Nissan v OHIM – Trademark requests for renewals should be full and timely filed

A trademark must be renewed every ten years if it is to be kept in force.

Nissan applied within the deadline for a partial renew- dropping class 09.

They then changed their minds and tried to re-apply for class 09 within the 6 months grace period. This is usually possible- although a small extra fee is payable to OHIM.

However OHIM argued that as Nissan had only partially renewed their mark- they were not in a position to re-instate class 09 within this grace period.

Both OHIM’s Administration Division and the Board of Appeal (BoA) dismissed Nissan’s request for the late renewal of the CTM in class 9. The BoA held that the original request for partial renewal of the CTM in classes 7 and 12 only was an “unequivocal partial surrender” of the CTM which cannot be affected by the six month grace period allowed for late renewal.

Nissan appealed to the General Court (GC)

The GC held that the six month grace period provision only applies where there has been no request for renewal.

As Nissan had already requested partial renewal, it was not entitled to use the six month grace period to request renewal of the CTM in class 9 – the request should have been included at the time Nissan requested renewal of the CTM for classes 7 and 12

To summarise:

Requests for trademark renewal must be made in full within the relevant renewal deadline.

If requests for partial trademark renewal are made, it will not be possible to subsequently request that the ‘missing’ goods/services are renewed during the six month grace period.

Any request for surrender of a CTM must be made expressly in writing to OHIM.

Rights holders should carefully consider whether to renew a CTM in full or partially, as only one opportunity to renew will be granted.

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