CJEU confirms: piecemeal renewals of EUTMs are possible – Nissan Jidiosha KK v. EUIPO, C 207/15 P

CJEU confirms: piecemeal renewals of EUTMs are possible – Nissan Jidiosha KK v. EUIPO, C‑207/15 P

Overview:In one of its (few!) positive decisions on appeal, the CJEU has decided that the owner of an EUTM who has renewed the registration only in part can later on request renewal in respect of additional goods or services of the registration, provided this is done before the end of the six-month period for late renewal (judgment of 22 June 2016, Nissan Jidosha KK v. EUIPO, C‑207/15 P).

Background: Nissan Jidosha owned the EUTM registered in classes 7, 9, and 12. This was going to expire on 23 April 2011. In January 2011, Nissan Jidosha requested the renewal of the registration in respect of classes 7 and 12. It´s second renewal request, relating to the goods in class 9, and filed in July 2011 (i.e. during the six-month grace period for late renewal), was rejected. The Board of Appeal, to which Nissan Jidosha took the matter, justified the refusal saying that the partial renewal request was an “express and unequivocal partial surrender”.

Nissan Jidosha took the matter to the General Court. The General Court agreed that it was wrong to interpret the first partial renewal request as a surrender for the goods or services for which renewal is not requested, as partially renewing was not the same as declaring partial surrender. Nevertheless, the General Court upheld the refusal of the second renewal request, arguing that this was required by legal certainty. The (first) partial renewal and consequent partial expiry of the mark had been registered and published, and third parties had to be able to rely on this. Moreover, a late renewal (requested during the six-month grace period following the renewal date) was only exceptionally allowed where no renewal had been requested during the ordinary renewal period. Where such a request had been made, late renewal was not possible.

CJEU Clarity: The Court of Justice did not agree with the General Court. It held that the only condition for a late renewal was the payment of the 25% surcharge provided in the law. There was no basis in the letter or the purpose of the law for denying subsequent partial renewal requests, nor was this required by legal certainty. It is, after all, normal for third parties to have to count on late renewal of a trade mark – whether in whole, or in part.

Concluding Remarks: It is not very frequent that trade mark owners file various subsequent renewal requests, and if only for the unfavourable cost consequences of doing so. It is, however, good to know that it can be done where the circumstances require it. Had this dispute not made it to Luxembourg, many would have never expected there to be any problem with piecemeal renewal. As such, reason has prevailed.