End of the road for Evets

Old musos will remember Danelectro's classic guitars - the mark has been in use for over 60 years now. But the ECJ (Decision C-479/09 P), supporting OHIM's hard-line policy on restitutio in integrum, has recently cancelled this old and valuable mark for failure to pay the renewal fee, on grounds that appear to put applicants in a very precarious position - on the basis of a legalistic interpretation approach that, we have argued in the past, is focussed on OHIM themselves and opposed to commercial reality and the needs of the marketplace.
In the Danelectro cases, the applicant adopted the practice (near-universal in large companies) of handling renewals through an agency. OHIM's correspondence, however, went to the appointed representative. The issue was, when was the "cause of non-compliance" removed? Was it when the representative heard from OHIM, or when the client (or the renewal agency) were told? The Court's mechanistic approach was simply to quote the rules which put the representative in the shoes of the client for OHIM's purposes. Thus, the relevant two-month time limit started to run when the representative got the letter from OHIM, even though the representative was completely out of the renewal loop and had no authority from the client to act on renewals. The same logic would apply even where, in reality, the representative had no further authority to act, if OHIM had not yet been notified of that fact.
When applying a highly penal provision, can it really be right to ignore the reality behind the rule, which is that, where it is the applicant who failed to comply with a deadline, the removal of non-compliance must also be referred to the applicant? Should a 60-year old mark be lost, in a first-to-file system, where the applicant is not at fault? The answer seems self-evident to us.
Our concern on Class 99 is that, since the Community Design provisions are identical to those for CTMs, and the reasoning of the Court is so mechanistic, they will apply the same approach to design renewals. The results would be disastrous. A trade mark can be re-filed, and unless someone else has acquired intervening rights, will be re-registered. But any design, by renewal time, will have been published by OHIM so that a re-filing would lack novelty and the design would be irrevocably lost.
Is it too much to hope that the Court might issue a divergent opinion for designs? Well, it remains at least a theoretical possibility. One of the suggestions raised by the appellant was that EPO case law under the identically-worded EPC provisions should be followed. OHIM and the Court, at all instances, refused to do so. One of the reasons given by the Court of First Instance (now the General Court), in their decision T 20/08, was that:
...even if Article 78 of Regulation No 40/94 was drafted on the basis of a patent law model, there is nothing to suggest that the respective provisions must be interpreted identically, since the interests at issue in the two areas may differ. The legal context of patent law is different, and the provisions governing patents seek to regulate procedures different from those applicable in the area of trade marks (Case T‑136/08 Aurelia Finance v OHIM (AURELIA) [2009] ECR II‑0000, paragraph 21)."
Well, following that reasoning, designs are different to trade marks - in fact, as to the novelty issue, they are much more like patents. So ... is anyone prepared to try to tell the Court to apply their own words to designs, and follow the EPO's more applicant-friendly approach where the consequences of failure are so much more penal than for trade marks?
In the meantime, what about resuming the filing of authorisations at OHIM - specifically limited to exclude renewal business? We might try that ourselves, if no one else can be found to do so.
Please do keep us informed of any restitutio cases in the pipeline, as we have had widespread expressions of concern from applicants since our last item on this topic.