JUDGMENT OF THE GENERAL COURT (First Chamber)

20 April 2010 (*)

(Community trade mark – Figurative Community trade mark representing a dog – Cancellation of the mark upon expiry of the registration – Request for renewal of the mark – Application for restitutio in integrum – Article 78 of Regulation (EC) No 40/94 (now Article 81 of Regulation (EC) No 207/2009))

In Case T‑187/08,

Rodd & Gunn Australia Ltd, established in Wellington (New Zealand), represented by B. Brandreth, Barrister, and N. Jenkins, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,

defendant,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 12 March 2008 (Case R 1245/2007-4) relating to an application for restitutio in integrum,

THE GENERAL COURT (First Chamber),

composed of F. Dehousse (Rapporteur), acting as President, I. Wiszniewska-Białecka and S. Frimodt Nielsen, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Court Registry on 13 May 2008,

having regard to the response lodged at the Court Registry on 12 September 2008,

having regard to the reply lodged at the Court Registry on 3 October 2008,

having regard to the designation of another judge to complete the Chamber as one of its members was prevented from attending,

further to the hearing on 16 September 2009, during which the parties indicated their agreement to the account of the facts set out in the report for the hearing,

gives the following

Judgment

 Background to the dispute

1        On 10 July 1998 Specialty Brands Ltd, established in Wellington (New Zealand), obtained from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)), registration of the following sign:

2        The Community trade mark was registered under No 339218 in respect of goods in Classes 16, 18 and 25 under the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

3        On 31 October 2002, Speciality Brands changed its business name to Rodd & Gunn Ltd.

4        On 19 November 2004 Baldwins, the representative in New Zealand of the proprietor of the mark, informed the law firm Page White and Farrer (‘PW & F’) established in London (United Kingdom) and the representative of the proprietor of the mark before OHIM, that responsibility for renewal of the proprietor’s trade marks had been transferred to Computer Patent Annuities Ltd (‘CPA’), established in the Channel Islands.

5        On 16 January 2006, OHIM informed PW & F, in accordance with Article 47(2) of Regulation No 40/94 (now Article 47(2) of Regulation No 207/2009) and Rule 29 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), that registration of the trade mark would expire on 15 August 2006. OHIM also stated that the request for renewal of the mark and payment of the fee referred to in Article 47 of Regulation No 40/94 had to reach it by 3 September 2006 at the latest. The request could also be submitted and the fees paid within a further period of six months expiring on 3 March 2007, subject to the payment of a surcharge.

6        On 27 March 2006, OHIM sent PW & F another notification, stating that the request for renewal of the mark and payment of the fee referred to in Article 47 of Regulation No 40/94 had to reach it by 31 August 2006 at the latest. The request could also be submitted and the fees paid within a further period of six months expiring on 28 February 2007, subject to the payment of a surcharge.

7        On 3 April 2006, Baldwins informed CPA of the need to renew the Community trade mark.

8        On 30 June 2006, the mark was transferred to Pulp & Gunn Holdings Pty Ltd, established in Australia.

9        On 2 January 2007, following an internal check, a CPA employee told his superiors that he would attend to payment of the renewal fee that same day.

10      On 19 March 2007, OHIM sent a notification, pursuant to Rule 30(5) and Rule 84(5) of Regulation No 2868/95, informing PW & F that the mark had been cancelled from the Register of Community trade marks with effect from 15 August 2006.

11      On 21 May 2007, PW & F filed a request for renewal of the mark and an application for restitutio in integrum, pursuant to Article 78 of Regulation No 40/94 (now Article 81 of Regulation No 207/2009).

12      On 6 June 2007, the Trade Marks and Register Department of OHIM, taking the view that PW & F had not exercised all the due care required by the circumstances, rejected the application for restitutio in integrum and confirmed the cancellation of the mark.

13      On 6 August 2007, Speciality Brands appealed to OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Trade Marks and Register Department of 6 June 2007.

14      By decision of 12 March 2008 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. First of all, it stated that the application for restitutio in integrum had been lodged in due time and was admissible. It then found, first, that the analysis concerning the due care required by the circumstances should be carried out in the light of the conduct of the professional representative (paragraph 20 of the contested decision). In that connection, the Board of Appeal concluded that PW & F had not exercised all the due care required by the circumstances. In reaching that conclusion, the Board of Appeal took the view that PW & F had not undertaken any activity or exercised any control regarding the renewal of the mark (paragraph 21 of the contested decision). Secondly, assuming that, in the present case, the analysis of the due care required by the circumstances should be carried out in the light of the conduct of the proprietor of the mark, the Board of Appeal noted that the proprietor of the mark had delegated the renewal of the mark to a third party (in this case CPA) other than the professional representative before OHIM, within the meaning of Article 89 of Regulation No 40/94 (now Article 93 of Regulation No 207/2009). The Board of Appeal stated that relieving a professional representative of his task of monitoring the legal status of a mark was, in itself, careless. Moreover, the Board of Appeal observed that no explanation was given concerning the checks or controls which the proprietor of the mark could itself have carried out (paragraph 24 of the contested decision). Thirdly, assuming that, in the present case, the analysis of the due care required by the circumstances should be carried out having regard to the conduct of CPA, the Board of Appeal found that the error which led to the failure to observe the time-limit was not isolated or inexplicable but concerned a serious internal problem (paragraph 31 of the contested decision).

15      On 25 March 2008, the mark was transferred by Pulp & Gunn Holdings to the applicant, Rodd & Gunn Australia Ltd, established in New Zealand.

 Forms of order sought by the parties

16      The applicant claims that the Court should:

–        annul the contested decision;

–        order that restitutio in integrum be granted in respect of the mark;

–        order OHIM to pay the costs incurred before the Board of Appeal and before the Court.

17      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

18      At the hearing, the applicant indicated that it was withdrawing its second head of claim for restitutio in integrum in respect of the mark, formal note of which was taken.

 Law

 Preliminary observations

19      At the outset, it should be noted, first, that the present action has been brought by the last transferee of the mark, who did not indicate that the transfer had been registered with OHIM, and, second, that the mark has expired and was cancelled from the Register of Community trade marks before that transfer.

20      In addition, the applicant confirmed at the hearing that the appeal before the Board of Appeal was filed by Specialty Brands, even though Speciality Brands had changed its business name and was no longer the actual proprietor of the mark. The applicant stated, in that regard, in essence, that that situation arose because the amendments to be put forward to the Register of Community trade marks had, in error, not been effected in good time and, consequently, the proceedings before OHIM had been brought in the name of the proprietor of the mark as it appeared on that register.

21      In as much as those factors could give rise to doubts as regards the admissibility of the present action in the light of the wording of Articles 17 and 63 of Regulation No 40/94 (now Articles 17 and 65 of Regulation No 207/2009), the Court takes the view that it is not necessary to rule in that regard since, for the reasons set out hereafter, the action must be dismissed as unfounded.

 Admissibility of the documents produced for the first time before the Court

22      The applicant puts a number of documents in evidence before the Court, produced as Annexes 8, 9 and 10 to the application, which were not produced before OHIM. Those documents consist of an affidavit, together with, inter alia, the deed of assignment relating to the applicant’s mark (Annex 8) and two witness statements (Annexes 9 and 10). According to the applicant, the Board of Appeal ought to have addressed, of its own motion, certain issues relating to the evidence produced before it. As it did not do so, the documents in question can be produced before the Court. In that regard, the applicant refers to Case T‑291/03 Consorzio per la tutela del formaggio Grana Padano v OHIM – Biraghi (GRANA BIRAGHI) [2007] ECR II‑3081, paragraph 27.

23      OHIM opposes the production, out of time, of that additional evidence before the Court.

24      It is apparent from Article 63(2) of Regulation No 40/94 (now Article 65(2) of Regulation No 207/2009) that facts not submitted by the parties before the departments of OHIM cannot be submitted at the stage of the appeal brought before the General Court, which is called upon to assess the legality of the decision of the Board of Appeal by checking the application of Community law made by that board, particularly in the light of facts which were submitted to the latter. By contrast, the Court cannot carry out such a check by taking into account matters of fact newly produced before it (see, to that effect, Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 54, and judgment of 10 December 2008 in Case T‑228/06 Giorgio Beverly Hills v OHIM – WHG (GIORGIO BEVERLY HILLS), not published in the ECR, paragraph 26). To admit such evidence is contrary to Article 135(4) of the Rules of Procedure of the Court, under which the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (see judgment of 13 May 2009 in Case T‑183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 45 and the case-law cited). As regards GRANA BRAGHI, cited in paragraph 22 above, the applicant has submitted no argument to show that Annexes 8, 9 and 10 to the application constitute evidence which should have been taken into account, of its own motion, by the Board of Appeal. Consequently, those documents must be excluded, except for the deed of assignment relating to the applicant’s mark, which is later in date than the contested decision, is part of Annex 8 to the application and is not intended, in the present case, to amend the factual circumstances and, therefore, the subject-matter of the proceedings before the Board of Appeal (see, a contrario, jello SCHUHPARK, paragraph 46).

 Substance

25      In support of its claim, the applicant puts forward, in essence, a single plea alleging infringement of Article 78 of Regulation No 40/94. First, it states that the Board of Appeal was wrong to find that only the proprietor of the trade mark or its professional representative could renew the mark. Secondly, the Board of Appeal was wrong to find that it was careless to entrust renewal of the mark to a third party other than a professional representative. Thirdly, the Board of Appeal erred in failing to examine whether CPA acted as an agent for the proprietor of the Community trade mark. Fourthly, the Board of Appeal wrongly disregarded or misunderstood the evidence produced before it. In that regard, the applicant points out, in the first place, that it provided detailed evidence of the status of CPA and the steps taken by the latter. In particular, in the light of the evidence submitted during the proceedings before OHIM, and, inter alia, the witness statement of a CPA employee, the Board of Appeal’s finding at paragraph 31 of the contested decision that there was no isolated problem is erroneous. The applicant claims that CPA operates a system with multiple layers of fail-safes and that of 42 marks identified as requiring further action, only the mark at issue was not renewed. In that context, the applicant claims that exceptional and unusual circumstances led to the non-renewal of the mark’s registration. The failure to renew resulted from the cumulative effect of moving offices, in June and July 2006, and an unforeseeable oversight on the part of an experienced and conscientious employee. The applicant adds that during that period a vast number of trade marks were due for renewal, to which could be added the problems with OHIM’s online payment system. Those are precisely the sort of unusual circumstances that permit restitutio in integrum.

26      OHIM disputes the arguments put forward by the applicant.

27      It should be recalled that under Article 78(1) of Regulation No 40/94 (now Article 81(1) of Regulation No 207/2009), the applicant for or proprietor of a Community trade mark or any other party to proceedings before OHIM who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time-limit vis-à-vis OHIM is, upon application, to have his rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of the regulation, of causing the loss of any right or means of redress.

28      It is apparent from that provision that restitutio in integrum is subject to two conditions, first, that the party acted with all due care required by the circumstances and, second, that the non-observance of the time-limit by that party has the direct consequence of causing the loss of any right or means of redress (see, to that effect, order of 6 September 2006 in Case T‑366/04 Hensotherm v OHIM – Hensel (HENSOTHERM), not published in the ECR, paragraph 48).

29      It is also apparent from that provision that the requirement to exercise due care lies in the first instance with the proprietor of the trade mark. Thus, if the proprietor delegates administrative tasks relating to the renewal of a mark, it must ensure that the person chosen offers the assurance necessary to enable it to be assumed that those tasks will be carried out properly. Moreover, since those tasks have been delegated, the person chosen is subject to the requirement to exercise due care just as much as the proprietor. Since that person acts on behalf of and in the name of the proprietor, its actions must be regarded as being the proprietor’s actions (Case T‑136/08 Aurelia Finance v OHIM (AURELIA) [2009] ECR II‑0000, paragraphs 14 and 15).

30      In the present case, there is no need for the Court to rule on whether a non-professional representative can renew a Community trade mark, and therefore whether the proprietor of the mark exercised all due care required by the circumstances in that regard; it suffices to point out that, in any event, CPA did not exercise all due care required by the circumstances.

31      It is clear from the evidence produced before OHIM that Baldwins instructed CPA on 3 April 2006 to renew the mark. Only more than eight months after that instruction and following an internal check by CPA was the failure to renew the mark discovered. In addition, it must be pointed out that, as is apparent from a CPA internal email of 28 December 2007, the check in question was carried out following two instances in which registration of Community trade marks had expired, which proves that CPA had already encountered difficulties in complying with time-limits in connection with some Community trade marks, a fact which the applicant confirmed at the hearing. The internal check indeed showed that 42 marks required action in relation to their renewal. Ultimately, although the CPA employee responsible for renewal of the mark indicated to his superiors, by email of 2 January 2007, that he would attend to payment of the renewal fee for that mark, he did not do so and CPA’s control procedures did not detect the fact that no payment was made. It took CPA more than two months, following the letter from OHIM to PW & F on 19 March 2007, to notice that the renewal fee for the mark had not been paid. Taking account of all of those factors, it must be held, following the Board of Appeal, that the failure to renew the mark did not result from exceptional circumstances but from a more general lack of vigilance on the part of CPA. It should be added that Baldwins did not bother to ascertain whether, prior to the date of expiry of the registration of its mark, renewal had been properly effected, even though, in its letter of 3 March 2006, Baldwins indicated that it wished to have confirmation in that regard from CPA.

32      In those circumstances, the Board of Appeal did not err in rejecting the application for restitutio in integrum. The other arguments submitted by the applicant cannot invalidate that finding.

33      As regards the first argument submitted by the applicant, according to which, of the 42 marks referred to previously, only the mark at issue was not renewed, that does not call into question the fact that the need for action in relation to the renewal of those marks was discovered following an internal check by CPA and not because of the control procedures put in place by CPA and described as being particularly effective. Furthermore, as was previously pointed out, the internal check was carried out following two instances in which registration of Community trade marks had expired, which proves that CPA had already encountered difficulties in complying with time-limits in connection with some Community trade marks, a fact which the applicant confirmed at the hearing. It cannot therefore be disputed that CPA’s problem with the time-limit for renewal of the mark was not an isolated one.

34      As regards the second argument put forward by the applicant, to the effect that CPA had difficulties linked to the internal reorganisation of its offices in June and July 2006 and that, during that period, CPA had had to deal with a vast number of Community trade mark renewals, suffice it to state that those factors, which concern CPA’s internal reorganisation or were part of its professional activities, are not such as to constitute exceptional circumstances permitting restitutio in integrum to be granted (see, to that effect, Case T‑146/00 Ruf and Stier v OHIM (Image ‘DAKOTA’) [2001] ECR II‑1797, paragraph 62).

35      As regards the third argument relied on by the applicant, that the CPA employee responsible for renewing the mark encountered difficulties with OHIM’s online payment system, it must be pointed out that the evidence in the case-file shows that CPA could indeed have encountered such difficulties in 2006 and 2007. However, there is nothing to indicate that those difficulties specifically affected renewal of the mark in question. Moreover, even were that the case, it cannot seriously be argued that those difficulties persisted over several months and were continuous. In any event, as OHIM correctly points out in its pleadings, CPA had other means of paying the renewal fee.

36      It follows from the above that the single plea submitted by the applicant must be rejected as unfounded and therefore the action must be dismissed in its entirety.

 Costs

37      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Rodd & Gunn Australia Ltd to pay the costs.

Dehousse

Wiszniewska-Białecka

Frimodt Nielsen

Delivered in open court in Luxembourg on 20 April 2010.

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