Recognition of renewal right of a European Union trademark by the introduction of successively partial renewals requests

The Court of Justice of the European Union (CJEU), June 22, 2016, C-207-15P, Nissan/EUIPO

Nissan is the owner of a figurative Community  trademark “CVTC” for which registration was sought in classes 7, 9 and 12. Nissan requested the renewal of the trademark, due in April of 2011, in respect of goods and services in classes 7 and 12 only.

During the grace period (an additional 6 month period, which shall take effect after the registration expires, allowing the trademark owner to issue a request for late renewal upon payment of a surcharge), Nissan also requested to include class 9 goods in the renewal of that mark, on the basis of Articles 47 and 48 of Regulation No. 207/2009.

The European Union Intellectual Property Office (EUIPO) refused Nissan’s request. The decision to refuse Nissan’s request for renewal of the “CVTC” trademark in class 9 was confirmed by both the First Board of Appeal of the EUIPO and the EUIPO General Court.

Nissan then appealed to the CJEU seeking annulment of the judgment of the General Court of the EU, which rejected the application for partial renewal of the mark in class 9.

The Court of Justice finally ruled in favour of Nissan and annulled the EUIPO decision.

The CJEU acknowledges the possibility to request successively for partial renewal of a trademark in different classes, not only before, but also during the grace period.

Therefore, the only prerequisite for successive requests for partial renewal of a Community trade mark to be accepted, is compliance with the grace period, together with payment of the surcharge.

Before the entry into force of the “EU Trademark Law reform”, requests for renewal should have been submitted “within a period of 6 months ending on the last day of the month in which protection ends” (Article 47 of the Regulation No 207/2009).

By way of this decision, the CJEU establishes that the new Article 47 of the EUTMR, provides that the request for renewal should be submitted within a period of six months prior to the expiry of registration. In other words, 10 years following the date of application for registration.

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