of Article 47(3) of Regulation No 207/2009. Accordingly, it cannot on any view be held that the right invoked by the applicant has been infringed. Secondly, as regards the argument relating to the alleged infringement of the right to property, enshrined in Article 17 of the Charter, it should be borne in mind that that right is not absolute (see, to that effect, judgment of 3 May 2006 in Eurohypo v OHIM (EUROHYPO) , T‑439/04, ECR, EU:T:2006:119, paragraph 21) and may therefore be subject to restrictions, provided, in particular, that such restrictions are proportionate to the objective pursued, in accordance with Article 52(1) of the Charter. As it is, in the present case, it is sufficient to observe that the contested decision does not restrict the applicant’s exercise of its right to property, given that it was open to the applicant to make a valid request for renewal of the mark at issue, in respect of all the goods concerned, during the initial period or, failing that, during the grace period. Thirdly, as regards the argument that the cancellation of the Class 9 coverage constitutes an alteration which is impermissible under Article 48 of Regulation No 207/2009, it should be noted that that provision states that the Community trade mark is not to be altered in the Register ‘during the period of registration or on renewal thereof’. Clearly, that provision relates to an alteration of the sign, comprising the mark, itself and not an alteration of the goods in respect of which the mark is registered. Moreover, even if the alleged alteration were covered by that provision, the fact remains that that alteration is simply a consequence of the request for partial renewal submitted by the applicant’s representative and the registration of that partial renewal in accordance with Article 47 of Regulation No 207/2009. Fourthly, the applicant is wrong to claim that the publication of the renewal took place during a period in which no final decision should have been made. Given that OHIM had received a clear and unequivocal request for partial renewal during the initial period and that the related fees had been paid during that period, it is clear from the foregoing that OHIM was fully entitled to register that partial renewal and enter it in the Register of Community trade marks in accordance with Article 47 of Regulation No 207/2009. The fact that it is possible to submit a request for renewal during the grace period is irrelevant in that regard, given that, as has been noted, that possibility is subject, inter alia, to the condition that no request must have been submitted during the initial period. Accordingly, contrary to the assertions made by the applicant, the publication of the renewal does not constitute an error which could have been rectified under Rule 27 of Regulation No 2868/95. Lastly, as regards the argument that two earlier OHIM decisions have allowed successive requests for partial renewal, that argument may be rejected simply on the strength of the observation that the legality of decisions of the boards of appeal, which are adopted in the exercise of circumscribed powers and are not a matter of discretion, must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of OHIM’s previous decision-making practice, which, in any event, cannot bind those Courts (judgments of 15 September 2005 in BioID v OHIM , C‑37/03 P, ECR, EU:C:2005:547, paragraph 47; 12 January 2006 in Deutsche SiSi-Werke v OHIM , ECR, EU:C:2006:20 , paragraph 48; and 30 April 2013 in Boehringer Ingelheim International v OHIM (RELY-ABLE) , T‑640/11, EU:T:2013:225, paragraph 33). It follows from all of the foregoing that the single plea in law must be rejected and that, in consequence, the action must be dismissed in its entirety. Costs Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Dismisses the action; 2. Orders Nissan Jidosha KK to pay the costs. Papasavvas Forwood Bieliūnas Delivered in open court in Luxembourg on 4 March 2015. [Signatures] * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. 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