Thursday, 22 April 2010

Restitutio in integrum

How can IP lawyers hope to dispense with Latin, when the civil law part of the European Union still insists on speaking it?

Case T-187/08, Rodd & Gunn Australia Ltd v OHIM concerns the concept with the Latin name, which we Anglo-Saxons might also know as restitution or re-establishment of rights. It's a concept we have too - indeed, it's what Mr Bignell was after in the case noted in the previous post. Rodd & Gunn (a company that had undergone several changes of name during the history of the matter) had a CTM comprising a rather nice design showing a dog - a pointer, I suppose: it doesn't matter, it could have been anything. The point is that their trade mark attorneys in New Zealand put the renewals in the hands of a reputable annuities business - well, the biggest one, CPA - and instructed the UK trade mark attorneys who were on record at OHIM not to do the renewal.

Of course, the trade mark attorneys still received the renewal notices - and eventually the notice advising that the mark had been removed from the register, on account of the fees not having been paid. The only thing left to be done was to seek that Latin thing: but Article 78 of Regulation No 40/94 (now Article 81 of Regulation No 207/2009) makes it clear that you can only have that if due care has been taken. The Trade Marks and Register Department rejected the application, and the Board of Appeal upheld that decision. The representatives had not taken due care: they had done nothing, but to be fair to them their client had told them to do nothing. Normally, that would be where the due care would be sought, but the Board looked also at the care taken by the proprietor of the trade mark, and decided that relieving a professional representative of his task of monitoring the legal status of a mark was, in itself, careless. Moreover, no evidence had been adduced about the steps taken by the proprietor. And finally, there was no due care taken by CPA, because this was not an isolated instance but (the Board found) a serious internal problem.

The Court held that the requirement to exercise due care under Article 78 lay, in the first instance, with the trade mark owner. If the owner delegated administrative tasks, the person chosen to do so was subject to the same requirement and its actions had to be regarded as those of the owner.

The General Court agreed that it was a lack of vigilance on the part of  CPA that had caused the loss of the registration. They had moved offices in the crucial period, but that did not excuse the omission. It did not amount to 'exceptional circumstances'. The Court also noted that the New Zealand trade mark attorneys had not followed through, even though they specifically asked for confirmation from CPA when the renewal fee was paid and did not receive it.

All fairly predictable, I think, except that the Court has set a hare running (maybe that's what the dog is pointing at?) with its comments about entrusting renewals to organisations like CPA, which it hasn't answered. Lots of people do it, and they need to know that it's not prima facie evidence of carelessness to do so.

At which point, I should declare an interest: the sponsor of my podcast and Newswire is Olcott International, and CPA are the competition. But this posting is not about CPA so much as about the principle of using annuities specialists. Perhaps it's partly explained by the judges being inexpert in intellectual property matters, though even so they should be able to get their heads round this. There's no point in paying lawyers' rates for clerical work, and lawyers can make mistakes just as easily as the anuities firms - indeed, perhaps you're safer with the annuities specialist anyway. Just make sure the appointed representative is also in the loop.

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