The judgment of the General Court in Case T‑187/08, Rodd & Gunn Australia Ltd v Office for Harmonisation in the Internal Market, was posted on the Curia website this morning, confirming that this is an inauspicious day for dogs, trade mark attorneys, CPA and Antipodeans.
Back in July 1998 a New Zealand business, Specialty Brands Ltd, secured registration of the doggie sign on the right as a Community trade mark for goods in Classes 16, 18 and 25. Four years later Speciality Brands changed its business name to Rodd & Gunn Ltd, the applicants in these proceedings. In November 2004 Baldwins, acting for Rodd & Gunn, told the company's Community trade mark representatives, UK patent and trade mark attorneys Page White and Farrer (PWF) , that responsibility for renewing its client's trade marks had been transferred to Computer Patent Annuities (CPA).
Fast forward to 16 January 2006, when OHIM told PWF that registration of the doggie mark would expire on 15 August 2006, asking that the request for renewal of the mark and payment of the accompanying fee should reach it by 3 September 2006 at the latest; failing that, the renewal request plus even more fees could still be paid by 3 March 2007. On 27 March 2006 OHIM sent PWF a further notification, saying that the request for renewal of the mark and payment of the fee had to reach it by 31 August 2006 at the latest (or, with payment of a surcharge, by 28 February 2007) [all these different dates would certainly have confused a Kat, who is wondering why two sets of notifications were needed].
On 3 April 2006 Baldwins told CPA of the need to renew the mark which, on 30 June 2006, was transferred to an Australian business, Pulp & Gunn Holdings Pty Ltd. On 2 January 2007, following an internal check, a CPA employee told his superiors that he would attend to payment of the renewal fee that same day.
Nothing then happened till 19 March 2007, when OHIM notified PWF that the mark had been cancelled with effect from 15 August 2006. In effect, the doggie was dead. In May 2007 PWF filed a request for renewal of the mark and an application for restitutio in integrum. OHIM's Grim Reaper, the Trade Marks and Register Department, took the view that PWF had not exercised all the due care required by the circumstances, rejected the application for restitutio in integrum and confirmed the cancellation of the mark.
The Fourth Board of Appeal dismissed the appeal on the following basis: (i) PWF had not undertaken any activity or exercised any control regarding the renewal of the mark; (ii) even assuming that the analysis of the due care required by the circumstances should be carried out in the light of the conduct of the mark's proprietor, the latter had delegated the renewal of the mark to a third party -- CPA -- and not to a professional representative before OHIM. The very act of relieving a professional representative of his task of monitoring the legal status of a mark was, in itself, careless; (iii) no explanation was given concerning the checks or controls which the proprietor could itself have carried out; (iv) assuming that the analysis of the due care required by the circumstances should be carried out having regard to the conduct of CPA, the error which led to the failure to observe the time-limit was not isolated or inexplicable but concerned a serious internal problem.
A further appeal was lodged with the General Court, which today dismissed it. Said the Court:
The IPKat is unhappy that the question whether it is to be considered as careless or somehow in dereliction of one's duty to hand over renewals to an organisation such as CPA has been raised but not fully answered. A very large number of businesses use renewal services and are entitled either to have their minds put at rest or to know that they are considered to be taking a risk. He also fails to see why something which is essentially a clerical function should be performed any better by qualified lawyers or trade mark attorneys than by a renewals service: it's not as if trade mark renewal is the IP equivalent of brain surgery -- all you have to do is file the request and pay the cash within what is, in an era of instant communications and electronic banking, a surprisingly generous period of time. Merpel says, perhaps CTM renewal isn't so easy, given the number of people who foul it up.
"30 In the present case, there is no need for the Court to rule on whether a non-professional representative can renew a Community trade mark, and therefore whether the proprietor of the mark exercised all due care required by the circumstances in that regard; it suffices to point out that, in any event, CPA did not exercise all due care required by the circumstances.
31 It is clear from the evidence ... that Baldwins instructed CPA on 3 April 2006 to renew the mark. Only more than eight months after that instruction and following an internal check by CPA was the failure to renew the mark discovered. In addition, ... as is apparent from a CPA internal email of 28 December 2007, the check in question was carried out following two instances in which registration of Community trade marks had expired, which proves that CPA had already encountered difficulties in complying with time-limits in connection with some Community trade marks .... The internal check indeed showed that 42 marks required action in relation to their renewal. Ultimately, although the CPA employee responsible for renewal of the mark indicated to his superiors, by email of 2 January 2007, that he would attend to payment of the renewal fee for that mark, he did not do so and CPA’s control procedures did not detect the fact that no payment was made. It took CPA more than two months, following the letter from OHIM to PW & F on 19 March 2007, to notice that the renewal fee for the mark had not been paid. Taking account of all of those factors, it must be held, following the Board of Appeal, that the failure to renew the mark did not result from exceptional circumstances but from a more general lack of vigilance on the part of CPA. It should be added that Baldwins did not bother to ascertain whether, prior to the date of expiry of the registration of its mark, renewal had been properly effected, even though, in its letter of 3 March 2006, Baldwins indicated that it wished to have confirmation in that regard from CPA.
32 In those circumstances, the Board of Appeal did not err in rejecting the application for restitutio in integrum. The other arguments submitted by the applicant cannot invalidate that finding ...".
Every dog has his day here
Old dogs, new tricks here and here