EU: Trade mark renewal - six months to think - CJEU clarifies that EU partial trade mark renewals can be spread out within the grace period

Judgment of 22 June 2016 in Case C-207/15 P Nissan Jidosha KK v EUIPO

The Court of Justice of the European Union(CJEU) has held that where an EU trade mark (EUTM) has been partially renewed the owner still enjoys the six month grace period in which to file any further partial renewal requests relating to the remaining goods and services.

In the present case, Nissan had requested the partial renewal of one of its EUTMs in two out of three classes. The European Union Intellectual Property Office (EUIPO) confirmed the partial renewal and informed Nissan that the registration had consequently been removed from the register in respect of the remaining goods in class 9.

Nissan subsequently filed several requests for renewal of the mark in class 9 within the six month grace period. The EUIPO refused these requests, and the First Board of Appeal confirmed that decision. The Board found that the request for partial renewal constituted a surrender of class 9 which, for reasons of legal certainty, could not be reversed after having been entered in the register.

The General Court (case ref. T-572/12) confirmed the EUIPO’s findings that successive renewal requests were prohibited. The GC based its decision on the English language version of Article 47(3) of Regulation No. 207/2009 (EUTMR) and an alleged need for legal certainty, clarifying, however, that a request for partial renewal cannot be treated as equivalent to a partial surrender.

The CJEU has now set aside the GC’s judgment and annulled the EUIPO’s appeal decision. It found that, bearing in mind that the EUTMR aims to facilitate the retention of EUTMs by their proprietors in view of their economic importance, requests for partial renewal of an EUTM, staggered over time and relating to different goods or services, were not prohibited.

As regards the alleged reasons for legal certainty, the CJEU clarified that the EUIPO is not under any obligation to process renewal requests prior to the expiry of the grace period. The Court added that, when submitting such a request, EUIPO could also envisage appropriate information measures, instead of partially removing the mark from the register.

It remains to be seen how EUIPO will implement this judgment to ensure the required legal certainty, in particular, whether it will follow the Court’s implied suggestion to only process renewal requests once the grace period has expired, resulting in a delay in renewal cases.

In view of the previous situation of legal uncertainty, where the EUIPO has both accepted and refused successive requests for partial renewal of an EUTM, this clarification by the CJEU is certainly welcome. EUTM proprietors will no longer have to file a single renewal request to be on the safe side but can now opt for filing successive requests for partial renewal throughout the six month grace period.