Nissan buoyed by AG opinion on CTM renewal

An official at Europe’s top court has said it should reject a lower court’s judgment that prevented car maker Nissan from partially renewing a Community trademark (CTM).

Advocate-General (AG) Manuel Campos Sánchez-Bordona said the Court of Justice of the European Union (CJEU) should “set aside” a previous judgment by the EU General Court and annul a decision by an appeals board at the Office for Harmonization in the Internal Market (OHIM).

The dispute, Nissan Jidosha KK v OHIM, centres on Japan-based Nissan’s attempt to renew part of its CTM for the term ‘CVTC’—a figurative sign.

Nissan applied for the CTM on April 23, 2001. The mark was approved by OHIM in 2003 and covers classes 7, 9 and 12, which are directed to computer programs and motors.

On September 27, 2010, OHIM told Nissan that the registration of its CTM was due to expire on April 23, 2011 (ten years after its filing date) and was up for renewal.

On January 27, 2011, Nissan filed a renewal request but only for classes 7 and 12. The company changed its mind and later attempted to re-apply for renewal within class 9.

The renewal application covering class 9 fell within a six-month grace period for renewals that OHIM offers to applicants after the initial deadline, but the office rejected Nissan’s request.

Nissan then appealed against the decision to OHIM’s First Board of Appeal.

In a decision handed down in 2012, the appeal board dismissed Nissan’s claim. It said that the first request for renewal in relation to classes 7 and 12 constituted “an express and unequivocal partial surrender” of the goods in class 9.

In December 2012 Nissan appealed against the decision to the General Court. Although the court rejected the notion that a failure to renew constituted partial surrender, it still refused Nissan’s request.

The court said that the six-month grace period should only apply where there has been no previous request for renewal, and that as Nissan had already requested partial renewal, it was not entitled to use the grace period to request class 9 coverage.

In May last year, Nissan appealed against the ruling to the CJEU and asked it to set aside the judgment and order OHIM to pay costs.

The AG backed Nissan’s request.

“Article 47(3) of Regulation No 207/2009 must be interpreted … in so far as is legally possible, the renewal of Community trademarks,” AG Sánchez-Bordona wrote.

He added: “Just as judicial proceedings are generally governed by the pro actione (or favor actionis) principle as a guideline for disposing of a case in the event of interpretative uncertainties, that principle may also be applied to administrative proceedings for securing, at the request of a party, the renewal of existing registrations for a further, fresh period.”

The AG’s opinion, handed down on March 17, is not binding on the CJEU but the court is estimated to follow it in the majority of cases.

The CJEU’s full decision is expected later this year.