Judgments nº T-21/08 of Court of First Instance of the European Communities, September 23, 2009

• Resolution Date: September 23, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-21/08

In Joined Cases T-20/08 and T-21/08,

Evets Corp., established in Irvine, California (United States), represented by S. Ryan, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

ACTION brought against two decisions of the Fourth Board of Appeal of OHIM of 5 November 2007 (Cases R 603/2007-4 and R 604/2007-4), relating to an application for restitutio in integrum made by the applicant,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of V. Tiili (Rapporteur), President, F. Dehousse and I. Wiszniewska-Bia-ecka, Judges,

Registrar: N. Rosner, Administrator,

having regard to the applications lodged at the Registry of the Court of First Instance on 8 January 2008,

having regard to the responses lodged at the Court Registry on 22 May 2008,

having regard to the order of 5 May 2009 joining Cases T-20/08 and T-21/08 for the purposes of the oral procedure and the judgment,

further to the hearing on 3 June 2009,

gives the following

Judgment

Background to the dispute

1 On 1 April 1996, the applicant, Evets Corp., filed two applications for registration of Community trade marks at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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)).

2 The marks for which registration was sought are the word mark DANELECTRO and the figurative mark QWIK TUNE covering goods in Classes 9 and 15 of 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 The mark QWIK TUNE was registered on 30 April 1998 and the mark DANELECTRO on 25 May 1998.

4 On 7 and 14 September 2005, pursuant to 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), OHIM informed the applicant-s representative of the expiry of the registration of the QWIK TUNE and DANELECTRO marks respectively. According to those notifications, the requests for renewal were to be submitted and the fees were to be paid before 30 April 2006. The requests could still be submitted and the fees could still be paid within a further period of six months expiring on 1 November 2006.

5 On 21 and 23 November 2006, OHIM issued notifications pursuant to Article 47 of Regulation No 40/94 (now Article 47 of Regulation No 207/2009), Rule 30(5), Rule 84(3)(1) and Rule 84(5) of Regulation No 2868/95 to inform the applicant-s representative that the registrations of the trade marks QWIK TUNE and DANELECTRO had been cancelled from the Register of Community trade marks on 1 October 2006, with effect from 1 April 2006. It was stated in each notification that, in the event of disagreement, the applicant-s representative could request a decision in writing within two months of receipt of the notification.

6 On 26 January 2007, the applicant-s representative filed, in respect of the marks at issue, an application pursuant to Article 78 of Regulation No 40/94 (now Article 81 of Regulation No 207/2009) for restitutio in integrum, in which it requested that the right to renew the registrations in question be re-established on the grounds that they had not been renewed due to an error that had occurred owing to circumstances beyond its control and that of the applicant. Responsibility for renewal had been passed to a third party, which did not have the applicant-s correct address in its database. The applicant-s representative requested OHIM to debit the fees for re-establishment of rights and for renewal from its current account with OHIM. It stated that the applicant had not been aware of the loss of its rights until 26 November 2006, the date on which the applicant-s representative forwarded OHIM-s notifications to the applicant.

7 On 22 February 2007 the Trade Marks and Register Department of OHIM refused the application for restitutio in integrum. It considered that the application had been submitted in due time and was admissible, but that the applicant had not taken all due care required by the circumstances. In its view, the applicant-s representative was aware that the marks in question had to be renewed but had not taken any action to check, with the applicant, the third party to which responsibility for renewal had been passed and OHIM, whether the renewal had taken place and, if not, that it was taking place. Consequently, the registration of the marks DANELECTRO and QWIK TUNE was deemed to have been cancelled pursuant to Rule 30(6) of Regulation No 2868/95.

8 On 21 June 2007, the applicant filed a notice of appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decisions of the Trade Marks and Register Department of 22 February 2007.

9 By decisions of 5 November 2007 (-the contested decisions-), the Fourth Board of Appeal of OHIM dismissed the appeal and declared that the application for restitutio in integrum was deemed not to have been filed, in accordance with Article 78(3) of Regulation No 40/94 (now Article 81(3) of Regulation No 207/2009), as the application had been made outside the two month period provided for in Article 78(2) of Regulation No 40/94 (now Article 81(2) of Regulation No 207/2009) and the requisite fee for re-establishment of rights had...