Case T-410/07

Jurado Hermanos, SL

v

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

(Community trade mark – Community word mark JURADO – Failure by the proprietor of the trade mark to apply for renewal – Removal of the mark on expiry of the registration – Application by the exclusive licensee for restitutio in integrum)

Summary of the Judgment

1.      Community trade mark – Procedural provisions – Restitutio in integrum

(Council Regulation No 40/94, Arts 47(1) and (2) and 78(1))

2.      Community trade mark – Procedural provisions – Decisions of the Office – Observance of the rights of the defence

(Council Regulation No 40/94, Art. 73)

1.      Under Article 78(1) of Regulation No 40/94 on the Community trade mark, the re-establishment of rights in respect of proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs) presupposes, firstly, that the applicant is a party to the proceedings in question; secondly, that in spite of the fact that, demonstrably, the applicant exercised all due care required by the circumstances, it has been unable to observe a time-limit vis-à-vis the Office; and thirdly, that that non-observance has the direct consequence, by virtue of the provisions of Regulation No 40/94, of causing the loss of a right.

With regard to the first condition, under Article 47(1) of Regulation No 40/94, renewal may be requested by the proprietor of the trade mark or by any person expressly authorised by him. It follows that only the proprietor of the trade mark or a person expressly authorised by him can be regarded as a party to the renewal proceedings.

In particular, it does not follow from the obligation upon the Office under the first sentence of Article 47(2) of Regulation No 40/94, to inform persons having a registered right in respect of the trade mark of the expiry of the registration that those persons are parties to the renewal proceedings. That article imposes on the Office only an obligation to give information – an obligation purely ancillary to the procedure – but does not seek to confer rights either on the proprietor of the trade mark or on other persons.

(see paras 15-17)

2.      Pursuant to the second sentence of Article 73 of Regulation No 40/94 on the Community trade mark, decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the rights of the defence is thereby enshrined in the law of Community trade marks. In accordance with that general principle of Community law, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt.

Furthermore, the rights of the defence are infringed by reason of a procedural irregularity only in so far as the irregularity actually has an effect on the ability of the undertakings to defend themselves. Thus, non-compliance with rules in force whose purpose is to protect the rights of the defence can vitiate the administrative procedure only if it is shown that the latter could have had a different outcome if the rules had been observed.

(see paras 31-32)