CANCELLATION DIVISION
CANCELLATION No C 14 212 (REVOCATION)
Dieter A. Hang, Schöffenstr. 22, 65933 Frankfurt, Germany (applicant), represented by Markus Brehm, Berger Str. 279, 60385 Frankfurt am Main, Germany (professional representative)
a g a i n s t
Formula
One Licensing B.V., Beursplein 37,
3011AA Rotterdam, Netherlands (EUTM proprietor), represented by
Harmsen Utescher,
Neuer Wall 80, 20354 Hamburg, Germany (professional
representative).
On 18/03/2021, the Cancellation
Division takes the following
DECISION
1. |
The application for revocation is partially upheld. |
3. |
The European Union trade mark remains registered for the all remaining and uncontested goods and services, namely:
Class 14: Chronometric instruments, clocks and watches; commemorative coins.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; plastic materials for packaging (not included in other classes); printed publications; foils and other packing and packaging material of paper, cardboard or plastic not included in other classes; booklets; advertising and promotional material not included in other classes; babies' diapers of paper and cellulose [disposable]; passport holders; holders for chequebooks [cheque books].
Class 28: Games.
Class 42: Providing of food and drink. |
4. |
The EUTM proprietor bears the costs, fixed at EUR 1 080. |
On
19/12/2016, the applicant filed a request for revocation of European
Union trade mark No 604 801
(figurative mark) (the EUTM). The request is directed against some of
the goods and services, covered by the EUTM which include those which
were added on 02/05/2018 to the specification of the EUTM proprietor
for clarification purposes following a declaration under Article
33(8) EUTMR filed by the EUTM proprietor on 21/09/2016. The goods and
services subject to the present revocation action are therefore the
following:
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, imitation jewellery, precious stones; horological instruments; keyrings and money clips of precious metals; photograph frames of precious metal; bottle openers and corkscrews of precious metals; pins of precious metals, brooches, tie pins and cufflinks; coins; key rings [trinkets or fobs]; medals.
Class 16: Photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); playing cards; printers' type; printing blocks; sheets, bags of paper, cardboard or plastic not included in other classes; boxes and large containers of paper or cardboard for packing and packaging purposes; napkins; coasters, table cloths and covers, napkins and towels of paper; pamphlets, diaries, calendars; ball point pens and pencils; cards and greeting cards; wrapping paper; picture cards; stickers (stationery); labels; transparencies; engravings, etchings, transfers; marking chalk; photograph stands; trays for sorting and counting money; vignetting apparatus; wristbands for the retention of writing instruments.
Class 25: Clothing, footwear, headgear; coats and raincoats; waterproof clothing, waterproof sports jackets; jackets; blazers; impregnated coats; leisure clothing; trousers, underpants, jogging trousers, shorts, dresses, skirts, shirts, blouses; T-shirts, sweatshirts and jeans, knitwear, sweaters, jumpers, pullovers and cardigans; boots, shoes, sports socks; neckties, gloves; belts; hats, caps.
Class 28: Playthings; gymnastic articles not included in other classes; toys; ornaments and decorations for Christmas trees; dolls; electric and electronic games, except for those used in connection with a screen; scale model vehicles; darts; mobiles [toys]; kites, models and construction kits for making scale models.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; pasta; chocolate drinks; sweets (non medicinal). small cakes; cakes; biscuits; chilled and frozen pastry and confectionery; ready-to-eat meals and ingredients for meals not included in other classes; sauces; salad dressings; pizzas; popcorn; waffles; sandwiches; snack products included in this class.
Class 41: Nightclubs.
Class 42: Restaurants, bars, cafes. tea shops, coffee shops, snackbars, cocktail lounges, bars, catering and take-away restaurants; photography.
The applicant invoked Article 58(1)(a) EUTMR.
FACTS AND SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the EUTM has not been put to genuine use for the contested goods and services during the five consecutive years preceding the filing of the application for revocation. Therefore, he requests that the EUTM be revoked for those goods and services.
The EUTM proprietor submits Annexes 1 to 5 as proof of use which are listed in the section ‘GROUNDS FOR THE DECISION’ below. It explains that the EUTM is part of the Formula 1 group of companies who are responsible for commercially exploiting the international motor racing series FIA Formula One World Championship which has taken place on a yearly basis since 1950 and consists of a series of motor races operating inter alia under the trade marks F1, Formula 1 or F1 GRAND PRIX and FORMULA 1 GRAND PRIX.
The company Formula One Hospitality and Event Services Limited (FOHES) which is entitled to use and commercialise the EUTM (Annex 1) issued a “commemorative coin” to celebrate the 65th season of Formula 1 racings. The EUTM was used on one side of these coins as well as on the packaging boxes in which these coins were sold (Annex 2).
A limited edition of 2.000 coins in total was marketed during the season in the years 2014 and 2015. In 2014 the coins were first offered for sale through authorised distributors, in particular, at races in the UK (Silverstone), Germany (Hockenheim), Hungary (Budapest), Belgium (Spa-Francorchamps) and Italy (Monza). The remaining stock was offered and sold to visitors in 2015, in particular, at races in Spain (Barcelona), Austria (Spielberg), UK (Silverstone), Hungary (Budapest), Belgium (Spa-Francorchamps) and Italy (Monza). In total, the EUTM proprietor claims to have generated a turnover of 18,000 € through the sale of these coins.
As regards extent of use, the proprietor emphasises that such goods are usually marketed in limited quantities which is a value-increasing factor and consequently over a limited time period only. As the EUTM may well be used again in the context of the upcoming anniversary of the 70th season of Formula 1 Racings, there is a legitimate interest of the proprietor in maintaining the EUTM.
The applicant submits that the proof of use was filed late, but anyway is not sufficient to establish genuine use. It points out that more than half of the 2.000 items were sold to Australia, thus outside the European Union whereas only 66 of the remaining amount had been sold to a reseller in Germany. In any event, there is no proof that there were actual sales to end consumers in the European Union and no evidence as to where, when or by whom the remaining 772 medals have been sold.
The EUTM proprietor insists that the EUTM has been used for the commemorative coins that were offered and sold at the race circuits in 2014 and 2015, inter alia, in the EU. First, it was clear that such coins are not offered on a regular basis as every day products as such anniversaries only come up every five years. Second, it should be considered that commemorative coins are exclusive (collectors’) items. The proprietor points to the description in the invoices in Annex 4 which reflects actual sales to end consumers. In any event, the sale to distributors would also be sufficient to establish genuine use.
Following a declaration under Article 33(8) EUTMR submitted by the proprietor, the specification of goods and services of the EUTM was clarified by adding further goods. To the extent that some of these goods, namely coins; key rings [trinkets or fobs]; medals in Class 14 and marking chalk; photograph stands; trays for sorting and counting money; vignetting apparatus; wristbands for the retention of writing instruments in Class 16, were covered by general terms that were subject to the cancellation action (stationery; photographs; typewriters and office requisites), the applicant was informed and invited to indicate whether or not it also wanted to challenge these additional goods on 14/11/2018. After confirmation of the applicant on 21/11/2018, the EUTM proprietor was invited to submit proof of use for these additional goods only.
The EUTM proprietor did not submit any further proof of use. It merely refers to its previous arguments and evidence which establish genuine use at least for the some of the goods covered in Classes 14, 16 and 28.
The proprietor adds, however, that the application should anyway be dismissed in full as it constitutes an ‘abuse of law and process’, and violates the principles of procedural law generally recognised in the Member States.
The parties share a long history of dispute which commenced in 1998 when the applicant and/or his then company H&H Lizenz u. Markenrechteverwertung GmbH registered German trade marks No 398 20 803 ‘Formel 1’ (fig.) and No 398 25 504 ‘PLANET FORMEL 1’ which were opposed by the EUTM proprietor. The parties met again in 2010 when the applicant registered German trade mark No 30 2010 035 624 ‘FORMULA 1’ (fig.) and several EUTMs, in particular EUTM No 9 174 277 ‘FORMEL 1‘ (fig.) and No. 9377953 ‘FORMEL 1’ (fig) which were again all opposed by the EUTM proprietor.
Already back then, the applicant responded by taking countermeasures in the form of cancellation proceedings or, where the EUTM proprietor’s marks post-dated his German trade mark No 398 20 803 ‘Formel 1’, opposition proceedings based on this mark. In 2012 the applicant even pressed (entirely baseless) criminal charges against the EUTM proprietor and its legal representative for alleged fraud in two of these cancellation proceedings (No 5633 C and No 5747 C), because the proprietor had requested the EUIPO to stay the proceedings based on the fact that the earlier right invoked had been transferred to a company in liquidation at that time. The criminal investigation was closed on 30/07/2012.
On 06/08/2014 the German PTO (DPMA) issued a decision granting the opposition filed by the EUTM proprietor on the grounds that the applicant was exploiting the fame of the ‘Formula 1’ trade marks of the EUTM proprietor in an unfair manner and his German trade mark registration No 30 2010 035 624 ‘FORMULA 1’ (fig.) therefore had to be cancelled (Exhibits 1 and 2). Shortly afterwards, in February 2015, the applicant launched another wave of ten cancellation proceedings against the trade marks of the EUTM proprietor before the EUIPO, which were all based on his earlier German trade mark No 398 20 803 ‘FORMEL 1’ (fig.). In these proceedings the applicant, by reference to the decision of the DPMA (Exhibits 1 and 2), claimed rights for himself in a well-known ‘Formel 1’ trade mark and relied on its image value even though these rights were not vested in him, but only in the EUTM proprietor.
An investigation conducted in 2015 into the applicant and his use of the trade mark revealed, that the applicant sold coins under the ‘Formel 1’ trade mark. In addition, he owned the domain www.formel1-licensing.com, where licences for using the ‘Formel 1’ trade mark were offered for sale. Apparently, the applicant’s business concept had been based on the exploitation and licensing of the ‘Formel 1’ trade mark. However, such use was no longer discernible in 2015.
To defend itself in the cancellation proceedings, the EUTM proprietor sued for cancellation of the applicant’s German trade mark No 398 20 803 due to non-use before the Regional Court of Frankfurt and obtained a favourable judgment from the Higher Regional Court of Frankfurt am Main on 30/10/2017 which became final and led to the removal of the trade mark from the German register in early 2018.
In the course of the proceedings and negotiations before the Regional court of Frankfurt the EUTM proprietor gained the impression that the applicant nurtured very strong and personal aggressive sentiments against it. Apparently, the cancellation of German trade mark registration No 398 20 803 enraged the applicant to such a degree that he then filed sixty revocation requests in several waves throughout one year.
The first wave of fourteen cancellation actions in early 2018 as well as the second wave of another nineteen cancellation actions in April 2018 were directed against EUTMs of the EUTM proprietor that were not core marks and also partly protected at a national level. Therefore, the EUTM proprietor – faced with a tremendous bottleneck in its own trade mark department due to internal changes – mostly terminated these proceedings by withdrawing the contested EUTMs to prevent negative decisions from the Office on these marks, the majority of which were still in actual use.
In a third wave of twenty three cancellation actions the applicant challenged another twenty-three EUTMs of the EUTM proprietor, including core trade marks, the use of which is generally known through TV and the internet. Another four requests followed in November 2018.
As these proceedings also concern core trade marks of the EUTM proprietor which are still in evident use, the EUTM proprietor argues to have no other line of defence but to point out the abusive nature of the applications and to submit evidence of use of at least the most important goods and services merely as a fall-back position.
The EUTM proprietor adds that the proceedings also have a substantial economic dimension. On 04/10/2018 the applicant claimed reimbursement of 32.680 € for the cancellation proceedings of that year. The applicant also filed a claim for damages before the Regional Court of Mannheim (case reference 22 O 26/18) seeking information and a declaratory judgment for damages for the alleged infringement of his – since cancelled – German trade mark registration No 398 20 803. On 27/02/2019 the applicant also filed non-use actions against the German national registrations No 2 027 812 ‘FORMULA 1’ and 2 027 811 ‘FORMEL 1’ of the EUTM proprietor.
In order to support its observations, the EUTM proprietor filed the following evidence:
Exhibits 1 and 2: Decision of the DPMA of 06/08/2014 concerning trade mark application file No 30 2010 035 624.3/16 and partial translation thereof into the language of proceedings.
Exhibits 3 and 4: Report by Unternehmens- und Wirtschaftsinformation GmbH (U.W.I.) of 17/03/2015 concerning an investigation into the applicant and its translation into the language of proceedings.
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).
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).
According to Rule 22(3) CTMIR which pursuant to 40(5) CTMIR applies mutatis mutandis ‘in the case of an application for revocation based on Article 50(1)(a) of the Regulation’ (now Artcle 58(1)(a) EUTMR), 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 07/06/2006. The revocation request was filed on 19/12/2016. 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 19/12/2011 until 18/12/2016 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.
On 19/05/2017 the Office set a deadline of 24/08/2017 for the EUTM proprietor to submit proof of use which was extended until 24/10/2017 on 21/08/2017. On 24/10/2017 the EUTM proprietor requested a second extension which was refused by the Office on 27/10/2017. However, for reasons of equity the EUTM proprietor was granted one additional day which is equivalent to the number of days remaining of the previous time limit when the request for extension of time was submitted. As the EUTM proprietor’s deadline therefore expired on 28/10/2017, contrary to the arguments of the applicant, the evidence submitted as proof of use on 27/10/2017 was not late.
The evidence to be taken into account is the following:
ANNEX 1 – Confirmatory statement dated 13/10/2015 between the EUTM proprietor, Formula One World Championship Limited, Formula One Management Limited and Formula One Hospitality and Event Services Limited (FOHES), confirming amongst others the entitlement of FOHES to use the Formula One Marks including the EUTM.
ANNEX 2 – Photographs of a commemorative coin and its packaging box as shown below:
The EUTM is embossed on one side of the coin in central position surrounded by the words “COMMEMORATING THE 65TH SEASON FORMULA 1 RACING” on the upper part of the coin and with the number ’2014’ at the bottom. The EUTM also appears in yellow on the back of the black box.
ANNEX 3 – Voucher for the purchase of inter alia the commemorative coin shown above. The EUTM is not visible on the voucher as it only shows the side of the coin on which it is not used.
ANNEX 4 – Two exemplary invoices issued in 2015 by FOHES (Formula One Hospitality and Event Services Limited) to MBA Sport – Markus Schell e.K. in Germany and to Ausvent Pty Ltd in Australia. The invoices do not show the contested sign, but refer to F1 coins sold during 2014 season. The invoices show total amounts of 66 (over 600 €) and 1.162 coins (over 10.000 €) sold. According to the proprietor these are authorised distributors that subsequently sold the coins during the world series, thus including in Europe.
ANNEX 5 – Written statement of the client account manager of SMT Merchandise confirming that they designed the commemorative coins of which 2.000 were produced for the Formula 1 companies and made available at the beginning of July 2014. Artworks showing the final design of the coin and the packaging box were also attached:
Without specifying the exact quantity, the statement also confirms that some coins were delivered directly to the race circuits at Silverstone UK and at Hockenheim, Germany for sale at the 2014 FORMULA 1 BRITISH GRAND PRIX and the FORMULA 1 GROSSER PREIS SANTANDER VON DEUTSCHLAND 2014. Two invoices to Formula 1 Management Limited dating from 05/06/2014 and 16/07/2014 are attached that concern the production of the coins and the transport of unspecified goods to Germany respectively.
On The Alleged Abuse Of Law And Process
The EUTM proprietor requests the Office to reject the present application for revocation due to abuse of law and process. It refers to a decision of the Cancellation Division (26/09/2017, 13 262 C, Sandra Pabst) where this principle had been applied and which has been confirmed by the Grand Board (11/02/2020, R 2445/2017-G, Sandra Pabst).
According to the EUTM proprietor, the circumstances of the present case are comparable and the same findings should therefore be reached. It claims that the objective requirements are result from the large number of revocation applications that the applicant filed against trade marks of the EUTM proprietor in 2018 alone, some of which were directed against marks that were evidently in extensive use. The EUTM proprietor explains that the parties have a long history of dispute going back to 1998 and argues that these cancellation proceedings were only the tip of a campaign waged by the applicant, spanning many years and directed against the EUTM proprietor. From a subjective perspective, the EUTM proprietor alleges that the applicant is only focused on a personal vendetta against the EUTM proprietor.
The proprietor assumes that the applicant may be motivated by his wrong belief to be the rightful owner of the rights in the well-known “Formel 1” trade mark. However, in its view, this notion is totally unrelated to the general interest underlying Article 58 EUTMR. Instead, the proprietor argues that in the present case an administrative procedure is evidently being abused to inflict the greatest possible damage on the proprietor, driven by a personal desire for revenge.
The EUTM proprietor refers to several of the other cancellation actions filed by the applicant, namely 5 633 C, 10 438 C, 10 439 C, 10 440 C, 10 441 C, 10 442 C, 10 443 C, 10 444 C, 10 449 C, 10 450 C and 10 451 C, which contain documentation on the criminal investigation initiated by the applicant in 2012 and on the cancellation proceedings initiated by the proprietor against the applicant’s German trade mark registration No 398 20 803, in particular, the judgment of the Higher Regional Court of Frankfurt am Main of 30/10/2017 (6 U 7/16) ordering the applicant to consent to the cancellation of his trade mark. The EUTM proprietor requested that the records of these proceedings are made part of the present proceedings so as to not submit the relevant evidence again. Such requests are only accepted when the documents that it refers to are clearly identified. The EUTM proprietor only made a general reference to documents or evidence submitted in these other proceedings. Nevertheless, the Cancellation Division will take them into account when assessing the claim for abuse of process. Even considering those documents, the claim of abuse of process cannot succeed for the reasons set out below. It was therefore not necessary to reopen the proceedings to give the EUTM proprietor the possibility to identify the exact documents that it referred to. Likewise, there was also no need to hear the applicant whose rights are not negatively affected as the claim of abuse of process does not succeed.
First, the Cancellation Division deems it useful to recall that the exclusive rights arising from trade mark protection are subject to the use requirement after five years of registration. Therefore, in principle, EU trade mark proprietors must bear the burden of having to prove genuine use if so requested, as provided for in Article 58(1)(a) EUTMR.
Second, due to the public interest underlying the ground for revocation based on non-use that trade marks which do not satisfy the use requirement shall be revoked (30/05/2013, T-396/11, Ultrafilter International, EU:T:2013:284, § 17-18), applications for revocation due to non-use can be brought by any natural or legal person (Article 63(1)(a) EUTMR). It is also settled case-law that the applicant is not required to demonstrate any particular reason, interest or motive in bringing such proceedings (08/07/2008, T-160/07, Color Edition, EU:T:2008:261, § 22-26, confirmed by 25/02/2010, C-408/08 P, Color Edition, EU:C:2010:92, § 37-40; 11/02/2020, R 2445/2017-G, Sandra Pabst, § 32).
Therefore, on the one hand, the Office is required to assess whether the EUTM under examination was put to genuine use without the motives and earlier conduct of the applicant for a declaration of revocation being able to affect the scope of the task entrusted to the EUIPO in relation to the public interest underlying Article 58(1)(a) EUTMR (by analogy 30/05/2013, T-396/11, Ultrafilter International, EU:T:2013:284, § 21, confirmed by 19/06/2014, C-450/13 P, Ultrafilter International, EU:C:2014:2016, § 41; 19/01/2021, C-401/20 P, Leinfelder, EU:C:2021:31, § 21).
On the other hand, it is also settled case-law that EU law cannot be relied on for purposes that are incompatible with its objectives, such as abusive or fraudulent ends (13/03/2014, C-155/13, SICES e.a., EU:C:2014:145, § 29). It is important to note that the notion of ‘abuse of rights or process’ is completely independent of the rules as to who is entitled to bring a cancellation request, and of whether or not such an interest in filing the request must be shown (11/02/2020, R 2445/2017-G, Sandra Pabst, § 32).
Nevertheless, a rejection of an application for a declaration of revocation as inadmissible on the grounds that it constitutes a ‘circumvention of law’ or ‘abuse of law’ is rather an exception and, as such, must be construed narrowly. This argument should be subject to a careful assessment of the specific circumstances of each case.
A finding of an abusive practice requires a combination of objective and subjective elements (28/07/2016, C-423/15, Kratzer, EU:C:216:604, § 38). What is needed is an overall assessment of all factors relevant to the given case vis-à-vis both the subjective and the objective factors at hand must be made, but there is no need for a hard-and-fast separation between them (11/02/2020, R 2445/2017-G, Sandra Pabst § 34).
Only where the proprietor provides a convincing line of arguments that shows that the circumstances indicate that the action was primarily driven by illegitimate objectives that the action can be dismissed on this ground. In that regard, a proprietor relying on ‘abuse of process’ should be subject to a rather high burden of proof.
For the following reasons and in light of all the relevant facts and circumstances of the case, the arguments and evidence provided by the EUTM proprietor do not justify a finding of inadmissibility due to ‘abuse of process’. Unlike the EUTM proprietor submits, this case is also not comparable to the so called ‘Sandra Pabst’ case on which it wishes to rely.
In that case, the Grand Board considered that ‘it is already clearly abusive in itself to attack a long list of trade marks belonging to another party which have nothing in common other than their ownership’ (11/02/2020, R 2445/2017-G, Sandra Pabst § 42). As the EUTM proprietor claims, the applicant has filed an unusually high number of cancellation actions against the EUTM proprietor before the EUIPO, sixty of which were filed during the years of 2018 alone. However, in the present case, all these actions brought by the applicant are directed either against variations of the EUTM proprietor’s trade mark ‘Formula 1’ or of its ‘Grand Prix’ sign. As the EUTM proprietor itself explains, the FIA Formula One World Championship consists of a series of motor races operating inter alia under the trade marks ‘F1’, ‘Formula 1’ or ‘F1 GRAND PRIX’ and ‘FORMULA 1 GRAND PRIX’. Notwithstanding the high number of parallel actions filed by the applicant against the EUTM proprietor, there is an apparent connection between the challenged marks beyond their ownership.
The EUTM proprietor has set out in detail that there was a history of legal dispute between the parties that concerned the ‘Formula 1’ brand of the EUTM proprietor which has been invoked against the applicant’s use and registration of variations of ‘Formula 1’, particularly including its translation into German ‘Formel 1’. Against this background and unlike in the ‘Sandra Pabst’ case, it appears that the revocation actions were filed as a means of defence or at least in response to the EUTM proprietor’s attacks. Given that all the challenged trade marks are obviously connected, it cannot really be claimed that the present series of actions lacked any business sense.
This was very different in the ‘Sandra Pabst’ case where the cases concerned completely unrelated signs and where the applicant systematically and out of the blue targeted a high various companies with which it had had no prior relationship or conflict. The high number of applications in that case was due to the fact that it was the applicant’s business strategy to secure a blocking position in the trade mark register for the sole purpose of later on obtaining an undue advantage from any given company that would file for registration of an identical or similar EUTM (11/02/2020, R 2445/2017-G, Sandra Pabst, §§ 63 et seq.).
According to the EUTM proprietor in the present case the chronology of events suggests that the cancellations were only motivated by revenge as the cancellations filed in 2015 followed a decision of the DPMA of 2014 cancelling the applicant’s German trade mark registration No 30 2010 035 624 ‘FORMULA 1’ (fig.) and cancellation actions in 2018 started immediately after cancellation of the applicant’s German trade mark registration No 398 20 803.
However, it cannot be excluded that, at that point, the applicant’s challenging the validity of all these related trade marks was motivated by its own (business) interest in resuming its previous use of the ‘Formula 1’ and ‘Formel 1’ brands. In fact, revocation actions in particular, and cancellation actions in general, are commonly filed as a response against earlier trade marks that have been invoked against younger trade marks in relative ground proceedings. Challenging the validity of the such earlier trade marks before the Office or through a counterclaim in infringement proceedings is a valid means of defence that the EUTM Regulation puts at the disposal of the owner of the younger trade mark.
From the content of the investigation report submitted by the proprietor (Exhbit 3), it appears that on his website www.formel1-licensing.com, the applicant presented himself as ‘the official owner of the word and figurative mark ‘Formel 1’ since December 2009’ and offered to ‘licenses for the use of [his] word/figurative mark for merchandising and events’. Taking this into account and even though the decision of the DPMA (Exhibit 1) established that the applicant’s use of his German trade mark registration No 30 2010 035 624 was taking advantage of the reputation of the EUTM proprietor’s ‘FORMULA 1’ trade mark, this does not automatically render the filing of cancellation actions in response abusive. The EUTM proprietor itself also indicates that the applicant seemed to believe that his use was somehow justified.
Finally, the alleged international and economic dimension of this case as alleged by the EUTM proprietor can also not support a finding of ‘abuse of law’. First, the proceedings in Germany for cancellation of some of the EUTM proprietor’s German marks or for damages and even the criminal investigation initiated upon request of the applicant are again related to the attacks initiated by the EUTM proprietor. Even if such an intense response may be rather unusual, these actions cannot automatically be considered to be merely disruptive and not objectively justified. As regards, second, the reimbursement of cost sought by the applicant, the amount may be significant, but merely results from the high number of cases in which the Office had ordered the EUTM proprietor to bear the cost. Unlike in the ‘Sandra Pabst’ case where the applicant also attempted to appropriate the attacked marks for himself (11/02/2020, R 2445/2017-G, Sandra Pabst, §§ 53 et seq.) in the present case there is no evidence of any ‘blackmailing’ on part of the applicant.
Overall and contrary to the arguments of the EUTM proprietor, the present case can therefore not be compared to the ‘Sandra Pabst’ case, neither in terms of the number of actions brought, nor as regards its international and economic dimensions.
The EUTM proprietor has not brought forward any other conclusive arguments or evidence that the cancellation actions filed by the applicant in the present case were primarily driven by illegitimate objectives.
Consequently, the Cancellation Division dismisses the claim of ‘abuse of rights or process’ as unfounded.
ASSESSMENT OF GENUINE USE – FACTORS
The evidence must show that the contested EUTM has been genuinely used within the relevant period and in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).
All the evidence is dated within or refers to the years 2014 and 2015 which is within the relevant time period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.
At least part of the evidence relates to the United Kingdom (UK).
On 01/02/2020, the UK withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. Therefore, use in the UK prior to the end of the transition period constituted use ‘in the EU’. Consequently, the evidence relating to the UK and to a period prior to 01/01/2021, as in the present case, is relevant with a view to maintaining rights in the EU and will be taken into account.
The submitted evidence therefore demonstrates use in the European Union.
This can be inferred from the invoices contained in Annex 4 which are issued in EURO and by the UK company FOHES indicating bank account and contact details in the United Kingdom. In particular the invoice issued to the company “Ausvent Pty Ltd.” in Australia (INV004105) of 01/02/2015, therefore reflects export of goods from the UK to Australia which, at that time, must be considered use within the European Union pursuant to Article 18(1)(b) EUTMR.
The place of use is further corroborated by the statement of the client account manager of the UK company SMT Merchandise (SMT) according to which part of the manufactured coins were directly delivered to racing circuits in the United Kingdom and Germany. That statement is supported by invoice No 30908 (Annex C). This invoice concerns a delivery to Germany (Carriage DHL to Germany) and was issued by SMT to the same company as the invoice concerning the manufacture of the coins that was only issued a few weeks before. Even though the invoice does not indicate which goods were transported, the context of the other items of evidence supports a conclusion that this invoice relates to the transport of the commemorative coins branded with the EUTM.
Nature of use: use as a trade mark and as registered
Nature of use requires, inter alia, that the contested EUTM 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.
‘Nature of use’ in the context of Rule 22(3) CTMIR 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 EUTM.
The product pictures provided (Annex 2), the flyer (Annex 3) as well as the final artwork for these products attached to the confirmatory statement of SMT (Annex 5) show that the EUTM has been directly affixed to the goods and their packaging and has also be used in that form on advertising material. This clearly shows use of the EUTM as a trade mark in the form as registered. Therefore, the evidence provides sufficient indications as regards the nature of its use which has not been questioned by the applicant either.
Use in relation to the registered goods and services
Article 58(1)(a) EUTMR and Rule 22(3) CTMIR 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 goods and services listed in the section ‘Reasons’ above. However, the submitted proof of use does not relate to all these goods and services.
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.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288)
Since consumers are searching primarily for a product or service to meet their specific needs, the purpose of the product or service in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods or services (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 29).
The contested EUTM is registered for coins. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it. The evidence shows that the contested EUTM has been used for commemorative coins only. On the basis of the purpose of the goods used, the Cancellation Division finds that the use for commemorative coins, which falls under the broad category of coins, constitutes use for the subcategory commemorative coins.
The EUTM proprietor argues that the evidence shows use at least for the following goods:
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, imitation jewellery, precious stones; keyrings and money clips of precious metals; pins of precious metals, brooches, tie pins and cufflinks; coins; key rings [trinkets or fobs]; medals.
Class 16: Boxes of paper or cardboard for packing and packaging purposes.
Class 28: Games and playthings; toys; ornaments and decorations for Christmas trees; dolls.
As is obvious from the above, the submitted evidence exclusively relates to the manufacture of specific commemorative coins marketed on the occasion of the 65th season of ‘Formula 1’ racing. According to the EUTM proprietor the use for these coins also constitutes use for the above mentioned other goods in Class 14. Even if these goods at all comprise commemorative coins, the EUTM proprietor has not shown any use of the EUTM beyond these specific goods that would justify maintaining the EUTM for any broader category potentially including them.
As regards boxes of paper or cardboard for packaging and packaging purposes, the EUTM proprietor refers to the fact that the EUTM is also used on the box in which the commemorative coin is sold. Apart from the fact that it cannot be deduced from the submitted evidence without resorting to assumptions and probabilities that this box is actually made of paper or cardboard, these boxes are not offered for sale to third parties separately. From the submitted evidence it is clear that these boxes are only ancillary goods aiming at enhancing the EUTM proprietor’s commemorative coins. Such use cannot be considered genuine use for the purpose of creating or maintaining a market share for paper or cardboard boxes.
Concerning the goods in Class 28, it is first noted that games have not been challenged by the applicant and are thus not subject to the present decision. Inasmuch as playthings; toys; ornaments and decorations for Christmas trees; dolls are concerned, the EUTM proprietor argues that it has a special interest in keeping these goods for future use.
The above mentioned case-law also establishes that 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. That is particularly so when the goods for which the trade mark has been registered form a sufficiently narrowly-defined category (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 51).
In this regard, the EUTM proprietor limits itself to the general allegation that these goods in Class 28 are interchangeable with commemorative coins for which use has been shown. However, it fails to elaborate why this would be the case or why these goods would otherwise be sufficiently close to the commemorative coins marketed under the EUTM so as to exceptionally establish a legitimate interest in maintaining the EUTM for these goods for which no proof of use has been submitted.
The burden is on the EUTM proprietor to prove genuine use and, in principle, the contested EUTM has to be revoked for those goods and services, for which genuine use has not been shown. Therefore, maintaining the registration also for goods (or services) for which the EUTM has not been used, as the proprietor requests, is an exception that, as such, has to be applied restrictively. The Cancellation Division considers that the allegations of the EUTM proprietor do not justify the application of that exception in the present case.
No arguments or evidence at all are submitted in relation to the remaining goods and services.
As the EUTM proprietor has not provided any evidence concerning the contested goods and services, except for commemorative coins in Class 14, the assessment of genuine use will only continue for these goods.
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 ‘use 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 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).
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.
Assessing the circumstances of the case may include giving consideration, inter alia, to the nature of the goods or services, the characteristics of the market concerned and the scale and frequency of use of the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39).
From the submitted evidence it can be deduced that the EUTM was used in the years 2014 and 2015 for a limited edition of commemorative coins on the occasion of the 65th season of ‘Formula 1’ racing. The statement of SMT (Annex 5) and invoice No 30842 attached thereto as Annex C corroborate that 2.000 commemorative coins were manufactured for the EUTM proprietor and that the EUTM was used on these products and their packaging. The statement also confirms that part of these goods were directly delivered to the race circuits Silverstone in the UK and Hockenheim in Germany which is supported by invoice No 30908 attached as Annex C.
The voucher submitted as Annex 3 further corroborates that the coins were actually offered for sale on the race circuits as it indicates that ‘F1’ commemorative coins can be purchased at the ‘F1’ Gamezone area in the ‘F1’ Village by Gate 1. The invoices submitted as Annex 4 refer to F1 coins sold during 2014 season and concern more than half of the total amount of manufactured coins, namely 1.228. The evidence therefore also confirms actual sales of the goods which translated into turnover of over 11.000 €. Even if the invoices only showed sales to the distributors, this would not exclude genuine use as there is no indication that these distributors form part of a distribution network owned by the EUTM proprietor or that they are otherwise controlled by the EUTM proprietor (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 50; 08/10/2014, T-300/12, Fairglobe, EU:T:2014:864, § 36).
As the EUTM proprietor is under no obligation to submit all the relevant invoices, it is considered that the amount of sales corroborated by the invoices sufficiently supports the alleged total sales volume and turnover. Therefore, the applicant’s argument that no proof was submitted concerning the remaining 772 coins is neither here nor there.
While the evidence only shows a limited volume of goods marketed under the EUTM, account must be taken of the nature of the goods which in this case are collector’s items. As the EUTM proprietor submits such goods are usually marketed in limited quantities so as to increase their value. Further, the EUTM proprietor not only claims to have offered these coins at racing events in several Member States, but also supports the geographically widespread use through the invoices in Annex 4 that concern sales not only through a German distributor, but also through an Australian distributor. The statement from SMT (Annex 5) confirms that the goods were also offered in the United Kingdom.
Bearing in mind the high number of different variations of the EUTM proprietor’s ‘Formula 1’ mark and the specific character of the goods, it can also not be excluded that reserving the EUTM for the marketing of commemorative coins issued in limited editions at the occasion of anniversaries every five years, may be commercially justified.
Overall, taking into account the nature of the goods and the specific characteristics of the market for these goods as well as the geographical extent of use, the evidence, whilst not particularly extensive, is sufficient to exclude mere token use and allows the conclusion that the EUTM has been used to maintain or create a market share for commemorative coins.
The Cancellation Division therefore finds that the EUTM proprietor has also provided sufficient indications regarding the extent of use of the contested EUTM for these goods.
Overall assessment
In order to examine, in a given case, whether use of the 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).
In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors time, place, nature and extent of use as regards commemorative coins.
However, it follows from the above that the EUTM proprietor has clearly failed to prove genuine use for all the remaining goods and services. The submitted evidence is not particularly extensive and exclusively relates to commemorative coins.
For the sake of completeness it is noted that the proprietor’s argument that evidence of use was provided for the most important goods and services merely as a fall-back position, cannot have any impact on the assessment in the present case where the EUTM proprietor does not even claim to have used the EUTM for the remaining contested goods or services, but only argues that use for commemorative coins also constitutes use for these goods and services.
Conclusion
It follows from the above that the EUTM proprietor has proven genuine use for commemorative coins in Class 14; therefore, the application is not successful in this respect. The EUTM remains on the register for these goods as well as for all the uncontested goods and services.
However, the EUTM proprietor has not proven genuine use of the EUTM for any of the remaining contested goods and services. As a result, the application for revocation is successful and the EUTM must be revoked for all the contested goods and services as listed the section ‘Reasons’ above, except for commemorative coins in Class 14.
According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 19/12/2016.
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(3) 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Cancellation Division
Denitza STOYANOVA-VALCHANOVA |
Elena NICOLÁS GÓMEZ |
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.
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