Decision on Cancellation No 13 144 C page: 2 of 8
The applicant argues that the EUTM has not been put to genuine use in the EU since
its registration on 07/06/2005 and that there are no proper reasons for non-use. The
applicant requests that the EUTM be revoked and the costs for the proceedings be
borne by the EUTM proprietor.
The EUTM proprietor argues that the EUTM has been put to genuine use by the EUTM
proprietor and/or its associated companies during the relevant period in respect of the
relevant goods and where use has been interrupted there are valid reasons for non-
use. The EUTM proprietor submits evidence (listed below in the decision) and provides
explanations about its business. There are in particular explanations provided by the
CEO of the EUTM proprietor setting out the reasons why the business stalled in the EU
and the intention to re-establish the business in the EU. The EUTM proprietor points
out that in case the evidence of use is not deemed to be sufficient, these articles set
out proper reasons for non-use of the EUTM.
In it observations in return the applicant contests the genuine use of the EUTM by
analysing in detail the evidence submitted by the EUTM proprietor. The applicant
argues in particular that the EUTM has not been used in the form as registered and
that the use was not in the relevant period. Moreover, according to the applicant if there
is some use at all it is shown for the company name of the EUTM proprietor, where no
connection can be established between the company name and the goods. As to the
evidence submitted in order to show that there are proper reasons for non-use the
applicant considers this attempt to be a tacit acknowledgment that the evidence does
not support a finding of genuine use of the trade mark during the relevant period.
Further, the applicant submits that the reasons set out by the EUTM proprietor cannot
be considered to constitute proper reasons for non-use and refers to Case-Law which
the applicant considers relevant.
In its final round of observations the EUTM proprietor addresses the arguments of the
applicant, in particular with regard to the importance of the absence of the figurative
element of the contested EUTM in light of the possible change of the distinctive
character of the EUTM and with regard to the use of the EUTM during the relevant
period and in relation to the goods as registered. The EUTM proprietor claims that it did
provide proper reasons for non-use, whereas it is not under the obligation to provide
sensitive commercial information.
The EUTM proprietor requests the application to be rejected and the costs to be
awarded to the EUTM proprietor.
GROUNDS FOR THE DECISION
According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union
trade mark will be revoked on application to the Office, if, within a continuous period of
five years, the trade mark has not been put to genuine use in the Union for the goods
or services for which it is registered, and there are no proper reasons for non-use.
Genuine use of a trade mark exists where the mark is used in accordance with its
essential function, which is to guarantee the identity of the origin of the goods or
services for which it is registered, in order to create or preserve an outlet for those
goods or services. Genuine use requires actual use on the market of the registered
goods and services and does not include token use for the sole purpose of preserving
the rights conferred by the mark, nor use which is solely internal (11/03/2003, C-40/01,
Minimax, EU:C:2003:145, in particular § 35-37 and 43).