Aurelia Finance v OHIM (CFI (Eighth Chamber); T-136/08; 13.05.2009)

On 24 August 2004, Aurelia Finance SA (the “Applicant”) was granted a CTM for the word mark AURELIA for various services in Class 36. The registration was due to expire on 19 June 2006, and the request for renewal together with the renewal fee was required to be submitted and paid before 2 July 2006. If such deadline was not met, the deadline could be extended until 2 January 2007 provided an additional fee was paid for late payment. The renewal period expired and, on 22 January 2007, OHIM informed the Applicant that the mark had been removed from the Register.

The circumstances which resulted in the failure to renew the mark were as follows: the Applicant had appointed a specialist firm providing trade mark renewal services (the “Specialist Firm”). The Specialist Firm had a computerised database system which generated warning letters for trade mark renewals. In this instance an employee of the Specialist Firm had failed to enter certain data concerning the Applicant into the database which was necessary for the correct operation of this system and as a result no notification was sent to the Applicant.

On 5 March 2007, the Applicant filed an application at OHIM for restitutio in integrum pursuant to Article 78(1). OHIM dismissed the application. The Applicant’s appeal to the BoA was dismissed. The Applicant then appealed to the CFI.

The Applicant submitted that it had satisfied the requirement to exercise due care by employing the Specialist Firm. In rejecting this, the CFI held that, although Article 78(1) required that the due care be exercised by the proprietor, if the proprietor delegated administrative tasks relating to the mark’s renewal, it must ensure that person can provide the necessary assurances for the proprietor to be satisfied that such tasks will be carried out correctly. The delegated person acts on behalf of and in the name of the proprietor and is therefore required to exercise due care just as much as the proprietor. The question to be addressed was therefore whether the Specialist Firm had exercised all due care required by the circumstances.

The Applicant raised a number of submissions that the standard of care in connection with trade mark renewals should be low, all of which were rejected by the CFI.

The Applicant further submitted that the system used by the Specialist Firm met the requirements of the OHIM guidelines for a system of internal control and monitoring of time limits to be put in place that generally excludes the involuntary non-observance of time limits. The Applicant argued that the employee’s failure to input the required data was exceptional. The CFI confirmed that in order for restitutio in integrum to be granted it required exceptional circumstances that were unforeseeable. However, human errors in inputting data cannot be regarded as exceptional or unforeseeable and that the system should have provided a mechanism capable of identifying and correcting such errors. The CFI dismissed the appeal.

Jurado Hermanos, SL v OHIM (CFI (Second Chamber); T-410/07; 12.05.09)

Café Tal de Costa Rica SA registered the mark JURADO as a CTM for goods in Class 30 and subsequently granted Jurado Hermanos an exclusive licence in respect of that mark, provided that the licence was to remain valid for 48 years.

The registration was due to expire on 25 April 2006 and OHIM sent letters to both Café Tal de Costa Rica and Jurado of this which explained how to renew the registration. OHIM did not receive an application for renewal and removed the mark from the register.

Jurado filed for an application for restitutio in integrum under Article 78(1), submitting that it had not received OHIM’s letter. OHIM rejected the application on the basis that Jurado had failed to show that it had exercised all due care in the circumstances. The BoA dismissed Jurado’s appeal without considering whether Jurado had met the condition of showing due care. Instead, it held that, since Jurado had not been expressly authorised by the proprietor of the trade mark to apply for the renewal, it was not entitled to apply for re-establishment of its rights in that connection.

The CFI dismissed the appeal. The BoA did not err in holding that, under Article 78(1) read in conjunction with Article 47(1), Jurado was not a party to the proceedings for the renewal of the registration of the mark because it had not been expressly authorised by Café Tal de Costa Rica to apply for the renewal. A mere licence to use the mark did not automatically make Jurado a party to the renewal proceedings. Express authorisation was necessary and could not be implied from an exclusive licence. Jurado had not provided any evidence of express authorisation and therefore the condition set out in Article 78(1) was not fulfilled.

Omnicare v OHIM; Astellas Pharma (CFI (Third Chamber); T-277/06; 07.05.09)

Omnicare filed a notice of appeal on 30 January 2006 against the Opposition Division’s decision to reject its application for registration of OMNICARE as a CTM. On 27 March 2006, the Registry of the BoA informed Omnicare that it had not received the notice of appeal. When the notice of appeal was re-submitted by Omnicare on 30 March, the Registry informed Omnicare that its appeal was unlikely to be admissible as the two month time limit for lodging an appeal had already expired (the time limit had expired on 30 January; the date on which the first notice of appeal had been submitted by Omnicare).

On 30 May 2006, Omnicare filed an application for restitutio in integrum pursuant to Article 78. The BoA rejected the application, citing the provisions in Articles 78(5) and 78(a) as a bar to relief. In particular, the BoA concluded that, when read together, Article 78(5) and 78a excluded restitutio in integrum when the unobserved time limit is the time limit to file an appeal.

The CFI annulled the decision of the BoA. It held the BoA’s assessment that the mandatory time limit for filing an application (laid down in Article 42) and the time limit for filing an appeal (laid down in Article 59) were put on the same footing, both excluding restitution in intergrum, was incorrect. The Court’s decision was based on the following: (i) there was an absence of express reference to Article 59 in the list of exclusions in Article 78(5); (ii) doubt was cast on the BoA’s reasoning based on a successive series of exclusions by the fact that Article 42 was also referred to in Article 78a; and (iii) Article 78(5) should be interpreted strictly. Omnicare’s application for restitutio in integrum was referred back to OHIM for a decision.