Case T-326/11

Brainlab AG

v

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

(Community trade mark — Community word mark BrainLAB — Failure to apply for renewal of the registration of the trade mark — Removal of the trade mark from the register on expiry of registration — Application for restitutio in integrum — Article 81 of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark — Procedural provisions — Notification

(Council Regulation No 207/2009, Art. 47(2); Commission Regulation No 2868/95, Art. 1, Rules 29 and 67)

2.      Community trade mark — Procedural provisions — Restitutio in integrum — Conditions — Due care required by the circumstances

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

1.      Where a proprietor has conferred the monitoring of its Community trade mark on a professional representative and has duly notified the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to that effect, OHIM is also required to respect that choice by sending its official service notifications to that appointed representative in order to put that appointed representative in a position to defend the interests of its principal with the higher standard of due care which it is supposed to display as a qualified professional. In that respect, OHIM cannot rely on Article 47(2) of Regulation No 207/2009 on the Community trade mark and Rule 29 of Regulation No 2868/95, implementing Regulation No 40/94 on the Community trade mark, by claiming that those provisions require it to inform the proprietor of a Community trade mark, but not its professional appointed representative, of the imminent expiry of the registration of that trade mark. That argument is at variance with Rule 67 of Regulation No 2868/95, under which, if a representative has been appointed, all notifications must be addressed to him.

(see paras 47-49)

2.      It is apparent from Article 81(1) of Regulation No 207/2009 on the Community trade mark, that restitutio in integrum is subject to two requirements, the first being that the party has exercised all due care required by the circumstances, and the second being that the non-observance by the party has the direct consequence of causing the loss of any right or means of redress.

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 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. 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.

The words ‘all due care required by the circumstances’ in Article 81(1) of that regulation require, in the case of an appeal to a specialised representative, the setting-up of a system of internal control and monitoring of time‑limits that generally excludes the involuntary non-observance of time-limits, as laid down in the guidelines relating to proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs). It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot therefore be predicted from experience.

(see para. 36-38, 41)