Case T‑267/11

Video Research USA, Inc.

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark — Community figurative mark VR — Failure to apply for renewal of the mark — Cancellation of the mark upon expiry of the registration — Application for restitutio in integrum — Article 81 of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Third Chamber), 19 September 2012

1.      Community trade mark — Procedural provisions — Restitutio in integrum — Conditions —Due care required by the circumstances — Delegation of administrative tasks relating to the renewal of a mark

(Council Regulation No 207/2009, Art. 81(1))

2.      Community trade mark — Procedural provisions — Restitutio in integrum — Conditions — Due care required by the circumstances — Exceptional, and therefore unpredictable, events — Human error in entering data — Not included

(Council Regulation No 207/2009, Art. 81(1))

1.      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. 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.

(see paras 18-19)

2.      The words ‘all due care required by the circumstances’, in Article 81(1) of Regulation No 207/2009 on the Community trade mark, require a system of internal control and monitoring of time-limits to be put in place that generally excludes the involuntary non-observance of time-limits, as laid down in the Office for Harmonisation in the Internal Market (Trade Marks and Designs) guidelines. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot therefore be predicted from experience. Human errors committed at the time of the technical management of renewals cannot be regarded as exceptional or unforeseeable events which cannot be predicted from experience.

Where the renewal of marks is entrusted to a specialised company using a computerised renewal reminder system, the due care required by the circumstances in particular requires that that system be capable of detecting and correcting any foreseeable error in the functioning of the computerised system. The ‘corruption’ or the loss of data is a foreseeable error, the risk of which is inherent in any computerised system.

(see paras 20, 24, 26)