On July 22, the CJEU ruling was published C-207/15 P relating to a case former party in which Nissan Jidosha KK is granted the reason against the criteria of the EUIPO, which had denied Nissan the possibility of renewing its trademark for one of the classes that it had previously not included in its renewal application.
In other words, Nissan had a registered trademark in three classes of the Gazetteer, and within the six-month period prior to its expiration, it requested to renew it, but partially (only in two classes). Later, but within the grace period of six months after the natural period, he requested the renewal of his trademark for that class that he had not renewed in the non-extended natural period. The then OHIM refused to renew the trademark for that third class.
Why? According to the EUIPO, the application for partial renewal of the trademark for only two classes of the Gazetteer constituted a renunciation of the third. Furthermore, it alleged reasons of legal certainty since the partial renewal of said trademark had already been registered and had been notified to Nissan and that, as a consequence, it had produced effects erga omnes, so Nissan could not be allowed to reverse its decision not to renew the brand for that third class.
That is, the EUIPO has interpreted article 50 of the Regulation (relating to trademark renunciation) broadly, and at the same time has interpreted article 47 (relating to renewal) strictly. In both cases, against the interest of Nissan.
However, as this CJEU ruling literally says, “of these provisions It does not follow that it is prohibited to presentDuring
the deadlines referred to in Article 47(3) of Regulation No 207/2009, applications for renewal of an EU trade mark spread over time and relating to different classes of goods or services".
the deadlines referred to in Article 47(3) of Regulation No 207/2009, applications for renewal of an EU trade mark spread over time and relating to different classes of goods or services".
It seems strange that the EUIPO and the General Court did not interpret the community regulations in favor of the administrator but against him, when the controversy has been determined by a legal loophole in the Regulations, and the owner and his representative have acted within the law and complying with the requirements permitted by the regulations, (at least according to the linguistic versions of article 47 in German, Portuguese, Finnish and Dutch).
Finally, it is surprising that the EUIPO is so rigorous in the defense of legal certainty, when the representatives know perfectly well that as a union trademark can be renewed within the grace period of six months, until after that period it should not be considered. Surely the trademark is expired due to lack of renewal. We see no problem in that we should also be cautious and wait for that period in cases where there has been renewal, but only partial.
All operators in this sector seek security legal. But let's do it in a coherent way. It does not seem logical not to recognize rights to a renewal submitted during the grace period because the renewal had already been requested for other types of products and services and, however, the need to update the databases of the EUIPO the status of the trademarks, which are sometimes delayed for several months, with the insecurity that this generates.
