OHIM deadlines run from date of notification to representatives

European Union
In Evets Corp v Office for Harmonisation in the Internal Market (OHIM) (Case C-479/09 P, September 30 2010), the Court of Justice of the European Union (ECJ) has rejected an appeal by Evets Corp against OHIM’s rejection of a late application to renew a Community trademark (CTM) registration.

In April 1996 Evets filed CTM applications for the registration of the word mark DANELECTRO and the logo mark QWIK TUNE. The applications were registered on May 25 1998 and April 30 1998, respectively. In September 2005 OHIM wrote to the representatives for Evets to advise that the registrations were due for renewal before April 30 2006 and that renewal applications could be filed up to November 1 2006 on payment of the appropriate surcharge. As the registrations were not renewed in time, OHIM wrote to the representatives for Evets in November 2006 to advise that the registrations had been cancelled with effect from April 1 2006.

On January 26 2007 the representatives for Evets filed an application for restitutio in integrum in which it requested the reestablishment of the right to renew the registrations, primarily on the basis that renewals had been outsourced. In February 2007 OHIM’s Trademarks and Register Department rejected the application on the grounds that Evets had not taken all due care to comply with the renewal deadlines and, therefore, the registrations were deemed cancelled.

Evets’ representatives appealed against these decisions in February 2007. In November 2007 the Fourth Board of Appeal of OHIM dismissed the appeal because the application for restitutio in integrum had been filed outside the two-month time limit under Article 78(2) of the Community Trademark Regulation (40/94), and the fee had been paid outside that period. The relevant date was triggered by OHIM’s notifications on November 21 and 23 2006 that the registrations had been cancelled, and January 26 2007 was more than two months after these dates.

In January 2008 Evets appealed to the General Court, alleging, among other things, breach of Article 78. It argued that it had become aware of the cancellation of the registrations only on November 26 2006 and that the term should run for two months from that date. However, as Evets was represented before OHIM, the General Court held that the date of notification of the cancellation to the representatives was the trigger date, because this was deemed to be the date on which Evets itself became aware of the cancellation of the registrations. Therefore, the plea alleging breach of Article 78 was rejected (for further details please see "Risks of outsourcing trademark management highlighted").

On appeal to the ECJ, Evets requested:
  • annulment of the General Court’s judgment;
  • a declaration that the application for restitutio in integrum had been filed in time;
  • referral of the case back to the General Court so that it may, in turn, refer the case back to the Board of Appeal for a ruling on whether all due care had been taken to renew the marks; and
  • an order for OHIM to pay the appeal costs and the costs before the General Court. 
OHIM requested that the appeal be dismissed with costs awarded against Evets.

Unsurprisingly, the ECJ agreed with the General Court and OHIM. On examination of whether the term ran from the date of notification to Evets’ representatives or from the date on which Evets became aware of the loss of rights, the ECJ concluded that:
  • the representative is responsible for carrying out acts such as renewal; and
  • until representation is terminated, all correspondence is served on the representative and not the trademark proprietor. 
Otherwise, deadlines arising from official notifications or communications could be triggered by a date of which OHIM may never be informed - for example, the date on which the trademark proprietor itself becomes aware of a loss of rights. The ECJ thus dismissed the appeal and awarded costs against Evets.

It is tempting to conclude that the failure to renew these registrations resulted from the outsourcing by Evets’ representatives of their trademark renewals. However, despite the substantial evidence filed by Evets’ representatives, the full scenario is not apparent. Therefore, all that it is reasonable to conclude is that OHIM deadlines must run from the date of notification to a recorded representative and that all such notifications must be given due consideration. In this case, replacement CTM applications for both marks were filed in April 2007 and registered early in 2008, so any loss of rights has been mitigated to the extent possible without a successful application for restitutio in integrum.

Chris McLeod, Hammonds LLP, London

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