JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
23 September 2020 (*)
(EU trade mark — EU figurative mark 7Seven — No request for renewal of the registration of the trade mark — Cancellation of the mark on expiry of the registration — Article 53 of Regulation (EU) 2017/1001 — Application for restitutio in integrum submitted by a licensee — Article 104(1) of Regulation 2017/1001 — Duty of due care)
In Case T‑557/19,
Seven SpA, established in Leinì (Italy), represented by L. Trevisan, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,
defendant,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 4 June 2019 (Case R 2076/2018-5), relating to an application for restitutio in integrum of the right to request the renewal of the EU figurative mark 7Seven,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, U. Öberg (Rapporteur) and O. Spineanu-Matei, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 9 August 2019,
having regard to the response lodged at the Court Registry on 27 November 2019,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 22 July 1997, the applicant, Seven SpA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration was sought are in Classes 16, 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.
4        On 2 May 2001, the mark was registered as an EU trade mark under the number 591206 and that registration was published in Community Trade Marks Bulletin
No 53/2001 of 18 June 2001.
5        On 29 September 2005, the applicant assigned the mark at issue, in respect of the goods in Class 25, to Seven Licensing Company S.à r.l. and was granted a licence in respect of that mark. That licence was not entered in the EU trade marks register.
6        Following a series of transfers, the mark at issue was assigned on 30 April 2013, in respect of the goods in Class 25, to Seven7 Investment PTE Ltd (‘the proprietor of the mark at issue’). It was given the new registration number 8252223, which was published in Community Trade Marks Bulletin
No 83/2013 of 3 May 2013.
7        On 26 December 2016, in accordance with Article 47(2) of Regulation No 207/2009 (now Article 53(2) of Regulation 2017/1001), EUIPO informed the proprietor of the mark at issue that the period of protection of that mark was coming to an end on 22 July 2017 and that a request for renewal could be submitted as from 23 January 2017 until 24 July 2017. EUIPO also stated that, if an additional fee for late payment of the renewal fee was paid, the deadline would be extended until 22 January 2018.
8        The proprietor of the mark at issue did not, however, request the renewal of the registration of that mark.
9        On 2 February 2018, EUIPO notified the representative of the proprietor of the mark at issue that the period of protection of that mark had expired as of 22 July 2017.
10      On 21 July 2018, the applicant filed an application for restitutio in integrum on the basis of Article 104 of Regulation 2017/1001 and requested that its right to request the renewal of the registration of the mark at issue be re-established (‘the application to have its rights re-established’). In the application to have its rights re-established, the applicant informed EUIPO that it had been granted a licence in respect of that mark and that the proprietor of that mark had failed to comply with its contractual obligation to inform it of its intention not to renew the registration of the mark at issue, with the result that the applicant had not itself been able to renew the registration of that mark in time.
11      By decision of 30 August 2018, the ‘Operations’ department of EUIPO rejected the applicant’s application to have its rights re-established and confirmed the cancellation of the registration of the mark at issue.
12      On 23 October 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the ‘Operations’ department of EUIPO.
13      On 4 April 2019, the Board of Appeal sent a communication to the applicant in which it stated that the re-establishment of the right to request the renewal of the registration of the mark at issue could not be granted to it, since the situation described did not show that it had taken all due care required by the circumstances.
14      By decision of 4 June 2019 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. First of all, it pointed out that the provisions of Article 104 of Regulation 2017/1001 had to be interpreted strictly. Next, after stating that the failure to renew the registration of the mark at issue was attributable to the proprietor of that mark, the Board of Appeal found that the applicant could not validly request the renewal of the registration of that mark without first having obtained the express authorisation of the proprietor thereof. However, it stated that the lack of such an authorisation did not prevent the time limit for renewal from running. It observed that the applicant could have remedied the failure to renew on the part of the proprietor of the mark at issue only by showing that such a failure occurred in spite of the proprietor of that mark having exercised all due care. The Board of Appeal added that, even assuming that the licensee’s right of renewal existed independently of the proprietor of the mark at issue, it was then for the licensee to take all the necessary measures to ensure the timely renewal of the mark at issue. It also found that the applicant had not shown that there were any exceptional circumstances that could justify its having the right to request the renewal of the registration of the mark at issue re-established. Lastly, the Board of Appeal rejected as ineffective the applicant’s argument that the granting of the re-establishment of the right to request the renewal of the registration of the mark at issue would have caused no infringement of any right or expectation of any third party.
Forms of order sought
15      The applicant claims that the Court should:
–        annul the contested decision;
–        grant the application for restitutio in integrum and the request for renewal of the registration of the mark at issue.
16      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
17      In support of its action, the applicant puts forward, in essence, five pleas in law, alleging, (i) infringement of Articles 53 and 104 of Regulation 2017/1001, read in conjunction with the general principle of effectiveness, in so far as the Board of Appeal failed to have regard to the licensee’s independent right to file the request for renewal of the registration of the mark at issue and the application to have its rights re-established; (ii) infringement of Article 104 of Regulation 2017/1001, in so far as the applicant filed the application to have its rights re-established and the request for renewal within the time limits; (iii) infringement of Article 104 of Regulation 2017/1001, in so far as the applicant acted with all due care required by the circumstances; (iv) infringement of Article 104 of Regulation 2017/1001, in so far as the measures recommended by the Board of Appeal would not have ensured that the registration of the mark at issue was renewed within the prescribed periods, and (v) infringement of the general principle of protection afforded by an EU trade mark, which is set out in recital 11 of Regulation 2017/1001.
18      The Court will examine in turn, first of all, the first plea, then the second, third and fourth pleas taken together and, lastly, the fifth plea.
The question as to whether the applicant has a right to file an application to have its rights re-established and to request the renewal of the registration of the mark at issue
19      The applicant submits that the contested decision is wrong in so far as, contrary to Articles 53 and 104 of Regulation 2017/1001, the Board of Appeal assessed the request for renewal of the registration of the mark at issue and the application to have its rights re-established as if the rights to be re-established were those of the proprietor of the mark at issue, rather than those of the applicant.
20      In adds that, in accordance with the principle of effectiveness of legal rules, all legal rules granting an EU citizen a right must be applied in such a way as to ultimately achieve their objective. According to the applicant, an application seeking to have rights re-established is intended to ensure that the holder of a right in an EU trade mark does not lose that right if he does not comply with a time limit, provided that he complies with certain deadlines and has exercised all due care required by the circumstances. The applicant submits that, by requiring it to prove that the proprietor of the mark at issue had acted with such due care and was entitled to file such an application, the Board of Appeal made it impossible to exercise that right and infringed the principle of effectiveness.
21      EUIPO disputes the applicant’s arguments.
22      It must be borne in mind that Article 53(1) of Regulation 2017/1001 provides that ‘registration of the EU trade mark shall be renewed at the request of the proprietor of the EU trade mark or any person expressly authorised by him, provided that the fees have been paid’.
23      Article 104(1) of Regulation 2017/1001 provides that ‘the applicant for or proprietor of an EU trade mark or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis [EUIPO] shall, upon application, have his rights re-established if the obstacle to compliance has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress’.
24      Under the latter provision, such an application before EUIPO presupposes that: (i) the applicant is a party to the proceedings in question; (ii) in spite of the fact that it exercised all due care required by the circumstances, it has been unable to comply with a time limit vis-à-vis EUIPO; and (iii) the obstacle to compliance has the direct consequence of causing the loss of a right or means of redress (judgments of 12 May 2009, Jurado Hermanos v OHIM (JURADO), T‑410/07, EU:T:2009:153, paragraph 15, and of 5 April 2017, Renfe-Operadora v EUIPO (AVE), T‑367/15, not published, EU:T:2017:255, paragraph 24).
25      As regards the first condition, it must be pointed out that, under Article 53(1) of Regulation 2017 /1001, only the proprietor of the trade mark or a person expressly authorised by him can be regarded as a party to the renewal proceedings (judgment of 12 May 2009, JURADO, T‑410/07, EU:T:2009:153, paragraph 16).
26      There is no provision in Regulation 2017/1001 that precludes a ‘party to the renewal proceedings’ from being regarded as a ‘party to proceedings before [EUIPO]’, within the meaning of Article 104(1) of Regulation 2017/1001. The use of the conjunction ‘or’ in Article 104(1) of Regulation 2017/1001 means that an application to have rights re-established is capable of benefiting any party to proceedings before EUIPO, whether or not he is the proprietor of the registered EU trade mark at issue (see, by analogy, judgment of 31 January 2019, Thun v EUIPO (Fish), T‑604/17, not published, EU:T:2019:42, paragraph 17).
27      However, it in no way follows from those provisions that the applicant, as the holder of a licence in respect of the mark at issue, is on the same legal footing, for the purposes of the renewal of its registration, as the proprietor of that mark, but, on the contrary, that, in the same way as any other person, the applicant must be expressly authorised by the proprietor of the mark at issue in order to be able to submit a request for renewal and must prove the existence of such authorisation (see, to that effect, judgment of 12 May 2009, JURADO, T‑410/07, EU:T:2009:153, paragraph 21).
28      In the present case, it is not disputed that the applicant, on 17 July 2018, obtained an authorisation from the proprietor of the mark at issue allowing it to file an application on the basis of Article 104 of Regulation 2017/1001 with the aim of having the right to request the renewal of the registration of that mark re-established. It must, however, be pointed out that that authorisation was given after the expiry of the period within which that renewal could be requested, which is provided for under Article 53(3) of Regulation 2017/1001, and almost a year after the expiry of the actual registration of the mark on 22 July 2017.
29      Article 53(3) of Regulation 2017/1001 provides the following:
‘The request for renewal shall be submitted in the six-month period prior to the expiry of the registration. The basic fee for the renewal and, where appropriate, one or more class fees for each class of goods or services exceeding the first one shall also be paid within this period. Failing this, the request may be submitted and the fees paid within a further period of six months following the expiry of registration, provided that an additional fee for late payment of the renewal fee or late submission of the request for renewal is paid within this further period.’
30      As the Board of Appeal correctly pointed out in paragraph 25 of the contested decision, the period for requesting the renewal of a mark runs regardless of any express authorisation which the proprietor of the mark might grant to the licensee.
31      The renewal procedure thus comes to an end when the period provided for in Article 53(3) of Regulation 2017/1001 expires. Consequently, in order to be regarded as a party to those proceedings under Article 53(1) of Regulation 2017/1001, the applicant had to obtain the express authorisation of the proprietor of the mark at issue in order to be able to request the renewal of the registration of that mark at a point in time before the expiry of the prescribed period.
32      Since the applicant received an express authorisation only after that period had expired, it cannot be regarded either as a party to the renewal proceedings, under Article 53(1) of Regulation 2017/1001, or as a ‘party to proceedings before [EUIPO]’ within the meaning of Article 104(1) of that regulation. The applicant could not therefore file an application to have its rights re-established as a licensee which had lost a right and must therefore, in the present case, be held to have acted before EUIPO solely in the name and on behalf of the proprietor of the mark at issue, with the result that the issue of whether there was compliance with the conditions in Article 104(1) of Regulation 2017/1001 must be examined with regard to that proprietor. Consequently, as the Board of Appeal correctly pointed out in paragraph 25 of the contested decision, the applicant could not remedy the failure on the part of the proprietor of the mark at issue to renew unless it was shown that such a failure had occurred in spite of that proprietor’s having exercised all due care.
33      The interpretation set out in paragraph 32 above is the most apt to comply with the principle of effectiveness and meet the requirement of legal certainty. It ensures a clear determination and meticulous observance of the starting and end points of the periods referred to in Articles 53 and 104 of Regulation 2017/1001.
34      According to settled case-law, the strict application of the European Union rules on procedural time limits serves the requirements of legal certainty and the need to avoid any discrimination or arbitrary treatment in the administration of justice. No derogation from those rules may be made save where the circumstances are quite exceptional. Regardless of whether such circumstances are considered unforeseeable or to amount to force majeure or excusable error, they include, in any event, a subjective element involving the obligation, on the part of the party acting in good faith, to exercise the care and diligence required of a normally well-informed trader to monitor the course of the procedure set in motion and to comply with the prescribed periods (see, to that effect, judgment of 21 May 2014, Melt Water v OHIM (NUEVA), T‑61/13, EU:T:2014:265, paragraph 38 and the case-law cited).
35      The conditions for the application of Article 104(1) of Regulation 2017/1001 must therefore be interpreted strictly. Observance of time limits is a matter of public policy and restitutio in integrum of a registration after its cancellation is capable of undermining legal certainty (see, to that effect, judgment of 19 September 2012, Video Research USA v OHIM (VR), T‑267/11, EU:T:2012:446, paragraph 35).
36      Consequently, a proprietor of a mark who has failed to renew the registration of that mark within the prescribed period cannot circumvent the consequences of his own negligence by authorising a third party to file an application in order to have his right to request the renewal of the registration of an EU trade mark re-established after that period has expired.
37      For his part, a licensee cannot, first, apply to have his rights re-established on the sole ground that the proprietor of the mark has failed to act and has not complied with the time limit for requesting the renewal of the registration of that mark and, secondly, be permitted to go against the wishes of the proprietor of a mark who has consciously decided not to renew his registration.
38      Consequently, the Board of Appeal was right in finding that it was necessary to ascertain whether the proprietor of the mark had complied with the conditions set out in Article 104(1) of Regulation 2017/1001, with the result that the first plea must be rejected.
The question as to whether there was failure to comply with the obligation to exercise the due care required by the circumstances and with the time limits laid down in Article 104 of Regulation 2017/1001
39      First of all, the applicant submits that it complied with the time limits laid down in Article 104 of Regulation 2017/1001. It submits that that article sets two deadlines. The first is an absolute deadline of one year, which runs as from the expiry of the unobserved time limit, namely 22 July 2017. The second is a relative deadline of two months, which runs as from the removal of the obstacle that prevented compliance with the time limit. In that regard, the applicant submits that the obstacle to compliance was removed as from the time when it received the express authorisation to act from the proprietor of the mark at issue, namely on 17 July 2018. It argues that, since the application to have its rights re-established was filed on 21 July 2018, both time limits were complied with.
40      Next, the applicant submits that the Board of Appeal erred in applying an absolute criterion by requiring it to prove that it had taken all the necessary measures to ensure timely renewal. The applicant argues that it had to take only the measures that were appropriate with regard to the case at hand and were required by the circumstances. It takes the view that, in the present case, the contract between it and the proprietor of the mark at issue was subject to Italian law, which lays down the general principles of the protection of just and legitimate expectations and of good faith in the performance of contractual obligations. It submits that, consequently, the Board of Appeal should have found that, since the applicant could not have foreseen that the proprietor of the mark at issue would not fulfil its contractual obligations, it had acted with all due care required by the circumstances.
41      Lastly, the applicant submits that the Board of Appeal infringed Article 104 of Regulation 2017/1001 in that the measures which it recommended for the purposes of ensuring the timely renewal of the registration of the mark at issue would not have been effective and are irrelevant with regard to checking whether the applicant complied with the obligation of due care.
42      EUIPO disputes the applicant’s arguments.
43      It must be pointed out that it is clear from the examination of the first plea that, in the present case, the admissibility of the application to have its rights re-established is subject to compliance, by the proprietor of the mark at issue, with the conditions laid down in Article 104 of Regulation 2017/1001.
44      In that connection, first of all, it must be stated that the applicant has not given any explanation regarding the failure on the part of the proprietor of the mark at issue to act with regard to the renewal of the registration of that mark, with the result that there is nothing to indicate that that proprietor took all due care required by the circumstances, within the meaning of Article 104(1) of Regulation 2017/1001.
45      Next, it must be pointed out that, according to Article 104(2) of Regulation 2017/1001, an application to have rights re-established must be filed in writing within two months of the removal of the obstacle to compliance with the time limit.
46      However, pursuant to Article 104(5) of Regulation 2017/1001, Article 104 is not applicable to the time limits referred to in paragraph 2 of that article. Thus, where the time limit of two months, which is one of the conditions for the admissibility of the application, has not been complied with, there is no longer any possibility of filing a new application to have rights re-established, even if an explanation is given for that failure to comply with the time limit (judgment of 23 September 2009, Evets v OHIM (DANELECTRO and QWIK TUNE), T‑20/08 and T‑21/08, EU:T:2009:356, paragraph 24).
47      The applicant’s argument that the two-month period could begin to run only as at the date on which it received the authorisation of the proprietor of the mark at issue, namely 17 July 2018, with the result that the application was filed within the time limit, cannot be accepted.
48      The mere fact that it is acknowledged that the applicant could not have validly requested the renewal of the registration of the mark at issue without the express authorisation of the proprietor of that mark is not tantamount to an acknowledgment that the lack of such an authorisation would be an obstacle to compliance within the meaning of Article 104(1) of Regulation 2017/1001.
49      Furthermore, it is apparent from the material in the file that the proprietor of the mark at issue had appointed a representative, which was notified of the expiry, failing renewal, of the actual registration of that mark on 22 July 2017. However, it is not apparent from the file that that proprietor has claimed that there was any obstacle to compliance that concerned it.
50      Lastly, the question as to whether or not the applicant could rely on the compliance by the proprietor of the mark at issue with its obligation to fulfil its contractual obligations is relevant only from the point of view of their contractual relationship and the establishment of liability for any damage suffered by the applicant, but cannot affect its legal position vis-à-vis EUIPO.
51      Consequently, the application filed by the applicant was inadmissible because it did not satisfy the conditions of Article 104(1) and (2) of Regulation 2017/1001.
52      The second, third and fourth pleas must therefore be rejected and the other arguments which the applicant has put forward in that regard are not capable of calling that finding into question.
The question as to whether there was infringement of the general principle of protection afforded by an EU trade mark
53      The applicant submits that the contested decision has the effect of exposing the public to a likelihood of confusion caused by possible future registrations of signs that are similar to the mark with regard to which the registration has expired, with the result that it infringes the general principle of protection afforded by an EU trade mark, set out in recital 11 of Regulation 2017/1001, according to which the function of the registration of a trade mark is, in particular, to guarantee that trade mark as an indication of origin.
54      EUIPO disputes the applicant’s arguments.
55      It must be borne in mind that recital 11 of Regulation 2017/1001 provides the following:
‘The protection afforded by an EU trade mark, the function of which is in particular to guarantee the trade mark as an indication of origin, should be absolute in the case of identity between the mark and the sign and the goods or services. The protection should apply also in cases of similarity between the mark and the sign and the goods or services. An interpretation should be given for the concept of similarity in relation to the likelihood of confusion. The likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified, should constitute the specific condition for such protection.’
56      Although the objective of recital 11 of Regulation 2017/1001 is to guarantee the mark to the consumer or end-user as an indication of origin of the goods or services covered by the trade mark, by enabling him, without any possibility of confusion, to distinguish those goods or services from others which have another origin (see, by analogy, judgment of 19 June 2012, Chartered Institute of Patent Attorneys, C‑307/10, EU:C:2012:361, paragraph 36), its purpose is not, contrary to what the applicant seems to imply, to guarantee the registration of an EU trade mark indefinitely where it has expired on account of failure to renew the registration of that mark.
57      Where a mark expires and the registration of that mark is not renewed, it, in principle, enters the public domain, which promotes competition and encourages progress. Consequently, and in accordance with the principle of availability, it is necessary to return to the public domain trade marks which are ultimately not, or no longer, used, so that other economic agents can register them and effectively derive all the economic benefits from them.
58      In the present case, the expiry of the registration of the mark at issue has its origin in the failure to renew that registration in due time. As EUIPO correctly points out, the fact that that mark is no longer capable of serving as a basis for legal action against other later marks is a consequence of that expiry and not an infringement of the general principle of protection afforded by an EU trade mark.
59      Consequently, the fifth plea must be rejected and the action must be dismissed in its entirety, without it being necessary to examine whether the applicant’s second head of claim is admissible.
Costs
60      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
61      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Seven SpA to pay the costs.
Spielmann
Öberg
Spineanu-Matei
Delivered in open court in Luxembourg on 23 September 2020.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.