Nissan v OHIM: requests for renewals should be full and timely filed

European Union

The General Court's ruling in Nissan Jidosha KK v Office for Harmonisation in the Internal Market (OHIM) (Case T-572/12, March 4 2015) highlights the need to ensure that renewal requests are made in full before the renewal date expires - otherwise rights may not be recoverable.

Nissan owned a Community trademark (CTM) in Classes 7, 9 and 12 with a renewal date of April 23 2011. On January 27 2011 Nissan requested partial renewal of the CTM for all goods and services registered, except those in Class 9.

The partial renewal was processed and notified to Nissan's trademark agents in May 2011.

In July 2011, and within the six-month grace period for late renewal, Nissan applied to late renew the CTM in Class 9.

Both OHIM's Administration Division and the Board of Appeal dismissed Nissan's request for the late renewal of the CTM in Class 9. The Board of Appeal held that the original request for partial renewal of the CTM in Classes 7 and 12 only was an "unequivocal partial surrender" of the CTM which cannot be affected by the six-month grace period allowed for late renewal.

Nissan appealed to the General Court.

The General Court ruled that the Board of Appeal had erred in finding that a request for partial renewal of a CTM amounted to a surrender of the CTM for all goods/services not included in the renewal request. Specifically, the General Court held:

  • any request for surrender of a CTM should be expressly made to OHIM in writing;
  • a partial renewal request cannot be inferred as a request for partial surrender; and
  • a renewal request made by a trademark agent does not equate to an express intention of a trademark owner to surrender any of its rights.

Nissan no doubt believed its appeal would be upheld by the General Court, but the court found that despite the Board of Appeal's error, late renewal of the CTM in Class 9 was not possible. The General Court held that the six-month grace period provision only applies where there has been no request for renewal.

As Nissan had already requested partial renewal, it was not entitled to use the six-month grace period to request renewal of the CTM in Class 9 – the request should have been included at the time Nissan requested renewal of the CTM for Classes 7 and 12.

The decision shows that:

  • requests for renewal must be made in full within the relevant renewal deadline;
  • if requests for partial renewal are made, it will not be possible to subsequently request that the 'missing' goods/services are renewed during the six-month grace period;
  • any request for surrender of a CTM must be made expressly in writing to OHIM; and
  • rights holders should carefully consider whether to renew a CTM in full or partially, as only one opportunity to renew will be granted.

Gemma Kirkland, D Young & Co, Southampton
 

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