JUDGMENT OF THE COURT (Fifth Chamber)

30 September 2010 ( )

(Appeal – Community trade mark – Word mark DANELECTRO – Figurative mark QWIK TUNE – Request for renewal of registration of the trade mark – Application for restitutio in integrum – Failure to observe the time-limit for submitting the request for renewal of registration of the trade mark)

In Case C‑479/09 P,

APPEAL under Article 56 of the Statute of the Court of Justice, brought on 25 November 2009,

Evets Corp., established in Irvine, California (United States), represented by S. Ryan, Solicitor,

appellant,

the other party to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

THE COURT (Fifth Chamber),

composed of E. Levits, President of the Chamber, A. Borg Barthet (Rapporteur) and J.-J. Kasel, Judges,

Advocate General: J. Mazák,

Registrar: R. Grass,

having regard to the written procedure,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

Judgment

1 By its appeal, Evets Corp. (‘Evets’) seeks to have set aside in part the judgment of the Court of First Instance of the European Communities (now ‘the General Court’) of 23 September 2009 in Joined Cases T‑20/08 and T-21/08 Evets v OHIM (DANELECTRO and QWIK TUNE) [2009] ECR II-0000 (‘the judgment under appeal’), by which that Court dismissed Evets’ action for annulment of two decisions of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 November 2007 (Cases R 603/2007‑4 and R 604/2007-4) relating to its application for restitutio in integrum (‘the contested decisions’).

Legal context

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, in view of the date of the facts, the present proceedings remain governed by Regulation No 40/94.

3 Article 47 of Regulation No 40/94, headed ‘Renewal’, provided:

‘1. Registration of the Community trade mark shall be renewed at the request of the proprietor of the trade mark or any person expressly authorised by him, provided that the fees have been paid.

2. The Office shall inform the proprietor of the Community trade mark, and any person having a registered right in respect of the Community trade mark, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not involve the responsibility of the Office.

3. The request for renewal shall be submitted within a period of six months ending on the last day of the month in which protection ends. The fees 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 day referred to in the first sentence, provided that an additional fee is paid within this further period.

…’

4 Article 78 of Regulation No 40/94, headed ‘Restitutio in integrum’, provided:

‘1. The applicant for or proprietor of a Community 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 observe a time-limit vis-à-vis the Office shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any right or means of redress.

2. The application must be filed in writing within two months from the removal of the cause of non-compliance with the time-limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time-limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided in Article 47(3), third sentence, shall be deducted from the period of one year.

…’

5 Rule 76, headed ‘Authorisations’, of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4) (‘Regulation No 2868/95’), provides:

‘1. Legal practitioners and professional representatives entered on the list maintained by the Office pursuant to Article 89(2) of the Regulation shall file with the Office a signed authorisation for insertion in the files only if the Office expressly requires it, or where there are several parties to the proceedings in which the representative acts before the Office, if the other party expressly asks for it.

2. Employees acting on behalf of natural or legal persons pursuant to Article 88(3) of the Regulation shall file with the Office a signed authorisation for insertion in the files.

3. The authorisation may be filed in any official language of the Community. It may cover one or more applications or registered trade marks or may be in the form of a general authorisation authorising the representative to act in respect of all proceedings before the Office to which the person giving the authorisation is a party.

…

6. Any representative who has ceased to be authorised shall continue to be regarded as the representative until the termination of his authorisation has been communicated to the Office.

…’

6 Rule 77 of Regulation No 2868/95, headed ‘Representation’, provides:

‘Any notification or other communication addressed by the Office to the duly authorised representative shall have the same effect as if it had been addressed to the represented person. Any communication addressed to the Office by the duly authorised representative shall have the same effect as if it originated from the represented person.’

Background to the dispute

7 On 1 April 1996, Evets filed two applications for registration of Community trade marks with OHIM pursuant to Regulation No 40/94.

8 The marks for which registration was sought are the word mark DANELECTRO and the figurative mark QWIK TUNE covering goods in Classes 9 and 15 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.

9 The mark QWIK TUNE was registered on 30 April 1998 and the mark DANELECTRO on 25 May 1998.

10 On 7 and 14 September 2005, pursuant to Article 47(2) of Regulation No 40/94 and Rule 29 of Regulation No 2868/95, OHIM informed Evets’ representative of the need to renew the abovementioned two Community trade marks before 30 April 2006. The requests for renewal could still be submitted and the fees could still be paid within a further period of six months expiring on 1 November 2006.

11 On 21 and 23 November 2006, OHIM issued notifications pursuant to Article 47 of Regulation No 40/94, Rule 30(6), Rule 84(3)(1) and Rule 84(5) of Regulation No 2868/95 to inform Evets’ representative that the registrations of the trade marks QWIK TUNE and DANELECTRO had been cancelled from the Register of Community trade marks on 1 October 2006, with effect from 1 April 2006.

12 On 26 January 2007, Evets’ representative filed, in respect of the two marks at issue, an application pursuant to Article 78 of Regulation No 40/94 for restitutio in integrum, in which it requested that the right to renew the registrations in question be re-established.

13 By decisions of 22 February 2007, the Trade Marks and Register Department of OHIM refused the application for restitutio in integrum on the ground that Evets had not taken all due care required by the circumstances to comply with the time-limit for renewal. Consequently, the registration of the marks QWIK TUNE and DANELECTRO was deemed to have been cancelled pursuant to Rule 30(6) of Regulation No 2868/95.

14 On 21 June 2007, Evets filed a notice of appeal against the decisions of the Trade Marks and Register Department of OHIM of 22 February 2007.

15 By the contested decisions, the Fourth Board of Appeal of OHIM dismissed the appeal and declared that the application for restitutio in integrum was deemed not to have been filed as the application had been made outside the two-month period provided for in Article 78(2) of Regulation No 40/94 and the fee required for re-establishment of rights had been paid outside that period. The Board of Appeal found that the dates of removal of the cause of non-compliance with the time-limit were 21 November 2006 for QWIK TUNE and 23 November 2006 for DANELECTRO, the dates on which OHIM had informed Evets’ representative that those marks had been cancelled, and that the application for restitutio in integrum submitted on 26 January 2007 had been made after that two-month period had expired.

Procedure before the General Court and the judgment under appeal

16 By applications lodged at the Registry of the General Court on 8 January 2008, Evets brought an action for annulment of the contested decisions.

17 In support of its action for annulment, Evets put forward, in essence, three pleas alleging, first, infringement of the principle prohibiting reformatio in pejus, second, infringement of the rights of the defence and of the right to be heard and, third, breach of Article 78 of Regulation No 40/94.

18 It is necessary to mention only the General Court’s assessment with regard to the breach of Article 78 of Regulation No 40/94, which is set out in paragraphs 14 to 34 of the judgment under appeal, in so far as the appeal relates only to that plea.

19 The General Court first found, in paragraph 17 of the judgment under appeal, that the parties agreed, in principle, that the ‘removal of the cause of non-compliance with the time-limit’, within the meaning of Article 78(2) of Regulation No 40/94, occurred on the date on which Evets was informed of the loss of the rights in question.

20 As regards Evets’ argument that the application for restitutio in integrum was filed within the time-limit because the two-month period could start to run only on the date on which it, and not its representative, became aware of the loss of the rights in question, namely on 26 November 2006, the General Court rejected this in paragraph 21 of the judgment under appeal on the ground that, in its view, the date on which the loss of a right is brought to the attention of the representative must be deemed to be the date on which the represented person, namely Evets, became aware of it.

21 The General Court pointed out in that respect, as is apparent from paragraphs 22 and 23 of the judgment under appeal, that, pursuant to Rule 77 of Regulation No 2868/95, any notification or other communication addressed by OHIM to a duly authorised representative is to have the same effect as if it had been addressed to the represented person. With regard to OHIM, what matters are its communications with Evets’ representative and not the communications between Evets’ representative and Evets.

22 As for Evets’ argument relating to the overall time-limit of one year laid down by the Community legislature within which restitutio in integrum proceedings must be brought, the General Court pointed out, in paragraph 28 of the judgment under appeal, that Article 78(2) of Regulation No 40/94 does not concern solely applications for restitutio in integrum in cases of non-submission within the time-limit of a request for renewal of registration of a mark, but also concerns applications for restitutio in integrum on account of failure to observe the time-limit where the non-observance in question has the direct consequence, by virtue of the provisions of that regulation, of causing the loss of any right or means of redress. It stated that the non-observance, and in particular the removal of its cause, can take many forms and, therefore, the one-year time-limit is laid down as an absolute deadline, with the result that, if the cause of non-compliance is removed only one year after the unobserved time-limit has passed, the application for restitutio in integrum is no longer admissible. According to the General Court, the two-month period laid down in Article 78(2) thus forms part of the one-year period.

23 As regards Evets’ argument relating to the practice of the European Patent Office’s (EPO) Boards of Appeal and to Article 122(2) of the Convention on the Grant of European Patents of 5 October 1973, as amended, the General Court held, in paragraphs 29 to 31 of the judgment under appeal, that that practice is not relevant in so far as the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it, which applies independently of any other system, and in so far as the provisions governing patents seek to regulate procedures different from those applicable in the area of trade marks.

24 In paragraph 32 of the judgment under appeal, the General Court added that, in any event, the decision of the Technical Board of Appeal of the EPO of 16 April 1985, to which Evets refers, in no way shows how the EPO would give a different interpretation to Article 78 of Regulation No 40/94. In the case which gave rise to that decision, it was found that, where the employee of an agent discovers that failure to observe a time-limit has led to the loss of a right, the cause of non-compliance which is at the root of that failure is deemed not to have been removed as long as the agent concerned has not been personally informed of the situation, since it is for him to decide whether to file an application for restitutio in integrum and, if he decides to file such an application, to outline the grounds and circumstances which should be invoked before the EPO. According to the General Court, however, Evets’ representative did not, in the present case, claim that it had not been personally informed of the situation on the dates of the notifications mentioned in paragraph 11 of the present judgment.

25 Consequently, the General Court held that the plea alleging breach of Article 78 of Regulation No 40/94 had to be rejected.

Procedure before the Court and forms of order sought

26 By its appeal, Evets claims that the Court should:

– annul the judgment under appeal;

– declare that the application for restitutio in integrum was brought within the time-limits prescribed by Article 78(2) of Regulation No 40/94;

– refer the case back to the General Court so that it may in turn refer the case back to the Fourth Board of Appeal of OHIM for it to rule on the substantive issue as to whether all due care was taken to renew the trade marks in question; and

– order OHIM to pay the costs incurred both in the appeal proceedings and in the proceedings before the General Court.

27 OHIM contends that the appeal should be dismissed and that Evets should be ordered to pay the costs.

The appeal

Arguments of the parties

28 Evets puts forward a single ground of appeal, alleging breach of Article 78 of Regulation No 40/94 in so far as the General Court was wrong to hold that the two-month period from the removal of the cause of non-compliance with the time‑limit started to run on the date on which its representative became aware of the loss of the rights in question, that is to say, on 21 November 2006 in respect of the mark QWIK TUNE and on 23 November 2006 in respect of the mark DANELECTRO, and that, consequently, the application for restitutio in integrum submitted on 26 January 2007 had been filed outside the time-limit.

29 Evets maintains that Rule 77 of Regulation No 2868/95, according to which any notification addressed by OHIM to a duly authorised representative is to have the same effect as if it had been addressed to the represented person, applies only to notifications sent to a party’s representative in relation to matters for which that representative has authority to act. Rule 77 is not, however, relevant in the present case in so far as the representative in question that received the notification from OHIM was not authorised by Evets to act in respect of the payment of renewal fees.

30 Evets takes the view that, given that Article 47 of Regulation No 40/94 provides that registration of the Community trade mark may be renewed at the request of the proprietor of the trade mark or of ‘any person expressly authorised by him’, professional representation is not required for the purposes of renewal of registration of a trade mark. Regulation No 40/94 therefore distinguishes between, first, representation of the proprietor of the trade mark before OHIM, which must satisfy the requirements of Articles 88 and 89 of that regulation, and, secondly, mere payment of renewal fees, which any person may be authorised to do under Article 47 of that regulation.

31 Evets therefore submits that the relevant person to be considered in the present case to ascertain the date of removal of the cause of non-compliance with the time-limit, and therefore the starting point of the two-month period for submitting an application for restitutio in integrum, is the person with responsibility for carrying out the act in question, that is to say, in the present case, the renewal of registration of the Community trade marks at issue and the payment of the fees relating to that registration.

32 Evets adds that the interpretation given by the EPO’s Boards of Appeal must be taken into consideration for the purposes of interpreting Article 78 of Regulation No 40/94, even though the provisions of the Convention on the Grant of European Patents of 5 October 1973, as amended, are not strictly binding in Community law.

33 OHIM submits that the ground of appeal is unfounded.

34 OHIM contends that, pursuant to Rule 76 of Regulation No 2868/95, the authorisation given by the proprietor of a trade mark to a representative covers all procedural steps, whether that authorisation is an individual or a general authorisation, and thus includes the procedural steps relating to the renewal of registration of that trade mark. The fact that the proprietor of a trade mark has entrusted a third party with the specific task of requesting the renewal of his trade mark and paying the relevant fees cannot limit the extent of the representative’s authorisation vis-à-vis OHIM, unless that authorisation has been withdrawn.

35 OHIM maintains that the interpretation given by Evets to Rule 77 of Regulation No 2868/95 would mean that the date on which OHIM’s notifications take effect may depend on provisions in the representative’s authorisation of which OHIM may never be informed. Such an interpretation would conflict with the principles provided for by Rule 67(2) of that regulation, according to which, if several representatives have been appointed for a single interested party, notification to any one of them is to be sufficient, unless a specific address for service has been indicated, and by Rule 76(8) of that regulation, which provides that, where several representatives are appointed by the same party, they may, notwithstanding any provisions to the contrary in their authorisations, act either jointly or singly.

Findings of the Court

36 In order to establish whether the General Court was right in law to hold that the application for restitutio in integrum filed by Evets on 26 January 2007 was submitted out of time, it is necessary to examine whether the starting point for the period of two months from the removal of the cause of non-compliance with the time-limit for submitting an application for restitutio in integrum within the meaning of Article 78 of Regulation No 40/94 corresponds to the date on which Evets’ representative was informed that the rights in question had been lost or to that on which Evets itself became aware of that loss.

37 It must be borne in mind that the detailed rules of application governing representation within the context of Regulation No 40/94 are laid down in Title XI, Part G, of Regulation No 2868/95.

38 It is thus apparent from Rule 76(1) to (3) of that regulation, headed ‘Authorisations’, that the authorisation of the representative of a trade mark proprietor before OHIM covers all procedural steps relating to trade marks, including the procedural steps relating to the renewal of registration of a Community trade mark.

39 Pursuant to Rule 77 of Regulation No 2868/95, headed ‘Representation’, any notification or other communication addressed by OHIM to a duly authorised representative is to have the same effect as if it had been addressed to the represented person. The same is true of any communication addressed to OHIM by the duly authorised representative, which is to have the same effect as if it originated from the represented person.

40 It must be pointed out that Rule 77 does not lay down any distinction between a notification or communication which has the effect of causing a period to start to run and one which does not have such an effect, with the result that that rule applies irrespective of the effect produced by that notification or communication.

41 It therefore follows from the rules of representation in the context of Regulation No 40/94 that what matters with regard to OHIM are the communications and notifications exchanged between it and the representative of the proprietor of the trade mark in question, and not those exchanged between the representative of the proprietor of that mark and that proprietor.

42 It follows, in the present case, that the dates on which OHIM informed Evets’ representative of the expiry of the registration of the trade marks QWIK TUNE and DANELECTRO, namely 21 and 23 November 2006 respectively, must be deemed to be the dates on which Evets became aware of the loss of its rights, as the General Court correctly held in paragraph 21 of the judgment under appeal.

43 None of the arguments put forward by Evets can call that finding into question.

44 First, the Court rejects the argument that, as Regulation No 40/94 establishes a distinction between, on the one hand, representation of the proprietor of a trade mark before OHIM in accordance with Articles 88 and 89 of that regulation and, on the other, performance of the formal requirements for renewal which any person may be authorised to carry out in accordance with Article 47 of that regulation, the relevant person to be taken into consideration for the purpose of determining the starting point of the period for submitting an application for restitutio in integrum is the person with responsibility for carrying out the act in question.

45 It must be pointed out in this regard that it follows clearly from Rule 77 of Regulation No 2868/95 that any notification or other communication addressed by OHIM to a duly authorised representative is to have the same effect as if it had been addressed to the represented person, irrespective of whether the proprietor of the Community trade mark in question has, in addition to the representative before OHIM, made a third party responsible for carrying out certain acts such as the renewal of registration of that mark.

46 Furthermore, Rule 76(6) of Regulation No 2868/95 provides that any representative who has ceased to be authorised is to continue to be regarded as the representative until the termination of his authorisation has been communicated to OHIM.

47 It must also be pointed out that, where the proprietor of a Community trade mark expressly appoints a third party to carry out the procedural requirements for renewal of registration of that mark, pursuant to Article 47 of Regulation No 40/94, that third party does not have capacity, under the scheme established by that regulation, to receive a notification or communication from OHIM unless he has also been appointed as a representative before OHIM.

48 What is more, in a situation where that third party is appointed as a representative before OHIM, it is apparent from Rule 67(2) of Regulation No 2868/95 that, if several representatives have been appointed for a single interested party, notification to any one of them is to be sufficient.

49 As regards, secondly, the argument relating to the practice of the EPO’s Boards of Appeal, suffice it to point out in that regard, as the General Court stated correctly in paragraphs 29 to 31 of the judgment under appeal, that the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any other system (see Case C‑238/06 P Develey v OHIM [2007] ECR I-9375, paragraph 71, and Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47).

50 It follows from the foregoing that the appeal must be dismissed as unfounded.

Costs

51 Under Article 69(2) of the Rules of Procedure of the Court, applicable to appeal proceedings by virtue of Article 118 of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs to be awarded against Evets and the latter has been unsuccessful, Evets must be ordered to pay the costs.

On those grounds, the Court (Fifth Chamber) hereby:

1. Dismisses the appeal;

2. Orders Evets Corp. to pay the costs.

[Signatures]