Source: EURLEX
Language: en
Format: md

Case C‑207/15 P

Nissan Jidosha KK

v

European Union Intellectual Property Office (EUIPO)

‛Appeal — EU trade mark — Figurative mark including the element ‘CVTC’ — Requests for renewal made in respect of some of the goods or services for which the mark is registered — Further period — Regulation (EC) No 207/2009 — Article 47 — Principle of legal certainty’

Summary — Judgment of the Court (Fifth Chamber), 22 June 2016

1. EU law — Interpretation — Texts in several languages — Differences between the various language versions — Account to be taken of the overall scheme and purpose of the legislation in question
2. EU trade mark — Duration, renewal, alteration and division of the mark — Renewal of the mark — Time-limits — Lodging of a request for partial renewal and payment of the related fees during the initial period — Request supplemented during the grace period — Lawfulness

   (Council Regulation No 207/2009, Arts 46 and 47(2) to (5))

1. See the text of the decision.

   (see para. 43)
2. The General Court erred in law in determining that Article 47(3) of Regulation No 207/2009 on the European Union trade mark and the principle of legal certainty preclude the submission, during the further period, of a request for renewal relating to certain classes of goods or services in respect of which an EU trade mark is registered, when a request for renewal concerning other classes of goods or services covered by the same mark has been submitted previously, within the period laid down in the first sentence of that provision.

   According to Article 47(3) of Regulation No 207/2009, in the French-language version examined by the General Court in the judgment under appeal, ‘la demande de renouvellement est à présenter dans un délai de six mois expirant le dernier jour du mois au cours duquel la période de protection prend fin. Les taxes doivent également être acquittées dans ce délai. À défaut, la demande peut encore être présentée et les taxes acquittées dans un délai supplémentaire de six mois prenant cours le lendemain du jour visé dans la première phrase, sous réserve du paiement d’une surtaxe au cours dudit délai supplémentaire’.

   However, it must be noted that certain language versions of the third sentence of Article 47(3) of Regulation No 207/2009 differ from the text set out in the preceding paragraph in that they do not use words corresponding to ‘à défaut’ (‘failing this’), which the General Court took into account in paragraph 38 of the judgment under appeal, or any other similar words.

   In any event, it cannot be clearly and unequivocally inferred from the use of the expression ‘à défaut’ in the French-language version of that provision that a request for renewal of an EU trade mark may be submitted only exceptionally during the further period, if no other request to that effect has previously been submitted.

   On the contrary, the wording of the third sentence of Article 47(3) of Regulation No 207/2009 in all the language versions set out in the preceding paragraphs suggests that the EU legislature made the submission of a request for renewal of an EU trade mark during the further period conditional only upon the payment of an additional fee, which constitutes the only factor enabling a request for renewal lodged in those circumstances to be distinguished from a request submitted within the initial six-month period.

   Furthermore, the broad logic of Article 47(3) of Regulation No 207/2009 is not such as to call that interpretation into question.

   It should be noted in that regard that, in particular, according to Article 47(4) of that regulation, where the request for renewal is submitted in respect of only some of the goods or services for which the EU trade mark is registered, registration is to be renewed for those goods or services only, while Article 47(5) of that regulation provides that renewal is to take effect from the day following the date on which the existing registration of the trade mark at issue expires, and that the renewal is to be registered.

   It must be held that it is not apparent from those provisions that the submission, during the periods referred to in Article 47(3) of Regulation No 207/2009, of requests for renewal of an EU trade mark, staggered over time and relating to different classes of goods or services, is prohibited.

   Furthermore, the objectives pursued by Regulation No 207/2009 support the interpretation that such requests for renewal should be accepted, provided that they are lodged before the further period expires.

   It must be observed in that respect that, by providing for the possibility of continuously requesting renewal of the registration of an EU trade mark for periods of 10 years and, in that context, laying down two consecutive periods within which that renewal may be requested pursuant to Articles 46 and 47 of Regulation No 207/2009, that regulation aims, in view of the economic importance of the protection conferred by EU trade marks, to facilitate the retention by the proprietors of those trade marks of their exclusive rights.

   It must be noted in that regard that, as is apparent from the Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions of 24 May 2011, entitled ‘A Single Market for Intellectual Property Rights — Boosting creativity and innovation to provide economic growth, high quality jobs and first class products and services in Europe’ (COM(2011) 287 final) (p. 5), the protection of brand equity stimulates investment in the quality of products and services, particularly in sectors which rely heavily on brands and customers’ brand loyalty.

   The pursuit of that aim in the context of Regulation No 207/2009 is also confirmed by the fact that, according to Article 47(2) of that regulation, EUIPO must, in good time, inform the proprietor of the EU trade mark, and any person having a registered right in respect of that trade mark, of the expiry of the registration. Moreover, under Article 81 of that regulation, the proprietor of an EU trade mark 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 may have his rights re-established, provided that he submits a request within a maximum of one year from expiry of the unobserved time limit.

   (see paras 44, 45, 47-55, 58)

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