In case C-207/15 Nissan v EUIPO, the CJEU has clarified that EUTM proprietors will now be permitted to file successive requests for the partial renewal of their registrations throughout the six month grace period.

The case concerned Nissan’s partial renewal (i.e. only renewing the mark in some classes of goods) of an EUTM within their portfolio (prior to the renewal date) and their filing of a subsequent request (and appropriate payment) to renew the remaining class of goods during the later six month grace period.  The EUIPO refused the subsequent renewal request, a decision which was later upheld by the Board of Appeal, on the grounds that, for reasons of legal certainty, Nissan’s earlier partial renewal constituted an express ‘surrender’ of its remaining rights.  Nissan appealed to the General Court (‘GC’) who found that that Board of Appeal was wrong to rule that a partial renewal amounted to a surrender, but nonetheless, EUTM rules did not permit requests for the renewal of registrations to be staggered over time.

In the latest decision, the CJEU has now set aside the GC’s ruling and annulled the Board of Appeal decision, confirming that the GC erred in law in determining that staggered renewal requests are prohibited.  The CJEU stated,  “It must be observed .. that, … Regulation No 207/2009 … aims, in view of the economic importance of the protection conferred by EU trade marks, to facilitate the retention by the proprietors of those trade marks of their exclusive rights.” 

This clarification will be widely welcomed by all, as previously contradicting decisions on this point had led to legal uncertainty as to whether filing successive requests for partial renewal would be permitted.  Notably, the CJEU also observed that the EUIPO is under no obligation to process renewal requests prior to the expiry of the grace period, which leads us to wonder if the EUIPO will now, as a matter of practice, delay the processing of all renewal requests until this time.