CANCELLATION No 20 201 C (REVOCATION)

W.B. Studio S.A.S., Via del Carso 4, 20010 Arluno, Italy (applicant), represented by Bugnion S.PA., Viale Lancetti, 17, 20158 Milano, Italy (professional representative)

a g a i n s t

E.Land Italy S.R.L., Via Tortona, 27, 20144 Milano, Italy (EUTM proprietor), represented by Jacobacci & Partners S.P.A., Via Senato, 8, 20121 Milano, Italy (professional representative).

On 15/03/2021, the Cancellation Division takes the following

DECISION

1. The application for revocation is partially upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 139 501 are revoked as from 01/03/2018 for some of the contested goods, namely:

Class 18: Skins, hides, goods of leather and imitation leather, purses, travelling sets, briefcases, travelling bags, valises, haversacks, handbags, cases, card cases, pocket wallets, purses, briefcases, key-cases; umbrellas.

Class 25: Shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves; all excepting those for women; clothing for gentlemen and children, including outer and under garments, woven and knitted; clothing for ladies, namely under garments, woven and knitted; jeans; waistcoats; aprons and children’s pinafores; overcoats; sportswear; neckties; headscarves; gloves; sashes for wear, berets; stockings; footwear.

Class 28: Equipment for physical exercises and gymnastics; skis and ski-bindings, fencing weapons, exercise cycles, billiards, fishing tackle, rods for fishing, golf clubs, rackets, table tennis, archery implements, bows for archery, decorations for Christmas trees, balls for games and play balloons, dolls’ feeding bottles, toy masks, marionettes; dolls, games and playthings; draughts, chess games, chessboards; scale model vehicles; roller skates and ice skates.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 25: Clothing for ladies including outer garments, woven and knitted; shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves; all the aforementioned for women.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 139 501 ‘BELFE’ (word mark). The request is directed against all the goods covered by the EUTM, namely:

Class 18: Skins, hides, goods of leather and imitation leather, purses, travelling sets, briefcases, travelling bags, valises, haversacks, handbags, cases, card cases, pocket wallets, purses, briefcases, key-cases; umbrellas.

Class 25: Clothing for gentlemen, ladies and children, including outer and under garments, woven and knitted; shirts, jackets (small), skirts, trousers, jeans, jackets, waistcoats, aprons and children’s pinafores, waterproof clothing, overcoats; sportswear, scarves, neckties, headscarves, gloves, sashes for wear, berets; stockings, footwear.

Class 28: Equipment for physical exercises and gymnastics; skis and ski-bindings, fencing weapons, exercise cycles, billiards, fishing tackle, rods for fishing, golf clubs, rackets, table tennis, archery implements, bows for archery, decorations for Christmas trees, balls for games and play balloons, dolls’ feeding bottles, toy masks, marionettes; dolls, games and playthings; draughts, chess games, chessboards; scale model vehicles; roller skates and ice skates.

The applicant invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that the contested mark had not been put to genuine use during a continuous period of five years for all the goods for which it was registered.

On 14/05/2018, the EUTM proprietor submitted evidence of use (listed and assessed below). It also explained that on 23/02/2010 the ownership of the contested mark had been transferred from Belfe S.P.A to Belfe S.A. and that on 11/04/2018 the trade mark had been transferred to E.Land Italy S.R.L. (the current owner). It argued that the evidence submitted proved genuine use of the goods in Class 25 which were similar to the remaining contested goods in Classes 18 and 28 and, therefore, proof of use for the goods in Class 25 was also valid for the similar goods.

In reply, on 07/09/2018, the applicant argued that the evidence submitted by the EUTM proprietor was insufficient to prove genuine use of the contested mark since the goods mentioned in the invoices could not be identified as ‘BELFE’ goods; Belfe Italia S.R.L. was only used as a company name (e.g. in the invoices and packing lists) and many documents were irrelevant such as banking reports or the invoices related to the ‘investigation for brand analysis’. Furthermore, it argued that even though the invoices did not mention ‘BELFE’ products, some of them demonstrated that the goods sold bore other trade marks such as ‘GUCCI’, ‘BOTTEGA VENETA’ or ‘HERNO’ for coats or ‘FENDI’ for bags. It further pointed out that the catalogues and pictures submitted were undated or related to 2010 (well before the relevant period). It also argued that from 23/02/2010 to 11/04/2018 the owner had been Belfe S.A. and no link had been demonstrated between this company and E-Land Italy S.R.L/Belfe Italia S.R.L, which were virtually the same company. Furthermore, Belfe Italia S.R.L ceased operating on 28/12/2017. The invoices did not prove sales to third parties in the European Union but to a closed circle of companies since they had been issued by Belfe Italia S.R.L to E-Land International Fashion Shanghai Co. Ltd (China) and E-Land China Fashion Design Co. Ltd. Finally, it argued that the EUTM proprietor had filed two new applications for the word mark ‘BELFE’ (EUTM application No 17 884 873 and an Italian trade mark application) after the filing of the present revocation action.

On 13/07/2020, the EUTM proprietor argued that the evidence submitted on 14/05/2018 proved genuine use of the contested mark and to corroborate it, it submitted additional evidence (listed and assessed below) to establish a clear link between the relevant goods and the invoices previously submitted (catalogues and labels bearing the same product codes as those mentioned in the invoices). It also explained that the owner of the contested mark (E.Land Italy S.R.L.) belongs to the E-Land Group, one of the most important Korean fashion companies, which had a portfolio of 60 important fashion brands, including, among others, ‘New Balance’, ‘Coccinelle’, ‘Palladium’ and ‘Belfe’ and which had expanded its business to China. E-Land Fashion China Holdings Ltd. owned 100 % of E-Land International Fashion (Shanghai) Co. Ltd. which managed a portfolio of nine brands including ‘BELFE’ and ‘BF BELFE’ and which resold these marks on the Chinese market. It further explained that Belfe S.A. (owner of the contested mark prior to the assignment to the current owner) licensed to Belfe Italia S.R.L. (merged by incorporation into E.Land Italy S.R.L.) the use of all its trade marks, including the ‘Belfe’ trade marks, in the European Union. During the relevant period, the goods bearing the contested mark were produced in Italy by the licensee Belfe Italia S.R.L. and largely exported to China (to E-Land International Fashion Shanghai Co. Ltd (China), the Chinese subsidiary of the E-Land Group), as shown in the invoices. The EUTM proprietor further pointed out that the goods bearing the contested mark were expensive goods intended for the luxury market and even low turnover figures could be sufficient to demonstrate genuine use. It also clarified that each invoice bears the contested trade mark in the letterhead and there was no necessity to mention the contested trade mark in the invoices since Belfe Italia produced mainly ‘BELFE’ goods. The trade mark was mentioned only where goods were produced on behalf of other brands such as the invoices mentioning ‘GUCCI’, ‘BOTTEGA VENETA’ or ‘HERNO’. It argued that the contested mark was used as a trade mark and also as part of the company name. Finally, it pointed out that the new applications filed were part of the EUTM proprietor’s strategy in response to the applicant’s prior filing of ‘BELFE’ marks.

On 30/11/2020, the applicant argued that the additional evidence submitted by the EUTM proprietor should be disregarded. It reiterated that the invoices did not prove use outside a group of interconnected companies, the additional catalogue dated 2013 was not acceptable and no documents referred to goods in Classes 18 or 28.

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, 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use.

In the present case, the EUTM was registered on 16/11/1998. The revocation request was filed on 01/03/2018. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 01/03/2013 to 28/02/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 14/05/2018 the EUTM proprietor submitted the following evidence as proof of use.

 Annex 1: invoices, dated 2013, issued by Belfe Italia S.R.L. and sent to Pellbass SNC, together with, in some cases, the relevant customs documents, packing lists and copy of Belfe Italia S.R.L’s bank statement referring to clients’ payments. There are also invoices issued by Pellbass SNC to E-Land International Fashion (Shanghai) Co. Ltd and invoices issued by Belfe Italia S.R.L. to Suzhou Marconi Garments Factory Co. Ltd for fabrics. The following invoices are the most relevant.

o Invoice No 5, dated 07/03/2013, issued by Belfe Italia S.R.L and sent to Pellbass SNC, Italy, with a destination address in China (E.Land International Fashion (Shanghai) Co. Ltd) for EUR 134 058.10. The sign is depicted at the top of the invoice next to the company name Belfe Italia S.R.L. The goods are identified by a description and a product code such as BFOW324105 ladies dress, made in Italy. The goods are ladies coats, ladies dresses, ladies T-shirts, 100% silk scarfs, ladies jackets, ladies shorts, all made in Italy. The quantities are significant (1 925 items).

o Invoice No 7, dated 18/03/2013, issued by Belfe Italia S.R.L. and sent to Pellbass SNC, Italy, with a destination address in China (E.Land International Fashion (Shanghai) Co. Ltd) for EUR 93 495.12. The sign depicted above is reproduced at the top of the invoice. The goods are identified by a description and a code and are ladies trousers, ladies T-shirts, ladies coats, ladies jackets, ladies dresses, ladies shirts, ladies vests, ladies skirts, ladies shorts (1 292 items).

o Invoice No 8, dated 28/03/2013, same as above, for EUR 24 172.10 (ladies T-shirts, ladies dresses, ladies blazers, ladies knitwear – 294 items).

o Invoice No 9, dated 09/04/2013, same as above, for EUR 15 370.88 (ladies T-shirts, ladies dresses, ladies jackets – 145 items).

o Invoice No 12, dated 06/05/2013, same as above, for EUR 1 519.98 (ladies T-shirts – 86 items).

o Invoice No 15, dated 25/06/2013, same as above, for EUR 33 023.14 (ladies coats, ladies pelerines (BFAM344001 100 % fox fur shawl), ladies vests, ladies dresses, ladies jackets, ladies skirts, ladies shirts – 328 items).

o Invoice No 17, dated 05/07/2013, same as above, for EUR 23 128.70 (ladies jackets, ladies coats, ladies skirts, ladies dresses – 208 items).

o Invoice No 18, dated 19/07/2013, same as above, for EUR 36 446.06 (ladies dresses, ladies coats – 255 items).

o Invoice No 20, dated 08/08/2013, same as above, for EUR 34 372.04 (ladies dresses, ladies coats – 208 items).

o Invoice No 21, dated 28/08/2013, same as above, for EUR 68 341.76 (ladies coats, ladies jackets – 395 items).

 Annex 2: invoices, dated 2014, issued by Belfe Italia S.R.L. and sent to E-Land International Fashion Shanghai Co. Ltd (China), Pellbass SNC and E.Land China together with, in some cases, the relevant customs documents, packing lists and copy of Belfe Italia S.R.L.’s bank statement referring to clients’ payments. They relate to men’s clothing and fabrics.

 Annex 3: three invoices relating to investigation reports and sales invoices, dated 2015, issued by Belfe Italia, S.R.L. to E-Land International Fashion Shanghai Co. Ltd (China), E-Land Wish Design Ltd and E-Land World Building in relation to samples of woven garments and fabrics, together with, in some cases, the relevant customs documents, packing lists and copy of Belfe Italia S.r.l’s bank statement referring to clients’ payments.

 Annex 4: sales invoices, dated 2016, issued by Belfe Italia, S.R.L. to E-Land Retail Ltd and E-Land China Fashion Design Co.Ltd, in relation to prototypes and paper patterns, samples, clothing, footwear, headgear, bags, wallets, card cases (some bearing trade marks such as ‘GUCCI’, ‘BOTTEGA VENETA’, ‘HERNO’), together with, in some cases, the relevant customs documents.

 Annex 5: Belfe Italia, S.R.L.’s accounting form, dated 2017.

 Annex 6: an undated ‘BELFE’ catalogue for clothing.

 Annex 7: undated pictures of ‘BELFE’ goods (jackets). The sign ‘BELFE’ is depicted on the inside labels and on the tags .

 Annex 8: packing lists dated, inter alia, 2013-2018.

 Annex 9: a company registration report from Milan Chamber of Commerce relating to Belfe Italia S.R.L., showing that it is 100 % controlled by E-Land Italy S.R.L.

On 13/07/2020, after expiry of the time limit, the applicant submitted the following additional evidence:

 Annex 10: an excerpt from Milan Chamber of Commerce Registry relating to E.Land Italy S.R.L.

 Annex 11: consolidated financial statements of E.Land World Limited and subsidiaries, dated 21 December, 2016 and 2017.

 Annex 12: an extract from Wikipedia on E-Land Group originating from South Korea.

 Annex 13: an extract from the website www.elandfashionchina.com printed on 09/07/2020.

 Annex 14: documents relating to the transfer of the contested EUTM from BELFE S.A. to E.Land Italy S.R.L., dated 11/04/2018.

 Annex 15: a certificate of Belfe Italia S.R.L.’s merger by incorporation into E.Land Italy S.R.L. in November 2017.

 Annex 16: a licence agreement between BELFE S.A. (licenser) and Belfe Italia S.R.L. (licensee), dated 01/06/2012, for clothing, bags and/or accessories.

 Annexes 17-20: pictures of tags for ‘BELFE’ clothing showing product codes such as: (in particular BFJJ326102 for a jacket, BFOW324103, BFOW324105, BFOW324107, BFOW324108, BFOW325101 for dresses, BFTC324101 for trousers, BFJJ323104 for a vest, etc.). The pictures also show the inside labels bearing the trade mark ‘BELFE’ (word mark) ( ) and the signs ‘ BELFE’ or are affixed to the goods. Invoices No 7, 8, 10 and 12, dated 2013, were submitted again to match them with the submitted labels (same product codes mentioned in the invoices and tags).

 Annex 21: BELFE product catalogue dated 2013 showing the signs and and the goods together with their product codes (e.g. jackets with the codes BFJD 344004, BFJD344002, BFJD344001, BFJD344018, etc.; fur shawls with the code BFAM344001, etc.), together with some invoices already submitted to match them with the product codes mentioned in the catalogue (invoices No 15, 17, 18, 20, 21 and 33).

 Annex 22: an extract from www.uibm.gov.it related to Italian trade mark application No 302 018 000 000 911 ‘BELFE’ from the applicant.

 Annex 23: an affidavit, dated February 2020, signed by the former CEO of Belfe Italia S.R.L., declaring that the invoices submitted (invoices Nos 5, 7, 8, 12, 15, 17, 18, 20 and 21) refer to the shipment of products bearing the trade marks ‘BELFE’ and , manufactured in Italy and exported to China in 2013.

The applicant argues that the EUTM proprietor submitted some of the evidence late and, therefore, this evidence cannot be taken into account.

Even though, according to Article 19(1) EUTMDR, the proprietor has to submit proof of use within a time limit set by the Office, Article 10(7) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(1) EUTMDR) expressly invites the Office to exercise its discretionary power if relevant evidence was submitted in time and, after the expiry of the time limit, supplementary evidence was filed.

According to Article 10(7) EUTMDR, where, after the expiry of the time limit set by the Office, indications or evidence is filed that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of exercise of the discretion conferred on it by Article 95(2) EUTMR. When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

In this regard, the Cancellation Division considers that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The additional evidence is likely to be relevant to the outcome of the proceedings and the stage at which it was submitted does not preclude the evidence from being taken into account.

The fact that the applicant disputed the initial evidence submitted by the EUTM proprietor justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

Furthermore, the additional evidence merely clarifies the evidence submitted initially, as it does not introduce new elements but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division decides to take into account the additional evidence submitted on 13/07/2020.

Preliminary remarks

The applicant contests the evidence of use filed by the EUTM proprietor on the grounds that it does not originate from the EUTM proprietor itself but from another company. It argues that there is no connection between Belfe S.A. (previous owner) and Belfe Italia S.R.L./E-Land Italy S.R.L. and that the invoices concern companies linked to each other.

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The fact that the EUTM proprietor submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Furthermore, the EUTM proprietor explained that Belfe Italia S.R.L. is the licensee of Belfe S.A. and submitted the licence agreement (Annex 16).

Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.), is to be considered as authorised use (30/01/2015, T‑278/13, now, EU:T:2015:57, § 38).

Furthermore, where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered as use of the mark (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 73).

Consequently, since it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by those other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period.

Some of the evidence is dated within the relevant period such as the invoices and the catalogues dated 2013 (Annexes 1 and 21).

The use need not have been made throughout the period of five years, but rather within the five years. The provisions on the use requirement do not require continuous use. It is sufficient if use was made at the very beginning or end of the period, provided the use was genuine (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52).

Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The documents and in particular the invoices submitted in Annex 1 show that the goods were manufactured in Italy by the licensee Belfe Italia S.R.L. and exported to China through the Italian company Pellbass S.N.C.

According to Article 18(1), second subparagraph, point (b) EUTMR, affixing the European Union trade mark to goods or the packaging thereof in the European Union solely for export purposes also constitutes use within the meaning of paragraph 1. The mark must be used (i.e. affixed to goods or their packaging) in the relevant market — that is, the geographical area where it is registered.

Genuine use may result from the export to a single operator located outside Europe, who can be an intermediary, for the purpose of selling to the end consumer in a non-EU country. Proof that the products have been put on the market in the non-EU importing country is not required (04/06/2015, T‑254/13, STAYER, EU:T:2015:156, § 57-61).

Since the evidence shows that the goods were manufactured in Italy and sold in China, it clearly shows that the goods were exported from the relevant territory.

Consequently, pursuant to Article 18(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the applicant contains sufficient indications concerning place of use.

Extent of use

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).

In the present case, the invoices submitted in Annex 1 show that many items of ladies clothing were sold in 2013 and that the amounts are significant (e.g. invoice No 5, dated 07/03/2013, for EUR 134 058.10 and 1 925 items). The goods are identified by a description and a product code beginning with the letters ‘BF’. As explained by the EUTM proprietor and contrary to the applicant’s allegations, these goods are marked with the trade mark ‘BELFE’, as proved by the tags and the catalogue submitted (Annexes 17-21 detailed above) which bear the same product codes as those mentioned in the invoices.

The invoices dated from March 2013 to August 2013 fall within the relevant period. As mentioned before, use does not have to be continuous during the relevant period of five years. It is sufficient if the use had been made at the very beginning or end of the period, provided that the use was genuine (16/12/2008, T‑86/07, Deitech, EU:T:2008:577).

Furthermore, the invoices were issued by the Italian licensee to an Italian intermediary which resells the goods to a Chinese distributor.

Outward use does not necessarily imply use targeting end consumers. For instance, the relevant evidence can validly stem from an intermediary, whose activity consists of identifying professional purchasers, such as distribution companies, to which the intermediary sells products that it has had manufactured by original producers (21/11/2013, T‑524/12, RECARO, EU:T:2013:604, § 25-26).

Relevant evidence can also validly come from a distribution company that forms part of a group. Distribution is a method of business organisation that is common in the course of trade and implies use of the mark that cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32).

The Cancellation Division considers that the relatively short period of use is compensated by the intensity of use, as the amounts reflected in the invoices are significant. Furthermore, as explained by the EUTM proprietor, as regards the quantities sold, although the clothing market is a mass market, the EUTM proprietor manufactures luxury goods in a more restrictive market and the items of clothing manufactured are expensive.

As mentioned before, genuine use does not require commercial success but just real exploitation on the market. Taking into account the evidence in its entirety, although the evidence submitted by the EUTM proprietor is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the contested trade mark. The volume of sales, in relation to the period of use, is not so low that it might be concluded the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 67.

In other words, the extent of use was sufficiently proved for some of the contested goods, as will be analysed below.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T‑209/09, Alder Capital, EU:T:2011:169, § 55-56).

The fact that a word is used as a company’s trade name does not preclude its use as a mark to designate goods and services (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 38).

Although ‘BELFE’ is part of the company name Belfe Italia S.R.L. (the EUTM proprietor’s licensee), the documents clearly show that the contested sign is used as a trade mark to identify the goods. The sign has been used on the catalogues, tags, inside labels and even on the goods themselves to indicate their commercial origin.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

The tags and inside labels (Annexes 17-20) show use of the word mark ‘BELFE’. The additional independent elements ‘1920’ or ‘since 1920’ are merely descriptive indications (information about the date of creation of the trade mark) which do not alter the distinctive character of the registered trade mark.

Therefore, the sign used shows use of the mark in a form essentially the same as that registered and, therefore, constitutes use of the contested EUTM under Article 18 EUTMR.

Use in relation to the registered goods

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

The contested EUTM is registered for the abovementioned goods in Classes 18, 25 and 28. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation for only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

In Class 25, the contested EUTM is registered for clothing for gentlemen, ladies and children, including outer and under garments, woven and knitted; shirts, jackets (small), skirts, trousers, jeans, jackets, waistcoats, aprons and children’s pinafores, waterproof clothing, overcoats; sportswear, scarves, neckties, headscarves, gloves, sashes for wear, berets; stockings, footwear.

Regarding the broad categories clothing for gentlemen, ladies and children, including outer and under garments, woven and knitted, as explained above in the listed evidence, the contested trade mark is used for several items of clothing for ladies such as skirts, dresses, coats, jackets, shirts, T-shirts, trousers, etc. No use has been demonstrated for clothing for gentlemen and children and the sectors of clothing for men, women and children usually correspond to separate markets. Although the invoices submitted in Annex 2 refer to men’s clothing, these goods have not been clearly identified as ‘BELFE’ goods and the remaining documents, particularly the catalogues, exclusively refer to ladies’ clothing. Likewise, no use has been demonstrated for gentlemen’s, ladies’ and children’s undergarments. Therefore, as the EUTM proprietor is not obliged to prove use for all the conceivable commercial variations of the broad category of goods for which the contested mark is registered, the Cancellation Division finds that use has been proved for clothing for ladies, including outer garments, woven and knitted.

The issue of establishing the specific items of clothing for which the extent of the use is proven/not proven is of only relative importance in this case since the extent of the use has been proved for the broader category of clothing for ladies, including outer garments, woven and knitted.

However, if, alongside the broad category, the trade mark is also registered for specific goods covered by the category, it must also have been used for those specific goods in order to remain registered for them (02/12/2008, R 1295/2007‑4, LOTUS, § 25). In other words, use for the abovementioned broader category is not sufficient to prove use for all the specific goods belonging to those categories for which the EUTM is registered and a case-by-case assessment must be carried out.

In the Cancellation Division’s view, use has been proved for shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves all exclusively intended for women, since they are specifically mentioned in the invoices with the word ‘ladies’. These goods can be considered to form objective subcategories of shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves and use is therefore considered proved for the subcategories shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves; all the aforementioned for women.

The remaining specific items of clothing, headgear and footwear for which the contested mark is registered in Class 25 are not mentioned in the evidence and, in particular, are not referred to in the invoices that provide information about the extent of use.

For the sake of completeness, the fact that the evidence refers to specific goods for which the contested mark is not specifically protected (such as T-shirts, dresses, shorts, fur shawls) but which fall within the broader category clothing for ladies, including outer garments, woven and knitted has been taken into account in accepting the use for this broader category.

Regarding the goods in Class 18, although some goods such as bags, wallets and card cases are mentioned in some invoices (Annex 4), as alleged by the applicant, either these goods bear other trade marks such as ‘GUCCI’, ‘BOTTEGA VENETA’ or ‘HERNO’ or they cannot clearly be identified as ‘BELFE’ goods.

The goods in Class 28 are not mentioned in the evidence.

As regards the EUTM proprietor’s argument that use should be considered proven for the goods in Classes 18 and 28 similar to clothing, it is not appropriate to accept proof of use for ‘different’ but somehow ‘linked’ goods as automatically covering registered goods and services. In particular, the concept of similarity of goods and services is not a valid consideration within this context.

Therefore, the EUTM proprietor has failed to prove genuine use for all the goods in Classes 18 and 28.

Finally, some invoices (Annexes 2 and 3) mention goods such as fabrics which are not covered by the contested mark.

In light of the above, the evidence only shows genuine use of the trade mark for the following goods:

Class 25: Clothing for ladies including outer garments, woven and knitted; shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves; all the aforementioned for women.

Therefore, the Cancellation Division finds the EUTM must be revoked for the remaining goods for which it is registered.

For the sake of completeness, the fact the EUTM proprietor filed two new applications for the word mark ‘BELFE’ (EUTM application No 17 884 873 and an Italian trade mark application) after the filing of the present revocation action is irrelevant to the present proceedings. This is part of the EUTM proprietor’s strategy and has no impact on the present revocation case.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

It was demonstrated that the EUTM had been used in relation to some of the contested goods during the relevant period in the relevant territory to an extent sufficient to indicate that the use was genuine. The EUTM was used as a trade mark in a form not altering the distinctiveness of the mark as registered. Considering all the above, the Cancellation Division concludes that the evidence, as a whole, is sufficient to demonstrate that the contested mark was genuinely used during the relevant period in the relevant territory for clothing for ladies including outer garments, woven and knitted; shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves; all the aforementioned for women in Class 25.

Conclusion

It follows from the above that the EUTM proprietor has not proved genuine use of the EUTM for the following goods, for which it must, therefore, be revoked:

Class 18: Skins, hides, goods of leather and imitation leather, purses, travelling sets, briefcases, travelling bags, valises, haversacks, handbags, cases, card cases, pocket wallets, purses, briefcases, key-cases; umbrellas.

Class 25: Shirts, jackets (small), skirts, trousers, jackets, waterproof clothing, scarves, all excepting those for women; clothing for gentlemen and children, including outer and under garments, woven and knitted; clothing for ladies, namely under garments, woven and knitted; jeans; waistcoats; aprons and children’s pinafores; overcoats; sportswear; neckties; headscarves; gloves; sashes for wear, berets; stockings; footwear.

Class 28: Equipment for physical exercises and gymnastics; skis and ski-bindings, fencing weapons, exercise cycles, billiards, fishing tackle, rods for fishing, golf clubs, rackets, table tennis, archery implements, bows for archery, decorations for Christmas trees, balls for games and play balloons, dolls’ feeding bottles, toy masks, marionettes; dolls, games and playthings; draughts, chess games, chessboards; scale model vehicles; roller skates and ice skates.

The EUTM proprietor has proved genuine use for the remaining contested goods; therefore, the application is not successful in this respect.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 01/03/2018.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Ioana MOISESCU

Frédérique SULPICE

Richard BIANCHI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.