Opinion of the Advocate General — ECLI:EU:C:2016:190
Date: 2016-03-17
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - successful

summary, Article 47(3) of Regulation No 207/2009 actually grants the proprietor of a registered trade mark one year to renew that mark, divided into two six-month periods; that time-limit starts to run six months before the last day of the month in which the protection period ends and finishes six months after that date. Neither the division of the period into two parts — where the sole difference between those parts is the additional fee provided for in relation to requests submitted in the second part — nor the wording or scheme of the provision preclude the submission of successive requests for partial renewal, in particular, for the purpose of specifying the goods and services to be covered by such a renewal. c) Legal certainty in the renewal procedure 69. Nissan disputes the finding of the General Court (38) according to which the submission of a request for partial renewal which supplements a previous request is contrary to the principle of legal certainty where the first request has already been entered in the register. Paragraph 41 of the judgment under appeal elaborates on the essential protection of legal certainty in view of the fact that registration of the renewal has effect erga omnes from the day following the date on which the trade mark registration expires. 70. I also agree with this part of Nissan’s appeal. As I pointed out above, (39) there is no requirement in Article 47(5) of Regulation No 207/2009 which obliges OHIM to register a renewal before the end of the further period. Where there is a delay, either owing to the need to correct irregularities, (40) or for other reasons which prevent registration being effected swiftly and before the end of the further period, it must be possible, by means of an annotation in the register, to suspend renewal until such time as the problem identified is dealt with. 71. Further, as regards legal certainty, I believe that it is important to recall that the legislature’s interest in ensuring that the registration of Community trade marks reflects reality underlies a number of provisions of Regulation No 207/2009 and of the Implementing Regulation. That view is clear in the mechanisms created to deal with discrepancies between the reality of protection, as perceived by the proprietor of a mark, and the form it takes in the register. Thus, pursuant to Rule 30(4) of the Implementing Regulation, OHIM must notify an applicant for renewal of any irregularities found in his application; Article 26(2) of Regulation No 207/2009 permits, within certain limits, the amendment of a trade mark application even after publication; and Article 81 of that regulation provides for the right, subject to satisfaction of a number of conditions, to request restitutio in integrum where a trade mark proprietor has been unable to comply with a time-limit. 72. Against this background, I am not persuaded by the sole ground put forward by the General Court in relation to legal certainty; on the contrary, it confirms that it was OHIM’s own attitude, in rushing to register the request for renewal before the further period had even expired, which gave rise to the alleged legal uncertainty on which it relies. In short, OHIM’s ‘automatic’ and hasty action with regard to registration of the request led to the refusal of the later request for partial renewal in order to avoid legal uncertainty. 73. Nissan further contends (41) that, in the instant case, it paid at the outset the amount of fees to cover the cost of renewal in all three classes protected by its mark, which should have led OHIM to check whether its request was complete. Although that fact cannot be taken into account on appeal, since it is not included in the judgment under appeal, it has not been explicitly refuted by the other party. 74. In the light of those considerations, I believe that the first ground of appeal is well-founded in law and must therefore be allowed. Accordingly, the judgment under appeal must be set aside. 75. Although the success of the first ground of appeal renders examination of the second ground superfluous, I shall very briefly set out below my view on that ground in case the Court should decide to reject the first ground. B – The second ground of appeal, alleging the infringement of Article 48 of Regulation No 207/2009. 1. Submissions of the parties 76. According to Nissan, the partial renewal registered by OHIM, which cancelled protection for the goods in Class 9, constitutes an alteration of the mark contrary to the prohibition in Article 48 of Regulation No 207/2009. Pursuant to that provision, a Community trade mark must not be altered during the period of registration or on renewal thereof. 77. Contrary to the view of the General Court, (42) Nissan contends that Article 48 does not relate solely to the sign of which the mark is composed, since, first, it does not mention the word ‘sign’ and, second, a Community trade mark is a right in respect of an indication of the commercial origin of specific goods or services. 78. OHIM responds that the interpretation of Article 48 suggested by Nissan conflicts with the wording of paragraph 3 thereof. Furthermore, the interpretation adopted by the General Court is borne out by Article 43(1) and (2) of Regulation No 207/2009, pursuant to which a trade mark proprietor may restrict — in other words, alter — the list of goods and services. In OHIM’s submission, the General Court rightly held that the registration of a complete renewal, submitted within the time-limit, but relating to only some of the goods and services covered during the previous registration period, of necessity means that that proprietor was not seeking to extend coverage of the Community trade mark to the rest of the goods and services beyond the protection period which was about to end. 2. Analysis of the ground of appeal 79. Although I do not completely agree with the last part of OHIM’s arguments against the second ground of appeal, I do agree with its view of Article 48 of Regulation No 207/2009. The prohibition on alteration of the trade mark during the registration period affects both the sign itself and the list of goods and services. (43) Article 48(2) refers only to alteration of ‘the name and address of the proprietor’ of the trade mark, where both are included in the trade mark. The alteration of those particulars is possible if it does ‘not substantially [affect] the identity of the trade mark as originally registered’. 80. The difficulties raised by Article 48 of Regulation No 207/2009 are unconnected to those arising as a result of administrative actions carried out with a view to registering the renewal of a trade mark. Just as a partial renewal in accordance with Article 47 (for example, where the ‘second’ request is clearly out of time) does not mean that the outcome would be contrary to Article 48(2) of Regulation No 207/2009 — that is, would not involve a prohibited ‘alteration’ of the mark — nor does the fact that OHIM has incorrectly interpreted Article 47 in this case, and granted only a limited renewal, infringe Article 48. 81. The prohibition of alteration of a Community trade mark, laid down in Article 48 of Regulation No 207/2009, does not preclude the possibility that, when a Community trade mark is renewed, the scope of protection is restricted to certain classes of goods or services and does not cover all the goods or services which were hitherto covered by the trade mark. The provision refers only to alterations of the sign, which may be altered within the limits imposed by the provision, provided that the distinctive character is not affected. (44) Moreover, it would make no sense if Article 48(2) were to apply to goods and services when, I repeat, it is concerned exclusively with changes to the name and address originally included in the mark. 82. Accordingly, if the first ground of appeal is rejected, the second cannot succeed and should be rejected. VI – Effects of setting aside the judgment under appeal 83. The success of the first ground of appeal means that the judgment under appeal must therefore be set aside in so far as it confirmed the decision not to accept Nissan’s request for partial renewal. 84. Logically, the decision of the First Board of Appeal should also be annulled. However, given that the arguments in that decision were based on the treatment of the failure to mention Class 9 in the list of goods and services in the initial request for renewal submitted by Nissan, the considerations set out in paragraphs 25 to 30 of the judgment under appeal, which I consider to be correct, continue to be fully valid and justify the annulment of the decision contested by Nissan before the General Court. The judgment of the chamber of the Court of Justice seised of this appeal may adopt those considerations as its own, subject to any alterations it may make to them based on its understanding of the dispute. 85. Lastly, the setting aside of the judgment under appeal means that the Court must also decide on the costs of the proceedings at first instance. In accordance with Article 137(1), in conjunction with Article 184(2), of the Rules of Procedure of the Court of Justice, OHIM must be ordered to pay the costs at first instance and on appeal because it has been unsuccessful and the appellant has applied for costs in these proceedings. VII – Conclusion 86. In the light of the foregoing considerations, I propose that the Court should: (1) set aside the judgment of the General Court of 4 March 2015 in Case T‑572/12 Nissan Jidosha KK v OHIM; (2) annul the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 6 September 2012 in Case R 2469/2011-1; (3) order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs both at first instance and on appeal. 1 Original language: Spanish. 2 Nissan Jidosha v OHIM (T‑572/12, EU:T:2015:136). 3 Council Regulation (EC) of 26 February 2009 (OJ 2009 L 78, p. 1). 4 Commission Regulation of 13 December 1995 (OJ 1995 L 303, p. 1); last amended by Commission Regulation (EC) No 355/2009 of 31 March 2009 (OJ 2009 L 109, p. 3). There is a consolidated version on EurLex. 5 Predecessor of Regulation No 207/2009 (OJ 1994 L 11, p. 1). 6 Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21). 7 Its provisions do not enter into force until 23 March 2016. In any event, those provisions do not alter substantially the articles relevant to the determination of this appeal. 8 Class 7 lists: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines. 9 Class 9 includes: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus. 10 Class 12 refers to: Vehicles; apparatus for locomotion by land, air or water. 11 The agreement was amended on 28 September 1979. 12 Case R 2469/2011-1. 13 Paragraphs 27 to 30 of the judgment under appeal. Given that this point is not in dispute in the appeal, suffice it to state that the General Court based its reasoning on three premises: a) the proprietor of the mark had not filed a written declaration of surrender, as required by Article 50 of Regulation No 207/2009; b) the renewal form did not include any express declaration of surrender either in respect of the classes of goods not referred to; and c) in Nissan’s case, a surrender could not be deduced from the form since it was completed by a representative of Nissan and not by the proprietor undertaking itself, contrary to Article 50. 14 Paragraphs 38 to 43 of the judgment under appeal. 15 That period is 10 years from the date of the original application, according to Article 46 of Regulation No 207/2009 (see point 4 of this Opinion). 16 Paris Convention for the Protection of Industrial Property of 20 March 1883, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979; English version available at the following website: http://www.wipo.int/treaties/en/text.jsp?file_id= 288514. 17 In reference to the judgment in Eurohypo v OHIM (EUROHYPO) (T‑439/04, EU:T:2006:119, paragraph 21). 18 Paragraphs 45 to 50 of the judgment under appeal. 19 Paragraphs 38 and 39 of the judgment under appeal. 20 The conditions required for acceptance of surrender include, inter alia, that the holder must state in writing his intention to waive his right. 21 Paragraph 49 of the judgment under appeal. 22 OHIM also refers to other language versions of Regulation No 207/2009 in which that aspect is made clear, specifically, the English and French versions. 23 OHIM refers to Article 2(16) of Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 1995 L 303, p. 33). 24 Pursuant to Article 47(5) of Regulation No 207/2009. 25 The General Court acknowledged the existence of those previous administrative decisions at paragraph 50 of the judgment under appeal but then went on to state that it was not bound by them. 26 Paragraph 38 of the judgment under appeal. 27 ‘À défaut’. 28 ‘Failing this’. 29 ‘A falta de ello’. 30 ‘In caso contrario’. 31 ‘Der Antrag und die Gebürhen können noch innerhalb einer Nachfrist von sechs Monaten … eingereicht oder gezahl warden …’. 32 ‘O pedido pode ainda ser presentado e as taxas pagas num prazo suplementar de seis meses …’. 33 ‘De indiening van de aanvrage en de voldoening van de taksen kunnen nog binen een extra termin van zes maanden …’. 34 Judgments in Institute of the Motor Industry (C‑149/97, EU:C:1998:536, paragraph 16); Kurcums Metal (C‑558/11, EU:C:2012:721, paragraph 48); and GSV (C‑74/13, EU:C:2014:243, paragraph 27). 35 That is the adjustment due to the specific features of EU law, to which I referred in point 46. 36 That principle, which means that a decision is to be given only at the request of a party, is one of the most distinctive principles of trade mark law. 37 The principle of consistency (or procedural cohesion) requires judgment to be given on claims as formulated, without ultra petita abuses. 38 Paragraph 40 of the judgment under appeal. 39 Point 61 of this Opinion. 40 See Rule 30(4) of the Implementing Regulation. 41 Point 2 of its appeal. 42 Paragraph 48 of the judgment under appeal. 43 Bender, A., ‘Eintragung und Verlängerung einer Gemeinschaftsmarke’, in Fezer, K.-H., Handbuch der Markenpraxis, Band I –Markenverfahrensrecht, ed. C.H. Beck, Munich, 2007, p. 651. 44 Ibid.; see also Geroulakos, P., ‘Título V: Vigencia, renovación y modificación de la marca comunitaria — Artículo 48’, in Casado Cerviño, A./Llobregat Hurtado, M.-L., Comentarios a los reglamentos sobre la marca comunitaria, ed. La Ley, 2nd ed., Madrid, 2000, p. 442.