Out-Law News 2 min. read

'Staggering' of Community trade mark renewals over time not permitted, rules EU court


Brand owners seeking to renew their Community trade mark rights cannot "stagger" the renewal of their marks over time, an EU court has ruled.

The General Court within the Court of Justice of the EU upheld a ruling by the Community trade marks and design registry within the Office for Harmonisation in the Internal Market (OHIM) in a case involving car manufacturer Nissan, albeit on a different legal basis.

"The General Court has confirmed that if a trade mark owner allows his trade mark registration to expire in respect of some goods or services, they will not, in order to reinstate that registration, be able to rely upon the fact that he had paid renewal fees for the other goods or services in the registration before the date of expiry," intellectual property law expert Emily Swithenbank of Pinsent Masons, the law firm behind Out-Law.com, said.

"Trade mark owners therefore need to be sure that the relevant class of goods or services are not going to be needed in future before allowing them to expire, otherwise a new trade mark application will need to be made," she said.

Nissan had filed a request for partial renewal of its Community trade mark in respect of goods falling within two classes – class seven goods which broadly relate to machines, machine tools, motors and engines, and goods under class 12 which relates to vehicles. It paid the renewal fees to the OHIM ahead of the date on which the existing registration of the trade mark expired.

Prospective trade mark owners are required to specify which particular goods or services their marks are to cover when seeking registration of those marks. The goods and services are listed under broad 'classes' under the Nice Agreement.

Nissan filed a subsequent request to renew the same Community trade mark for goods falling within class nine, which cover a range of apparatus and instruments, including computer programs and software. It filed its renewal papers for goods in class nine after the date of expiry for the existing registration, after the previous partial renewal of the Community trade mark had been entered into the Community trade marks register and after it had been notified of the registration.

Nissan's request for renewal of its Community trade mark for goods in class nine was refused by the OHIM which also confirmed to the car manufacturer that it had removed notice of Nissan's Community trade mark rights in this class from the Community trade marks register.

Nissan challenged the OHIM's decision before the OHIM appeal board. However, the appeal board ruled that Nissan lost its Community trade mark rights for goods in class nine by only filing a partial renewal request for the two other classes of goods it held rights for ahead of renewal deadline. It held that the omission made by partial renewal constituted a "declaration of surrender" by Nissan of its Community trade mark rights in goods in class nine.

The EU's General Court ruled that the OHIM appeal board was wrong to rule that the "non-renewal of the mark … for the class 9 goods constituted an express and unequivocal partial surrender of the mark in relation to those goods".

However, the General Court said EU Community trade mark rules do not permit "requests for renewal of Community trade marks to be staggered over time". As a result, the OHIM was "justified in not renewing" the registration of Nissan's mark for goods falling within class nine, it ruled.

"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," the General Court said in its judgment.

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