Jurado not a “party to proceedings” for renewal of JURADO, says CFI
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In Jurado Hermanos SL v Office for Harmonization in the Internal Market (OHIM) (Case T-410/07, May 12 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had held that Jurado Hermanos SL was not a “party to proceedings” for renewal of the registration of the trademark JURADO.
In April 1996 Café Tal de Costa Rica registered JURADO as a Community trademark for coffee and other goods in Class 30 of the Nice Classification. It then granted an exclusive licence to Jurado, valid until 2046. This was duly recorded in the Register of Community Trademarks.
In September 2005, in accordance with Article 47(2) of the Community Trademark Regulation (40/94), OHIM informed both Café Tal and Jurado that the trademark would expire on April 25 2006. In the same letter, it set out the procedure for renewal, along with the applicable fees and deadlines. In November 2006 OHIM wrote to Café Tal to inform it that as OHIM had not received an application for renewal, the trademark had been removed from the register as of its expiry date.
Subsequently, Jurado filed an application under Article 78 of the regulation seeking restitutio in integrum. Article 78(1) provides that:
“the applicant for or proprietor of a Community trademark or any other party to proceedings before [OHIM] which, in spite of all due care required by the circumstances having been taken, was unable to observe a time limit vis-à-vis [OHIM] shall, upon application, have its rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of the regulation, of causing the loss of any right or means of redress.”
Jurado claimed that it had not received OHIM’s September 2005 letter and that only upon a chance inspection of OHIM’s website had it discovered that the registration had been allowed to lapse. OHIM rejected this application on the basis that Jurado had not exercised all due care required by the circumstances. This decision was upheld in an appeal to OHIM’s Board of Appeal under Articles 57 to 62 of the regulation. The board focused on the fact that Jurado had not been expressly authorized by Café Tal to apply for renewal of the trademark and, therefore, was not entitled to do so; neither was Jurado entitled to apply for its rights in connection with the trademark to be re-established.
Jurado appealed to the CFI, submitting that the Board of Appeal had misinterpreted Article 78(1), read with Article 47(1) of the regulation, in finding that Jurado was not a “party to proceedings” for renewal of the registration of the mark because it had not been expressly authorized by Café Tal to apply for renewal.
In considering Jurado’s arguments, the CFI firstly examined Article 47(1) of the regulation, which provides that renewal of a trademark may take place at the request of the “proprietor of the trademark, or any person expressly authorized by it”. The CFI stressed that only the proprietor of a trademark or someone expressly authorized by it can be considered to be a “party to proceedings” under Article 78(1) of the regulation for renewal of the registration of a trademark.
The CFI was clear that the mere fact that Jurado held a licence to use the trademark did not mean that it was a “party to proceedings” for renewal of the registration. In the same way as any other person, the holder of a licence to use a trademark must be expressly authorized by the proprietor of the trademark to submit an application for renewal and must prove the existence of such authorization.
The CFI also rejected Jurado’s submissions that its correspondence with OHIM in some way conferred on it the status of a party to proceedings to the renewal of the registration of the trademark. The CFI clarified that any correspondence with OHIM was irrelevant, bore no significance on Jurado’s status for the purpose of applying the regulation and in no way conferred any rights on Jurado.
The CFI briefly considered Article 47(2) of the regulation, which requires OHIM to inform the proprietor and anyone with a registered right in the trademark “of the expiry of the registration in good time before the said expiry”. The CFI held that this does not confer any rights on the proprietor of the trademark or any other person. In particular, information provided in accordance with Article 47(2) does not confer status as a “party to proceedings”. Further, a failure to provide such information will not be the responsibility of OHIM and will not affect the expiry of the trademark.
Emphasis was placed on the fact that the onus is on the party seeking to rely on the regulation to prove that authorization from the proprietor of the trademark exists and to produce it as necessary. OHIM is in no way obliged to request the production of the authorization. Jurado had not, at any stage during the proceedings, indicated that it may be able to produce the appropriate authorization.
Although, in principle, a licence agreement may provide a licensee with the express authorization required by the regulation, this was not the case in this instance as the agreement was silent in this respect. Given that the wording of the regulation requires authorization to be given expressly, this would preclude arguments that authorization had been granted impliedly, within the licence or otherwise.
The CFI thus found that the Board of Appeal had correctly interpreted the regulation in finding that Jurado was not a party to proceedings for renewal of the registration of the JURADO mark because it had not been expressly authorized by Café Tal to apply for renewal. Consequently, the CFI dismissed the application on the basis that Article 78(1) of the regulation had not been satisfied and, therefore, proceedings before OHIM could have resulted only in dismissal of the appeal by the Board of Appeal.
This case highlights the importance of trademark renewals and responsibility for them. In hindsight, it would have been preferable if the licence agreement had expressly stated which of the parties would be responsible for maintenance of the registration.
Rachael Sharples and Chris McLeod, Hammonds LLP, London
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