CANCELLATION No C 41 169 (REVOCATION)

‘primetal-Exim’ S.R.L., Str. Onisifor Ghibu 1 of-19, 2051 Chisinau, Republic of Moldova (applicant), represented by Ana Ebri Sambeat, Ebri & Asociados, Edificio Géminis Center, Av. Cortes Valencianas, 39-1º, 46015 Valencia, Spain (professional representative)

a g a i n s t

Klaus Wagner, Hauptstraße 27, 4731 Prambachkirchen, Austria (EUTM proprietor), represented by Burgstaller & Partner Rechtsanwälte, Landstraße 12, 4020 Linz, Austria (professional representative).

On 18/06/2021, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 415 109 are revoked as from 04/02/2020 for all the contested goods, namely:

Class 33: Wines, spirits and liqueurs.

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

Class 32: Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages.

Class 39: Supplying of ready-to-serve meals and beverages for immediate use.

Class 41: Entertainment and music services.

Class 42: Providing of accommodation and/or food and drink.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

On 04/02/2020, the applicant filed a request for revocation of European Union trade mark No 415 109 (figurative mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 33: Wines, spirits and liqueurs.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that the contested mark had not been used in the past five years for any of the goods for which it is registered in Class 33.

On 17/06/2020, within the time limit specified by the Office, the EUTM proprietor submitted evidence of use of the EUTM and stated that these documents proved genuine use of the EUTM for all the goods and services for which the mark is registered and the application for revocation should be dismissed in its entirety. The EUTM proprietor explained that the trade mark identifies a discotheque located in Austria that organises a number of events, such as Carnival events, Halloween parties, Christmas parties or Oktoberfest. He explained that the discotheque has several bars serving alcoholic and non-alcoholic drinks, and the ones that are not offered under a particular trade mark are sold under the name of the discotheque (‘FLY’). He referred to drinks, such as water, red wine, white wine, vodka or gin.

The applicant claimed that the evidence submitted does not comply with the formal requirements established in the applicable rules, namely Article 55(2) EUTMDR, and cannot not be taken into account. It also claimed that the proprietor has shown that the mark is used in connection with a night club or discotheque but has not submitted any evidence of genuine use of the contested EUTM for goods in Class 33.

No further observations were submitted by 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, § 35-37 and 43).

When assessing whether use of the trade mark is genuine, all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real must be taken into consideration, 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 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 23/06/1999. The revocation request was submitted on 04/02/2020. 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 04/02/2015 until 03/02/2020 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 17/06/2020 the EUTM proprietor submitted evidence as proof of use. Although the format of the evidence submitted is not particularly elaborated, it complies with the minimum format requirements. Therefore, the Cancellation Division can proceed to an assessment.

The evidence to be taken into account is the following:

 links to Facebook and Instagram websites of the EUTM proprietor;

 printouts of Facebook, showing photos of events organised in the discotheque ‘FLY’ with different dates between 2017 and 2019:

o one of the photos shows drinks, namely an energy drink and vodka, which bear trade marks other than ‘FLY’. The remaining photos show people dancing, DJs playing music or waiters serving drinks (under different trade marks);

o another set of printouts shows advertisements of events, taking place between 2017 and 2020, such as ‘Halloween’, ‘Barbie girl party’, ‘Christmas’ and ‘Oktoberfest’.

 printouts of Instagram, showing photos of events organised in the discotheque (one is dated 26/08/2019 and another one 20/03/2018).

ASSESSMENT OF GENUINE USE – FACTORS

Nature of use: 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.

In view of the number of marks registered and potential conflicts between them, it is essential that the rights conferred by a mark for a given class of goods or services are maintained only where that mark has been used on the market for goods or services belonging to that class (15/01/2009, C‑495/07, Wellness, EU:C:2009:10, § 19).

The evidence contains some indications of use of the contested mark in relation to a discotheque. Since the use of these services has not been challenged by the applicant, there is no need to make a detailed assessment of all the different factors to conclude that there is genuine use for such services.

However, there is no evidence of use for any of the contested goods in Class 33 for which the mark is registered, namely wines, spirits and liqueurs. The only photo displaying drinks clearly demonstrates bottles and beverage cans bearing trade marks other than ‘FLY’. The arguments of the EUTM proprietor regarding the use of the contested mark for alcoholic and non-alcoholic drinks are therefore not supported by any piece of evidence.

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

It follows from the above that the EUTM proprietor has clearly failed to prove genuine use for the contested goods.

The factors of time, place, extent and nature of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as at least ‘nature of use: use in relation to the registered goods’ has not been established, it is not necessary to enter into the other requisites.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested goods. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all these goods, namely:

Class 33: Wines, spirits and liqueurs.

The EUTM remains on the register for all the uncontested goods and services. According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 04/02/2020.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, he must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ioana MOISESCU

Begoña URIARTE VALIENTE

Ana MUÑIZ RODIGUEZ

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.