The Court of First Instance gave a ruling yesterday in Case T‑410/07, Jurado Hermanos v Office for Harmonisation in the Internal Market.

In April 1996 Café Tal de Costa Rica registered as a Community trade mark the word JURADO for coffee and other goods in Class 30. Café Tal de Costa Rica later granted Jurado Hermanos an exclusive licence in respect of the trade mark at issue. That contract, which forms part of another exclusive licence in respect of two Spanish marks and a Polish mark, provided that the licence was to remain valid for a period of 48 years (i.e. until 2046). The grant of that licence was recorded in the Register of Community trade marks in accordance with Article 22(5) of Council Regulation 40/94.

In September 2005 OHIM informed both Jurado Hermanos, in its capacity as exclusive licensee and the mark's proprietor that registration of the mark would expire on 25 April 2006. OHIM explained how to renew the registration and stated that an application for renewal should be made before 30 April 2006 or, at the latest, before 1 November 2006, an additional fee surcharge being payable in the latter case. Receiving no application for renewal before the expiry of those deadlines, OHIM told the proprietor that the mark had been removed from the Register.

Jurado Hermanos then filed an application for restitutio in integrum, saying it had not received the renewal notice and that had learned entirely by chance, when consulting OHIM’s internet site, that the registration had not been renewed. OHIM's Trade Marks and Register Department rejected the application for restitutio in integrum, holding that Jurado Hermanos failed to show it had exercised all due care required by the circumstances. The Second Board of Appeal dismissed the appeal without considering whether the applicant met the condition of having exercised all due care required by the circumstances, holding that, since Jurado Hermanos had not been expressly authorised by the proprietor to apply for renewal, it was not entitled to do so; nor was it entitled to apply for the re-establishment of its rights in that connection. Yesterday the Court of First Instance dismissed a further appeal by Jurado Hermanos against the Board's decision. Said the Court:

"OHIM was correct in taking the view that the applicant was not a party to the renewal proceedings because it had not produced express authorisation from the proprietor of the trade mark to seek renewal. In that regard, it should be added that the applicant at no time stated that it would have been able to produce such authorisation, if requested. It follows that the proceedings before OHIM could not, in any event, have had an outcome other than dismissal of the appeal by the Board of Appeal".