CANCELLATION DIVISION
CANCELLATION No C 14 619 (REVOCATION)
Promag S.A., Romana Maya 11, 61-371 Poznań, Poland (applicant), represented by Jarzynka I Wspólnicy Kancelaria Prawno-Patentowa, ul. Słomińskiego 19/522, 00-195 Warszawa, Poland (professional representative)
a g a i n s t
Etex
Building Performance GmbH,
Scheifenkamp 16, Ratingen, Germany (EUTM proprietor), represented by
Von
Boetticher Rechtsanwälte Partnerschaftsgesellschaft mbB,
Oranienstr. 164, 10969 Berlin, Germany (professional
representative).
On
16/06/2021, the Cancellation Division takes the following
DECISION
1. |
The application for revocation is partially upheld. |
3. |
The European Union trade mark remains registered for all the remaining goods, namely:
Class 1: Adhesives for industrial purposes.
Class 3: Hand-washing pastes.
Class 6: Machine and cloakroom lockers; Tool trolleys; Cutting-off wheels, material containers; Transport containers.
Class 7: Machine coupling and transmission components (except for land vehicles); Drill chucks; Elevating apparatus.
Class 8: Drilling, milling and clamping tools.
Class 9: Optical and measuring apparatus and instruments; Accident protection apparatus for workers, Protective masks, Clothing for protection against accidents; Electric cables and Cable joints of metal.
Class 10: Ear plugs [ear protection devices]; Hearing protection devices.
Class 11: Apparatus for lighting.
Class 12: Human powered trolleys and carts; Sack trucks, Handling carts, Wheeled dolly trolleys, Table trolleys; Sack trucks; Cleaning trolleys; Parts of trucks.
Class 16: Stationery; adhesives for stationery or household purposes; Office requisites (except furniture).
Class 17: Packing, stopping and insulating materials.
Class 20: Containers and closures therefor (included in class 20) of plastics and dividers (included in class 20) of plastics.
Class 21: Articles for cleaning purposes; steelwool.
Class 25: Clothes and footwear. |
4. |
Each party bears its own costs.
|
On
15/03/2017, the applicant filed a request for revocation of European
Union trade mark No 932 202
(figurative mark), (the EUTM). The request is directed against all
the goods and services covered by the EUTM, namely:
Class 1: Adhesives for industrial purposes.
Class 3: Hand-washing pastes.
Class 6: Common metals and their alloys; Transportable buildings of metal; Materials of metal for railway tracks; Construction site safety devices and Fencing; Machine and cloakroom lockers; Tool trolleys; Cutting-off wheels, material containers; Transport containers; Oil drainage containers of metal.
Class 7: Machines for processing metal, wood and plastics, machines for the chemical industry, agriculture, mining, textile machines, machines for the beverages industry, construction machines, packing machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements (so far as included in class7); Incubators for eggs; electrically powered tools and machines; Pneumatic tools and machine tools; Drill chucks; Elevating apparatus.
Class 8: Drilling, milling and clamping tools.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; Electric apparatus and instruments (included in class 9); Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines and data-processing equipment; Fire-extinguishing apparatus; Accident protection apparatus for workers, Protective masks, Head protection, Clothing for protection against accidents; Electric cables and Cable joints of metal.
Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Ear plugs [ear protection devices]; Hearing protection devices; Cases fitted for use by surgeons and doctors.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Ash pits for furnaces; Filters [parts of household or industrial installations]; Filters for air conditioning; Gas cleaners and purifiers; Guard devices for lighting; Hangings for lamps; Lamp casings; Lamp chimneys; Lamp glasses; Hangings for lights; Lamp reflectors; Lamp shades; Lampshade holders; Level controlling valves in tanks; Light diffusers; Igniters; Oil-scrubbing apparatus; Regulating and safety accessories for gas apparatus; Sockets for electric lights; Welding lights.
Class 12: Vehicles; Apparatus for locomotion by land, air or water; Workshop vans, Sack trucks, Handling carts, Wheeled dolly trolleys, Table trolleys; Axle journals; Axles for vehicles; Cleaning trolleys; Sack trucks; Tipping apparatus, parts of trucks and waggons; Wheelbarrows.
Class 14: Precious metals and their alloys and goods of precious metals or coated therewith, included in class 14; Jewellery, precious stones; chronometric and horological instruments.
Class 16: Paper, cardboard and goods made from these materials (included in class 16); Printed matter; Bookbinding material; Photographs [printed]; 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.
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from rubber, gutta-percha or gum in the form of blocks, plates, rods, foils, cord or bands (all being semi-finished products); Plastics in extruded form for use in manufacture; Packing, stopping and insulating materials; Flexible pipes and fittings, not of metal.
Class 20: Mirrors, picture frames; Goods (included in class 20) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, or of plastics.
Class 21: Household or kitchen utensils and containers, included in class 21, not of precious metal or coated therewith; Combs and sponges; Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware (included in class 21).
Class 25: Clothes, headgear and footwear; Insoles; Fittings of metal for footwear; Non-slipping devices for boots and shoes; Tips for footwear.
Class 37: Building construction; Installation services; Maintenance technology.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
Aside from indicating in the revocation request of 15/03/2017 the grounds of Article 58(1)(a) EUTMR (Article 51(1)(a) EUTMR at the time of filing the application), the applicant did not put forward any particular arguments in support of its claim.
On 24/08/2017 (within the time limit), the EUTM proprietor submitted written observations and evidence of use (24 items, which will be listed and assessed further down, in the following section of the decision). The proprietor explains that the EUTM has been used by Nordwest Handel AG (the ‘Licensee’) pursuant to an exclusive license agreement, the respective company offering an extensive product range under the ‘PROMAT’ mark, with over 7,500 different goods within the EU. The proprietor details the contents of each of the 24 exhibits and concludes that the revocation application was ‘unreasonable and in bad faith and has to be rejected’. On 25/08/2017 (also within the time limit), the proprietor resubmitted part of the evidence filed the previous day (more specifically items 3 to 6 and 19 to 24, inclusive), that, on account of technical constraints, were not transmitted correctly.
The
applicant replied on 19/02/2018. It
claims that the proof of use refers to a different entity than the
EUTM proprietor, there is no evidence of the latter’s consent and
therefore the documents should not be taken into consideration, since
they originate from an entity that is not authorised to use the
contested mark. In addition, the applicant points out that the signs
shown in the evidence ‘definitely change the distinctive character
of the contested trade mark’ and therefore the proof of use does
not confirm the genuine use of the contested EUTM ‘at all’. It
moreover claims that part of the evidence is in German which is not
the language of the proceedings and consequently this evidence cannot
be taken into account. The applicant further individually assesses
and challenges each item of evidence and concludes that none of the
exhibits, assessed independently or as a whole, contains indications
of time, place, scope and nature of use of the EUTM sufficient to
recognise its genuine use. The applicant’s observations were
accompanied by a copy of the certificate of registration of the
proprietor’s EUTM No 15 746 506
.
In the applicant’s view, the registration of this mark would
further confirm that the EUTM proprietor itself acknowledged that the
signs shown in the evidence of use are different from the contested
EUTM.
On 20/02/2018, the applicant wrote again and requested that the revocation takes effect ‘at the earliest possible date, namely 06/03/2015’. It explained that the parties are involved in pending proceedings before the Polish Patent Office, the contested EUTM being the base of a request for the invalidation of the applicant’s national trade mark No R.274 499 ‘PROMAG’ and therefore it has a legal interest in the revocation of the EUTM with said date.
The proprietor submitted its rejoinder on 28/06/2018. In essence, it rebuts, one by one, the applicant’s claims and submits additional evidence (items 25 to 33, which will be listed and assessed further down in the decision).
The parties had several further exchanges of observations (the applicant wrote on 05/11/2018, 06/06/2019 and 18/11/2020 respectively, and the EUTM proprietor on 14/03/2019, 08/07/2020 and 12/01/2021, respectively).
The applicant essentially maintains that the earlier date of 06/03/2015 is justified, that the contested EUTM ‘was never genuinely used’ and that therefore it should be revoked. In addition, with each new set of observations the applicant continues to highlight other aspects that in its view would constitute further flaws of the evidence. The applicant also disputes the additional evidence filed by the EUTM proprietor in response to previous claims put forward by the applicant. Inter alia, the applicant points out that all the documents show activities limited to the territory of Germany and consequently use in the EU is not demonstrated. It argues that, even assuming the evidence refers to the contested mark, in any case it relates only to a minor part of the registered goods and services. The applicant underlines that the language of the proceedings is English and the proof of use does not comply with the rules of procedure before the EUIPO. It claims that the submitted English translation of one catalogue1 should also be disregarded since there is no further evidence that the catalogue was ever made public. The applicant also disputes the veracity of the invoices on the grounds that they do not show the name of the purchaser and therefore would not reveal real sales.
In turn, the EUTM proprietor contends that it submitted an extensive amount of evidence (more than 20.000 pages) which shows the genuine use of the contested EUTM. It refutes the applicant’s claims as to the insufficiency of the evidence and objects to the assumption that a translation for any of the documents in items 1 to 35 would be necessary. The proprietor further argues that when asking for a translation of the evidence, the Office is required to balance the interests of both parties and it appears that the applicant’s request, in view of the self-explanatory character of the evidence, is exaggerated and abusive. The proprietor contends that the applicant specifically referred to individual contents of the evidence (inter alia, invoices and catalogues) without the need for a translation. Therefore, the applicant’s observations would show that the content of the documents was clear and no translation was necessary. On 14/03/2019, the proprietor made available further additional evidence (items 34 and 35, which will be listed and assessed further down in the decision). On 08/07/2020 and in reply to the Office’s explicit request to submit translations of the evidence of use, the proprietor filed English translations of part of the evidence (items 36 to 38).
The Cancellation Division will detail and assess further down below the specific arguments of the parties that are relevant for the outcome of the present case.
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). 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 Rule 40(5) Commission Regulation (EC) No 2868/95 in conjunction with Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), 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 05/03/2010. The revocation request was filed on 15/03/2017. 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 15/03/2012 until 14/03/2017 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.
On 24/08/2017 the EUTM proprietor filed evidence as proof of use, part of which was resubmitted on 25/08/2017. On 28/06/2018 and 14/03/2019, respectively the proprietor made available additional evidence. Finally, on 08/07/2020, the proprietor submitted English translations of part of the evidence previously filed. As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already available to the public, for example on the website of the Licensee.
Evidence filed on 24/08/2017 (part of which was resubmitted on 25/08/2017)
Item 1:
Printouts
from the website www.nordwest-promat.com
(with a copyright notice in 2017). The documents are in German and
give an overview of the ‘PROMAT’ products range (inter alia, wire
strippers,
adapters,
pliers, saws, drills, axial tool holders, brushes, diamond cutting
discs, tool boxes, footwear articles, pilot jackets, overalls,
respirator masks, gloves, cream, liquid soap, marking-spray, colour
spray, aluminium spray, silicone, primer, aluminium boxes, furniture
articles, such as office chairs etc.).
The sign
is depicted at the left upper corner of each document and can also
be seen on some of the goods (such as gloves,
footwear, cream, soap, sprays, silicone, primer, aluminium boxes,
diamond cutting discs, etc).
Items 2 to 6:
Digital
print file versions of the Licensee’s annual product catalogues
‘Tool Technology’ (‘Werkzeugtechnik’)
2012/2013, 2013/2014, 2014/2015, 2015/2016 and 2016/2017. The
documents are in German and display, inter alia, a wide array of
‘PROMAT’ goods, ranging from numerous (hand-operated)
tools/implements
and parts
thereof
(drills,
deburrers, conical sheet metal bits, hammers, counterbores, machine
reamers, screwdrivers, wrenches, tool extensions, cutters, mills,
pliers, saws, saw blades, files, grinders, brushes, grinding sleeves,
grinding wheels, polishing discs, shovels, helical ribbon mixers,
etc.),
measuring
devices/instruments
(gauges,
angles,
digital depth calliper gauges, micrometres,
etc.),
optical
devices/enhancers (inspection
mirrors, reading magnifiers),
lighting
devices (LED
clip lights, LED flashlights),
lifting
or transporting
devices and
parts
thereof
(table/dolly
trolleys, platform trolleys, lifting trucks, pallet trucks, spare
wheels, chain hoists)
to clothing
articles
(pilot
jackets, softshell pilot jackets, fleece jackets, (soft shell)
jackets, 3-in-1 jackets, parkas, pants, dungarees),
footwear
(safety
boots,
safety shoes),
protective
equipment
(protective
gloves, work gloves, protective masks, ear protection devices, ear
plugs, protective goggles/glasses),
stationery
supplies/office requisites (labels,
staples, staplers)
and various
others
goods
(for
example, work
benches and
parts
thereof, workshop trolleys, tool/side cabinets and
other storage
furniture items and
parts
thereof, aluminium boxes, transport and stacking containers made of
polypropylene, cable reels, instant/spray/high-performace adhesives,
universal binders, petroleum, acetone and other chemical products,
car shampoo, silicone sprays, primers, hybrid polymers,
gluing/bonding products, adhesives, hand cream, cream soap,
handwashing pastes, etc.).
The evidence shows the signs
,
/
,
,
,
,
,
,
.
The EUTM proprietor informs that the catalogues were used as print
versions in the relevant time frame within the German-speaking
countries in the EU, inter alia, Germany and Austria.
Item 7: Selection of invoices (in German) issued by several printing companies between 2012 and 2016 and addressed to the Licensee in relation to ‘Tool Technology’ (‘Werkzeugtechnik’) catalogues 2012, D 2012, 2013/14, D 2013, 2014/15, D 2014/2015, 2015, D 2015/16 and 2016/17. The documents display, inter alia, the number of copies for the respective catalogue and the printing costs.
Item 8:
Two
booklets (‘POS-MODULE
Eigenmarken’
and ‘POS-MODULE
PROMAT’)
from the Licensee, dated in 2012 and 2015, respectively (documents in
German). The evidence shows, inter alia, pictures of displays with a
wide range of ‘PROMAT’ (
)
goods (for example, wrenches,
hammers, diamond tools, brushes, screwdrivers, tool boxes, saws,
drilling tools, axes, shovels, rakes, spades, sandpaper, pliers,
cutting tools, grinding tools, sockets bits, etc.).
There are a number of 34 modules dedicated to ‘PROMAT’ goods in
the 2012 booklet and a number of 37 modules in the 2015 booklet. The
proprietor explains that the booklets have been distributed to the
Licensee’s retail customers to show how ‘PROMAT’ products
should be presented at the point of sale in retail stores.
Items 9 to 14:
Selection
of photographs taken (according to the proprietor) in retail stores
in Germany in 2012, 2014 and 2015. The documents bear an internal
indication of the date and place where the respective photograph was
allegedly taken and show ‘PROMAT’ (
)
goods available for sale, inter alia, hammers,
screwdrivers, cutting tools, brushes, wrenches, tool boxes, etc.
Item 15: Selection of partly redacted invoices, issued by the Licensee between November 2013 and March 2017 (documents in German, English, French or Dutch). The documents are addressed to customers located in several Member States of the EU (Germany, Hungary, Belgium, Luxembourg, the Netherlands, Romania, France) in relation to the sale of, inter alia, goods identified by the sign ‘PROMAT’. The invoices specify, among other things, the product codes/article numbers of the respective goods which can be traced back in the ‘Tool Technology’ catalogues submitted as Items 2 to 6. According to the English translation made available by the proprietor on 08/07/2020 (see Item 37 further down below), the goods itemised in the invoices that were marketed under the sign ‘PROMAT’ are in the main: slot/flat/tile/point/masonry/firmer/joint chisels, pin punches, metal circular saw blades, fine saws, water levels, aluminium boxes, respirator masks, pocket tape measures, helical ribbon mixers, multifunction ratchet box wrenches, lever hoists, pallet trucks, demolition blades, cutting discs inox, milling pins, stackable transport containers, double open-end spanner sets, double-ended ring spanner sets, combination spanner sets, quick clamp drill chucks, circular metal-cutting saw blades, hexagon socket wrenches, pocket calliper gauges, keyhole saws, twist drills, machine taps, tool cabinets, double grinders, double deburrers, dies, needle-nose pliers, side cutters, universal pliers, circlip pliers sets, pin punch sets, manual blind riveters, precision engineer’s screwdrivers sets, screwdrivers (sets), jigsaw blades, eccentric sanding discs, wire brushes, hammer drill bit multi-cutters, engineer’s triangular files, file handles, double-ended ring spanners, engineer’s taper square files, cross peen hammers, plastic hammers, LED flashlights, countersinks, utility knives, cleaning wipes, tool trolleys, grinding wheels, sack trucks, blind rivet assortments, digital angle sensors, compact non-woven discs SCD-finish, sockets bits, ratchet combination spanner sets, precision mechanic vices, quick-clamp drill chucks, tapered mandrels, serrated grinders, round brushes, deep-hole drills, reciprocating saw blades, tongue/stucco/floor trowels, trowels, adhesive spreading trowels, tile washing sets, hooked blades, offset screwdrivers sets, spreaders, professional tape measures, spirit levels, carpenter’s squares, plasterer spatulas, chalk for chalk line, wood axes, hatchets, tool/accessories cabinets, ear muffs, replacement plugs, micrometres sets, feeler gauges, magnetic measuring stands, steel squares, angle finders, threading tool sets, crimping pliers, craft knives, keyless chucks, shelf containers, roughening discs, fan-type discs, sanitary/building silicones, penetrating oil sprays, wire end ferrule pliers, cable shears, stripping blades, four-way wheel braces, satin rings, brackets, metal empty cassettes, adapters, replacement blades, copper hammers, soft faced hammers, hand tackers, fine wire clips, flat wire clips, nails, power saw blades, hacksaw blades, precision circular saw blades, chalk line reels, vacuum lifters, bench grinder discs, platform trolleys, lever reversible ratchets, sets of hand taps, grinding cloth rolls, extensions, pipe cutters, adjustable spanners, centre punches, water pump pliers, file brushes, engineer’s semi-circular/round files, centre drill bits, sanding discs, workshop rulers, hand washing paste, counterbore sets, counterbores, key file sets, tool modules, welders’ gloves, thread-lockers, wash benzines, metal saw frames, end mills, manual blind rivet setting tools, magnetic storage trays, all-steel screw clamps, Allen keys, tool/side cabinets, rubber hammers, steel rules, flange squares, semi-open storage bins, bit-boxes, workshop callipers, combi pilot jackets, torque spanners, marking gauges, stackers, panel dollies, table trolleys, work platforms, platform trolleys, gun foam, instant adhesives, multi-purpose sprays, rapid industrial cleaner, car shampoo, acetone, hand cleaning cloths, circlip pliers sets, screw extractor sets, impact socket sets, slotted screwdrivers, telescopic magnetic pick-up tools, keychain inserts, non-woven abrasive fabric rolls, gloves, sledge/roofing hammers, sash saws, reducing sleeves, tightening bolts, backing pads, adhesive grinding discs, machine forester drills, mobile workbenches.
Item 16: Article numbers indexes from the ‘Tool Technology’ catalogues submitted as Items 2 to 6.
Item 17: Internal document containing, for each of the Classes 1, 3, 6, 7, 8, 9, 10, 11, 12, 16, 17, 20, 21 and 25, respectively, a list of articles’ numbers for ‘PROMAT’ goods as well as a table displaying the following information: (i) the list of the registered goods in the respective class, (ii) the ‘PROMAT’ goods, in German and English, (iii) the exemplary articles’ numbers, (iv) the page, chapter and year from the exemplary ‘Tool Technology’ catalogues where the respect product can be found and, in some instances, also (v) the number and year of exemplary invoices relating to the respective goods.
Item 18: Internal document containing an overview of net turnovers achieved from the sale of ‘PROMAT’ goods in the EU. The data is given for each of the periods March 2012 to March 2013, March 2013 to March 2014, March 2014 to March 2015, March 2015 to March 2016, both separately for each of the Classes 1, 3, 6, 7, 8, 9, 10, 11, 12, 16, 17, 20, 21 and 25, respectively, and in total.
Items 19 and
20:
The
Licensee’s product catalogues ‘Workshop’ (‘Werkstatt’)
2012 and 2015 (documents in German, digital print files versions).
The evidence shows, inter alia, various ‘PROMAT’ goods
(transporting
devices such
as platform
trolleys, table trolleys, cases, tool boxes/cases,
transport/stackable polypropylene containers, lifting devices such
as lever
hoists, lift trucks, lift table trolleys, workshop cranes (foldable),
aluminium boxes, shelf cabinets (with transparent storage boxes),
transparent storage boxes/cases, storage bins/cases, storage shelving
systems, tool/side cabinets, (sliding doors) storage cabinets,
workshop/tool trolleys, (hexagonal) workbenches, cable reels,
computer cabinets, etc.)
and specifies, among other things (such as the products’
characteristics), the retail prices in EUR. The EUTM proprietor
informs that the catalogues were used as print versions in the
relevant time frame within the German-speaking countries in the EU,
inter alia, Germany and Austria. The evidence shows the signs
,
/
,
.
Items 21 to 23:
The
Licensee’s product catalogues ‘Precision Tools’
(‘Präzisionswerkzeuge’)
2012/2013, 2014/2015 and 2016/2017 (digital print file versions). The
documents are in German and show, inter alia, a wide range of goods
identified by the sign ‘PROMAT’ (
/
/
/
),
in the main various tools/implements and parts thereof, such as
drills,
gauges, angles, magnifiers, screwdrivers, milling tools, aluminium
levels, pocket tape measures, folding rulers, precision magnifiers,
rulers, digital protractors, digital angle sensors, surface roughness
stand comparers, dial gauges, (digital) micro-meters, devices for
height marking, etc.
The EUTM proprietor informs that the catalogues were used as print
versions in the relevant time frame within the German-speaking
countries in the EU, inter alia, Germany and Austria.
Item 24: Affidavit given on 24/08/2017 by Mr B.D., the Licensee’s CEO. The document states that pursuant to a license agreement with Promat GmbH, the Licensee has been using the contested EUTM since 1999. According to the Affidavit, one of the Licensee’s core business is the manufacture and sale of, among others, tools, machine tools, workshop and warehouse equipment, transport equipment and work safety materials under the mark ‘PROMAT’. Further information is provided on the turnover achieved in the EU from the sale of ‘PROMAT’ goods for each year of the relevant period. Mr B.D. also confirms that the article numbers presented in Item 17 correspond with products branded and marketed with the ‘PROMAT’ sign.
Evidence filed on 28/06/2018
Item 25: TMView printout detailing the particulars of the applicant’s Polish trade mark registration No R.274 499.
Item 26: License agreement (partly redacted) concluded in August 2016 by Promat GmbH and the Licensee and having for object, inter alia, the contested EUTM (document in German with a partial English translation). The agreement contains, inter alia, a list of the licensed goods, divided in the following categories: tool technology, storage and operating equipment, cleaning technology and chemical/technical products.
Item 27: Printouts retrieved via the digital archive Wayback Machine and showing the website www.nordwest-promat.com at different dates during the relevant period, for example August 2015 or December 2016.
Item 28: Excerpts from the documents filed as Items 2 to 6 aimed at demonstrating that the provided digital print file versions of the catalogues are identical to the print versions.
Item 29: Photographs of the printed catalogues ‘Tool Technology’ (‘Werkzeugtechnik’) 2012/2013, 2013/2014, 2014/2015, 2015/2016 and 2016/2017.
Item 30: The meta data (‘Exif data’ showing the original recording dates) of the photographs filed as Items 9 to 14, confirming that the recording dates indicated by the proprietor correspond with the recording dates of the original photo files.
Item 31: Documents relating to the product slot chisel (‘Schlitzmeißel’), article No 400812160 and more specifically: (i) copy of an invoice of November 2013 (already submitted as Item 15), relating to the sale of, inter alia, said product, (ii) articles number index from the Tool Technology catalogue (submitted as Item 2) and (iii) the relevant page from said catalogue where the product is depicted. The evidence is aimed at rebutting the applicant’s claims that it could not find the goods referenced in the invoices in the catalogues submitted.
Item 32: Excerpt from the Tool Technology catalogue 2011/2012 relating to the product angle grinding mop (‘Winkelschleifmop’). The evidence is aimed at rebutting the applicant’s claims in relation to said good.
Item 33: Photographs of the printed catalogues ‘Workshop’ (‘Werkstatt’) 2012 and 2015 and ‘Precision Tools’ (‘Präzisionswerkzeuge’) 2012/2013, 2014/2015 and 2016/2017, including the imprint and table of contents.
Evidence filed on 14/03/2019
Item 34: Printout from the Commercial Register B, District Court Düsseldorf providing information on the proprietor’s company (document in German with certified English translation). The evidence was retrieved on 03/04/2018 and shows, inter alia, the change of name from Promat GmbH to Etex Building Performance GmbH, with a date of entry in the register of 03/04/2018.
Item 35: Internal document (around 34 pages) relating to ‘PROMAT’ goods in Classes 6, 9, 12 and 16 for the applicant claimed that no evidence of use was submitted by the EUTM proprietor. The data is given in the form of a table displaying the following information: (i) the class number, (ii) the respective goods, in English and German, (iii) the item of evidence where the good is mentioned, (iv) the German and respectively English name of the ‘PROMAT’ products, (v) the exemplary article number, (vi) the exemplary Tool Technology catalogue display (page, chapter, year) and (vii) the attachment number (numbered from A1 to A31). The table is accompanied by the respective 31 attachments, consisting of extracts from the catalogue where the goods concerned can be seen.
English translations filed on 08/07/2020
Item 36: Partial English translation of the invoices filed as Item 7.
Item 37: Partial English translation of the invoices filed as Item 15.
Item 38: English translation of about 7.100 ‘PROMAT’ goods from the ‘Tool Technology’ catalogue 2015/2016 filed as Item 5. The information is given in the form of a table (around 339 pages) containing the article number, the chapter/page number where the article can be found, the product’s name in German, the translation of the product’s name in English, additional information on the product and the indication of the trade mark (‘PROMAT’).
1. On the applicant’s request for an earlier date
In the application for revocation of 15/03/2017, the applicant limited itself to indicating the grounds of Article 51(1)(a) EUTMR (now Article 58(1)(a) EUTMR), without putting forward any particular arguments or reasoned statement in support thereof. However, in its further submissions of 20/02/2018, the applicant requested that the revocation takes effect at the earlier possible date, namely 06/03/2015 and adduced arguments in support of its alleged legitimate legal interest in this respect (see above under the Summary of the Parties’ Arguments section).
The Cancellation Division notes the followings.
According to Article 62(1) EUTMR, an earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. However, an earlier effective date of revocation has to be requested at the moment the application for revocation is filed. Any later requests to that effect are not admissible as they extend the scope of the initial application.
The revocation proceedings were initiated by the cancellation applicant that determined the subject matter of the proceedings in the request for revocation in compliance with the dispositive principle. As regards the date from which the revocation should take effect, the cancellation applicant did not submit any specific date in its application. Therefore, and in the absence of any specific earlier date requested by the applicant, the revocation has to take effect from the date of the application for revocation, in compliance with Article 62(1) EUTMR.
The request made by the applicant (almost one year later) to have the contested EUTM revoked before the date of the application for revocation is an entirely new request that would retroactively change the subject matter of the current proceedings. The Cancellation Division is not entitled to allow a broadening of the scope of the cancellation request. Therefore, the applicant’s request for an earlier date is rejected as inadmissible.
The Cancellation Division will consider in its further examination of the application, the date when the revocation application was filed, which is the date presumed by the legislator in the absence of a specific, precise and duly submitted request for an earlier date.
2. On the application being filed in bad-faith
As shown above in the Summary of the Parties’ Arguments section, the EUTM proprietor contends that the revocation application has to be rejected since it was ‘unreasonable and in bad faith’.
Article 63(1)(a) EUTMR grants all natural and legal persons the right to file an application for revocation on the basis of Article 58 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision. In the present case, the EUTM proprietor did not provide convincing evidence of abuse of law from the part of the applicant which could call upon application of higher principles of law and question the admissibility of the application for revocation.
3. On the additional evidence of 28/06/2018 and 14/03/2019
On 28/06/2018 and 14/03/2019, respectively, after the expiry of the time limit, the EUTM proprietor submitted additional evidence.
Article 82 EUTMDR expressly states that Article 19 EUTMDR does not apply to requests for proof of use made before 01/10/2017. Therefore, Regulation (EC) No 2868/95 has to be applied to the present case.
Even though, according to Rule 40(5) Regulation (EC) No 2868/95, the EUTM proprietor has to submit proof of use within a time limit set by the Cancellation Division, this cannot be interpreted as preventing additional evidence from being taken into account where new factors emerge (12/12/2007, T-8209;86/05, Corpo livre, EU:T:2007:379, § 50). The Office has to exercise the discretion conferred on it by Article 95(2) EUTMR (18/07/2013, C-8209;621/11 P, Fishbone, EU:C:2013:484, § 30).
The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C-8209;621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the EUTM proprietor has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C-8209;621/11 P, Fishbone, EU:C:2013:484, § 36).
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. Moreover, 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-8209;415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-8209;621/11 P, Fishbone, EU:C:2013:484, § 36). It is also noted that the additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence 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 therefore decides to take into account the additional evidence submitted on 28/06/2018 and 14/03/2019, respectively.
4. On the use by a third party
In its observations of 19/02/2018, the applicant contested 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 (see Summary of the Parties’ Arguments above). On 28/06/2018, with a view to prove its consent to the use of the mark, the EUTM proprietor filed a copy of the license agreement entered into with the Licensee (see Item 26). In its further submissions of 05/11/2018, the applicant showed that the license agreement ‘seems to meet the requirements to prove’ the proprietor’s consent. It however further argued that the name of the proprietor is different from the one specified in the agreement (i.e. Promat GmbH) and there is no evidence ‘confirming that Etex Building Performance GmbH has confirmed the continuous use of the PROMAT trade mark’. The factual situation contained in the agreement would, therefore, have nothing to do with the current situation of the contested EUTM and consequently the proprietor did not prove that the genuine use of the mark was carried out by the Licensee. On 14/03/2019, the EUTM proprietor explained that its company changed its name from Promat GmbH to Etex Building Performance GmbH and filed in support thereof an extract from the German Commercial Register (see Item 34). In response, the applicant admitted that the document shows the change of name of the proprietor from Promat GmbH to Etex Building Performance GmbH. Nevertheless, it argued that said change took place on 03/04/2018 (that is after the relevant period for proving use) and as such it does not affect ‘the present state of affairs’.
The applicant’s arguments cannot prosper for the reasons given hereinbelow.
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. In this regard, it is recalled firstly that where an EUTM proprietor submits evidence of use of its mark by a third party this is an implicit indication that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). In the present case, even without the licensee agreement, the proprietor’s claim and the fact that it was able to present documents, such as invoices showing use of the mark by the Licensee, sufficiently prove that the use was made with the proprietor’s consent. The EUTM proprietor would not have access to documents of such private nature as invoices if the Licensee did not act in agreement with the proprietor. Moreover, in the present case the proprietor made available a license agreement from which it is clear that the Licensee has been using the ‘PROMAT’ sign for decades and that the right to use the mark was explicitly granted by the company Promat GmbH. Finally, as regards the change of name of the proprietor, the Cancellation Division fails to see the reasoning behind the applicant’s claims. The documents on file demonstrate that the licensee agreement was concluded by the proprietor’s company, which later on changed its name. There is no reason to doubt the veracity of the proprietor’s claims or the accuracy or validity of the licensee agreement. In view of the foregoing, the applicant’s claims have to be cast aside as unfounded.
Therefore and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by the Licensee was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.
5. On the translation of the evidence
In its observations of 19/02/2018, the applicant argues that the EUTM proprietor did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration.
It is recalled at the outset that the EUTM proprietor is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), applicable by analogy to cancellation proceedings).
Furthermore, and as the proprietor rightfully pointed out, most of the evidence is self-explanatory and does not require a translation. This is for example the case of the catalogues (Items 2 to 6 and 19 to 23) which contain (in addition to textual elements, admittedly in the German language) also pictures of the respective ‘PROMAT’ goods and their articles numbers/product codes. Moreover, the EUTM proprietor made available an internal document (Item 17) which shows, inter alia, the English translation of ‘PROMAT’ goods, the exemplary articles numbers, the catalogues and, in some instances, the exemplary invoice numbers where said products can be found.
In addition, on 08/07/2020 and in reply to the Office’s explicit request to submit English translations of the evidence of use, the EUTM proprietor further filed partial translations of some parts of the evidence (Items 36 to 38).
However, in its further observations of 18/11/2020 the applicant continued to insist on the fact that the language of the proceedings is English and that the invoices and catalogues are in German, they cannot be understood by someone who does not speak German and therefore they cannot be considered as ‘self-explanatory’.
As explained above, on 08/07/2020, the EUTM proprietor filed partial English translations of the invoices and of a large number of ‘PROMAT’ goods from the ‘Tool Technology’ catalogue 2015/2016. In addition, the remaining documents that are in German are either self-explanatory insofar as the sign in question and/or photographs of goods are clearly displayed on the documents, or can be understood in conjunction with other parts of the evidence and/or the EUTM proprietor’s observations filed together with the evidence and that contain a partial translation, or at least a description of the evidence. The Cancellation Division considers, therefore, that the applicant’s claims are manifestly unfounded and have to be set aside.
6. On the examination of the evidence
As stated above, in the Summary of the Parties’ Arguments section, the applicant individually assesses and challenges each of the items of evidence filed by the proprietor and argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods and services for which the EUTM is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
ASSESSMENT OF GENUINE USE – FACTORS
The evidence must show genuine use of the EUTM within the relevant period (15/03/2012 until 14/03/2017 and in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).
As regards the time of use, it is noted that vast majority of the evidence is dated within or can safely be attributed to relate to the relevant time frame. The applicant’s claims that part of the evidence is undated (such as the extracts in Item 1) or bears an indication of the date inserted by the EUTM proprietor (for instance the photographs in Items 9 to 14) and therefore it cannot be taken into account, cannot succeed. Firstly, it clearly follows from case-law that images of products/products packaging may serve to show how the mark was used in relation to the relevant goods or to provide information regarding the type of goods the proprietor manufactures, and therefore cannot be ignored in the overall evaluation of the evidence (13/02/2015, T-287/13, HUSKY, EU:T:2015:99, § 67-68). Secondly, and with particular reference to the documents in Item 1, the respective extracts contain a copyright mention in 2017, which places them at least partially within the relevant period or at the very least close in time to its end. Finally, the EUTM proprietor also submitted additional evidence which shows the Licensee’s website within the relevant time frame (Item 27) or the dates when the photographs were taken (Item 30) and which thus supports the veracity of the proprietor’s initial claims. For the sake of completeness and as regards the minor part of the evidence which is dated outside of the relevant period, admittedly, documents referring to use outside the relevant period are generally disregarded unless they contain conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the mark was used during the relevant period and the proprietor’s real intentions at the time (27/01/2004, C 259/02, Laboratoire de la mer, EU:C:2004:50). This applies to the case at hand, where, as already mentioned, the vast majority of the evidence is dated within the relevant period and the documents dated outside merely evidence the long standing use of the mark.
The documents submitted by the EUTM proprietor (in particular the invoices in Item 15 and also the catalogues in Items 2 to 6 and 19 to 23 or the photographs in Items 9 to 14 above) show that the place of use is the European Union. This can be inferred from the language of the documents (German, English, French or Dutch), the currency and/or the addresses of customers located in several Member States, as specified in the invoices (Germany, Hungary, Belgium, Luxembourg, the Netherlands, Romania, France). The applicant’s claims that there is no evidence in the materials presented that ‘could indicate the genuine use outside the German borders’ is manifestly unfounded, considering that the invoices in Item 15 clearly show sales of ‘PROMAT’ goods to customers located not only in Germany but also in other EU Member States. In any event, the Cancellation Division finds it useful to recall that in accordance with the principles laid down by the judgment of 19 December 2012, Leno Merken (C 149/11, EU:C:2012:816), the Court has held on numerous occasions that use of an EUTM in a single Member State or even in a single city in a Member State is sufficient to satisfy the criterion of territorial scope of use. For example in a recent judgement (07/11/2019, T‑380/18, INTAS / INDAS (fig.) et al., EU:T:2019:782, § 80, 81, 84), the Court held that for use of an EU trade mark to be deemed genuine, it is not required that that mark be used in a substantial part of the European Union. Furthermore, the possibility that the mark in question may have been used in the territory of a single Member State must not be ruled out, since the borders of the Member States must be disregarded and the characteristics of the goods or services concerned must be taken into account. In other words, as Advocate General Sharpston stated in the Opinion she gave in Leno Merken (C‑149/11, EU:C:2012:422), whether an EU trade mark has been used in one Member State or several is irrelevant. What matters is the impact of the use in the internal market: more specifically, whether it is sufficient to maintain or create market share in that market for the goods and services covered by the mark and whether it contributes to a commercially relevant presence of the goods and services in that market. Whether that use results in actual commercial success is not relevant (Opinion of Advocate General Sharpston in Leno Merken, C‑149/11, EU:C:2012:422, point 50).
Against this background, it is considered that the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use and that it relates to the relevant territory.
Nature of use: Use as a trade mark and Use of the mark 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/or services of different providers.
In the present case, the evidence shows that the contested EUTM was used as a trade mark. The evidence filed by the EUTM proprietor shows a link between some of the registered goods (see more on this further down below) and the use of the mark and that the EUTM was used in accordance with its essential function, which is to guarantee the commercial origin of the goods for which it is, inter alia, registered.
‘Nature of use’ in the context of Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation) also 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
contested EUTM is registered as a figurative mark
.
It was used as a word mark (in the description of goods in invoices
or in catalogues) or in a figurative form, in most instances
accompanied by additional elements (as shown above when listing the
evidence).
One of the main criticisms of the applicant relates to the evidence not showing actual use of the registered mark, but of different signs. It puts forward that the additional elements added to the registered mark ‘definitely change the distinctive character’. The applicant analyses in great detail each of the used forms and contends in essence that: (i) The figurative element of the square is distinctive, original and catches the attention instantly; moreover, it is equally dominant as the word element ‘PROMAT’ because of its size and position and it is higher than all the letters and therefore it dominates over the word; (ii) Some of the signs are in colour, which renders the used forms different from the contested mark; (iii) The additional words, ‘Qualitätserzeugnis’, ‘Sportline’, ‘Safeline’ alter the distinctive character of the mark, since according to EUIPO’s practice difference in terms of words or even letters is, in principle, a change in the distinctive character of the mark; (iv) The addition of the line transforms the proportions of the sign and gives it another visual meaning and (v) The proprietor itself acknowledged that the used forms are different from the registered EUTM since it registered the mark ‘Promat Chemicals’ (EUTM No 15 746 506). Therefore, the overall impression of the contested EUTM is, in the applicant’s opinion, different than the overall impression of the trade marks in the evidence submitted.
The Cancellation Division cannot concur with such views and is, in fact, in complete agreement with the EUTM proprietor in that the used forms do not alter the distinctive character of the mark.
The additional figurative elements of the square and line are neither original nor striking so that they are perceived beyond being a mere decoration/embellishment to the verbal element ‘PROMAT’. In other words, and contrary to what the applicant contends, the distinctiveness of the contested EUTM is derived from the word ‘PROMAT’, recognisable and perceptible in all the used forms and the element that consumers will ultimately retain and remember. As such, the presence of the respective figurative elements, even if at the beginning of the sign, is not a significant alteration of the distinctive character of the contested mark as registered. Moreover, a square and a line are basic geometrical shapes, barely endowed with the ability to indicate the commercial origin, if at all and far from being ‘original or distinctive’, as the applicant puts forward.
It is also worth noting that 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
use of colours and/or of a slightly different script is acceptable
and does not alter the distinctive character of the mark, as the word
‘PROMAT’ is clearly legible. The additional word elements
‘Qualitätserzeugnis’, ‘Sportline’ or ‘Safeline’ are not
of such a nature as to alter the distinctive character of the mark
either. Aside from being placed in a secondary position, below the
word ‘PROMAT’ and written in a smaller script, they merely inform
consumers about the nature/a characteristic/intended purpose of the
registered goods. The same is valid as regards the additional word
‘Chemicals’ (in the used form
),
which appears in the 2016/2017 ‘Tool Technology’ catalogue. The
fact that in 2016 the EUTM proprietor decided to apply for the
registration of EUTM 15 746 506
does not call into question the above and can in no way be construed
in the unrealistic way claimed by the applicant. As detailed above,
the differences between the forms in which the contested EUTM is used
and that in which it is registered do not change the distinctive
character of the mark as registered. As such the condition of genuine
use is satisfied even if the combination of all the elements from the
forms used is itself registered as a trade mark.
The
Cancellation Division has also identified in the 2016/2017 ‘Tool
Technology’ catalogue instances where the sign ‘PROMAT’ is
featured together with the sign ‘NOW’ (
/
/
,
),
in relation to goods such as adhesives,
protective glasses, earbuds/plugs, respirator masks, hearing
protections, protective gloves, (protective) footwear, clothing
items, cream soaps, hand creams, cable reels, etc..
As is apparent from the respective document (for example the mention
‘Say Goodbye Now Welcome Promat’ in section 11, pages 11/35 or
11/184), use of the respective signs together is meant to indicate
that certain goods that used to be designated by the sign ‘NOW’
are now marketed under the sign ‘PROMAT’.
Therefore, although the use of the contested mark varies and in certain items of evidence takes a different form from that registered, this does not affect distinctive character of the mark.
In view of the foregoing, it is considered that, in the context of the evidence as a whole, the documents submitted do show that the contested EUTM was used in such a way as to establish a clear link between some of the registered goods and the EUTM proprietor (through its Licensee) and in a form which does not alter its distinctive character.
Extent of use and Nature of use: use in relation to the registered goods and services
Concerning the 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).
Furthermore, it must be recalled that 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.
Moreover, use of the mark need not be quantitatively significant for it to be deemed genuine.
In the context of Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), the expression ‘nature of use’ includes, inter alia, evidence of use of the mark for the goods and/or services 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)
The evidence on file shows that the proprietor (through the Licensee) marketed/provided under the sign ‘PROMAT’ a wide array of various goods ranging from hand-operated tools/implements, adhesives, cleaning products or measuring and optical devices to lifting devices, protective equipment, stationery, lighting devices or clothing and footwear (as detailed when listing the evidence of use).
The applicant criticised the evidence essentially on the grounds that: (i) The catalogues (Items 2 to 6 and 19 to 23) are marked with commonly used symbols which indicate the respective documents are some layout versions. As such, they could not be used as printed versions and they cannot be treated as catalogues (printed or online). In addition, there is no evidence that they were made available to the German or Austrian public or that the goods in question were marketed or available in Germany or Austria; (ii) The invoices (Item 7) are in German and should not be taken into account. It is not clear if the entities issuing these documents are printing houses and no evidence was filed in this regard. It is also debateable whether the invoices refer to the catalogues, as claimed by the EUTM proprietor. The translation does not reveal any word that would allow to assume the invoices really refer to any publications that would bear the mark at issue, since no words like ‘catalogue’ or ‘publication’ appear therein. The translation only reveals the word ‘copy’ (not copies) which allows to interpret the invoices as referring to only one copy of an unknown subject; (iii) The invoices (Item 15) do not indicate the scope of the products and are in German. Moreover, they do not reveal the name of the purchaser, it is not certain if the respective companies really exist and therefore it is disputable if the invoices actually show real sales. Furthermore, the EUTM proprietor translated goods, such as respirators or ear muffs which are not accompanied by the word ‘PROMAT’. In any case, the amount of items revealed in the invoices is minor and therefore the sale of said goods is symbolic in the light of the EU market and cannot prove genuine use; (iv) The overview of net turnovers (Item 18) is a document drawn by the proprietor for the purposes of the present proceedings and the data contained therein is not proven by any commercial documents or invoices and (v) The affidavit (Item 24) has a low probative value, since it comes from the Licensee.
The applicant’s claims cannot thrive for the reasons given hereinbelow.
Firstly, it is true that the proprietor made available digital print file versions of the catalogues. Nevertheless, it also filed information on the circulation volumes of the corresponding printed versions of ‘Tool Technology’ catalogues and the related printing costs. Albeit, in view of the proprietor’s confidentiality request, the exact numbers and amounts cannot be disclosed, it suffices to say that they are noteworthy and allow for the inference that the respective documents were circulated/made available publicly. Indeed, judging from the ample number of copies in which the catalogues were printed it would be unreasonable to question that the documents were not distributed regularly and to a sufficiently wide audience. The applicant appears to dispute the invoices in Item 7, but it does not provide any coherent or relevant arguments to support its claims. There is no apparent reason to doubt that the invoices refer to the catalogues in question, having in view that they clearly specify the name of the respective catalogue and corresponding year (sometimes even with the name of the Licensee, such as for example ‘Nordwest Werkzeugtechnik 2012’ or ‘Katalog Werkzeugtechnik 2016/2017 Harcover’). In addition, part of the documents include explicit and self-explanatory references to ‘Katalog’/’Kat.’/’Basiskataloge’/’Kataloge’. It is also obvious that the invoices relate to printing and that the issuing entities are active in the media/printing field (as their very name indicates), all of the foregoing rendering the applicant’s claims in this regard even more arbitrary. It is also worth noting that in its further submissions of 28/06/2018 and in reply to the applicant’s criticism, the proprietor provided reasonable explanations as to why it opted for digital print file versions2 and made available additional evidence which shows that the provided versions are identical with the printed versions (Items 28, 29 and 33).
Secondly, the meaning of the applicant’s statements that the invoices in Item 15 do not indicate the scope of the products remains unclear. The respective invoices itemise the sale of goods identified, inter alia, by articles numbers which can be traced back in the catalogues. For the ease of reference the proprietor made available the articles numbers from the catalogues separately (Item 16). It also submitted a table (Item 17) which further serves to cross-reference the invoices with the catalogues and thus to determine the relevant products and how the mark was used on them. Moreover, it also filed English translations of the ‘PROMAT’ goods shown in the invoices in Item 15 as well as English translations of more than 7 000 ‘PROMAT’ products from the ‘Tool Technology’ catalogue 2015/2016 (Items 37 and 38). It is therefore clear that an overall assessment of the evidence allows for the conclusion that goods listed in the invoices in Item 15 were put on the market under the contested EUTM and also for the identification of their nature/type. In a similar vein, a corroborated interpretation of the invoices with the catalogues/extracts from the Licensee’s website shows that goods such as respirators or ear muffs (which may not have been accompanied by the word ‘PROMAT’ in the invoices as the applicant claims) were nonetheless marketed under the sign in question.
Thirdly, it is also worth noting that the EUTM proprietor is not under the obligation to submit detailed financial information, since the obligation incumbent to produce evidence of genuine use of a trade mark is not designed to monitor the commercial strategy of an undertaking (08/07/2004, T-334/01, ‘Hipoviton’, EU:T:2004:223). While it is true that in some cases, the invoices may not show impressive quantities, account must be taken of the fact that these documents are only samples and do not represent the total sales (which can be inferred from the non-consecutive numbering and dates of the respective documents). As for the applicant’s comments that the invoices ‘do not reveal real sales’, it must be borne in mind that invoices are commonly issued documents, relevant in trade and with tax implications. The fact that for confidentiality reasons the names of the customers were redacted does not call into question the validity of these documents. Taking into account the number of the invoices, their regularity, the territorial scope of use, the frequency and volume of use shown throughout the whole relevant period, it is deemed that actual use of the trade mark at issue took place to a sufficient extent.
Fourthly, as regards the information on turnover in Item 18 and the affidavit in Item 24, admittedly these originate from the proprietor and the Licensee, respectively, and as such they are endowed with less probative value than independent evidence. However, this data is backed up by other types of evidence (in particular invoices which show actual sales of goods by the Licensee and also catalogues which depict the wide and varied range of products labelled with the EUTM) and thus support its probative value.
Finally, the Cancellation Division recalls that the evidence cannot be evaluated in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the characteristics of the market in question. As can be seen from the catalogues, the contested EUTM is used to designate an impressive amount of goods. For example, the 2012/2013 ‘Tool Technology’ catalogue contains (see page 6) references to 10.000 ‘PROMAT’ articles and so does the ‘Precision Tools’ 2014/2015 catalogue. It is not expected from the EUTM proprietor to show use of the mark for every single item in the respective catalogues and it is neither expected from it to prove that for every single item significant quantities were sold. Indeed, it should be noted that the degree of diversification of the activities of undertakings operating in one and the same market varies. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49). This expansion or dispersion of the use of the sign on a variety of goods has to be taken into consideration according to the case-law cited (see by analogy decision of the Second Board of Appeal of 11/03/2019, R 2195/2018-2, ICEBERG (fig), para. 40).
Against this background the applicant’s claims must be cast aside as unfounded.
At this point, the Cancellation Division recalls that in order to determine whether genuine use has been shown or not, it is necessary to assess whether, by such use of the mark, the undertaking seeks to create or maintain an outlet for the goods or services in the European Union, as against those of other undertakings. That will not be the case if those goods or services do not enter into competition with goods or services offered on the market by other undertakings, that is to say if they are not — and are not intended to be — offered commercially (09/09/2011, T-289/09, Omnicare Clinical Research, EU:T:2011:452, § 67-68). Therefore, the ultimate test when assessing whether use of a mark is genuine, is whether or not the undertaking in question intends to create a commercial outlet for its goods or services, as opposed to a token use, which would only be carried out in order to preserve the trade mark rights. In the present case, it is obvious from the evidence submitted that the EUTM proprietor seeks to create a real outlet and market share for some of the goods for which the EUTM is, inter alia, registered (as these will be detailed further down below).
The Cancellation Division is therefore satisfied to establish by corroborating the invoices with the catalogues/brochures/internet printouts, that the proprietor has seriously tried to acquire a commercial position in the relevant market and to consider, based on this evidence, that the turnover figures disclosed are not improbable. Furthermore, taking into account the diversity of goods commercialised under the EUTM, the proprietor has a legitimate interest to expand in the future the range of its goods to other types of related goods complementing those that it already offers.
In addition, it is worth noting that the catalogues refer to a much wider range of goods than the ones shown in the exemplary invoices made available by the proprietor. In relation to the lack of direct sales documents in relation to these goods, the Court has found that, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (15/07/2015, T-398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). The Cancellation Division considers that such extraordinary circumstances are met in the present case. The proprietor made available a number of 10 products’ catalogues wherein an impressive number of goods are offered for sale under the sign ‘PROMAT’. For example, there are five ‘Tool Technology’ catalogues covering the entire relevant time frame, each comprising around 2000 pages. The sign ‘PROMAT’ appears next to each item and the documents state the price and article number of the respective goods. While it is true that the catalogues do not provide information on the quantity of goods actually sold by the EUTM proprietor (through the Licensee), it is necessary to take into account the fact that a very large number of items designated by the trade mark ‘PROMAT’ were offered in the catalogues all throughout the relevant period. Those factors (together with the degree of diversification of the proprietor’s activities and account also taken of the exemplary invoices submitted) support the conclusion, in the context of a global assessment, that the use to which the mark was put was genuine. In other words, the Cancellation Division will also acknowledge a genuine use of the mark for some specific goods that appear in the catalogues but for which no invoices were filed.
Registered goods in Classes 1, 3 and 8
There is evidence of use (invoices and/or catalogues) for goods that either appear as such in the specification of the mark (for instance hand washing paste in Class 3) or that fall under broad categories for which the EUTM is registered and are thus sufficient to secure genuine use for the respective broad category in its entirety (for example instant adhesive for, among others, use in the electric/electronic industry which falls under adhesives for industrial purposes in Class 1 or various hand-operated tools which are covered by drilling, milling and clamping tools in Class 8).
Therefore, taking into account the evidence of use filed by the EUTM proprietor and bearing in mind that the EUTM proprietor is not required to prove use of all the conceivable variations of the category of goods and also the principles set out in the above mentioned Aladin judgement and in particular the legitimate interest of the proprietor in being able in the future to extend his range of goods, within the confines of the terms describing the goods for which the trade mark was registered, the Cancellation Division deems that genuine use of the trade mark must be established for all the registered goods in these three classes, namely for: Adhesives for industrial purposes in Class 1, Hand-washing pastes in Class 3 and Drilling, milling and clamping tools in Class 8.
Registered goods in Class 6
Having in view the evidence of use made available by the EUTM proprietor and bearing in mind the above mentioned principles arising from the Aladin judgement, genuine use of the mark is acknowledged for the following registered goods in this class: machine and cloakroom lockers; tool trolleys; cutting-off wheels, material containers; transport containers.
The proprietor’s rights with respect to the remaining common metals and their alloys; transportable buildings of metal; materials of metal for railway tracks; construction site safety devices and fencing; oil drainage containers of metal are revoked since no evidence of use was filed nor have any reasons for non-use been claimed and proved.
Registered goods in Class 7
Having in view the evidence of use made available by the EUTM proprietor and bearing in mind the above mentioned principles arising from the Aladin judgement, genuine use of the mark is acknowledged for the following registered goods in this class: machine coupling and transmission components (except for land vehicles); drill chucks; elevating apparatus.
As regards the remaining registered goods, they are in essence various machines, tools and implements, motors and engines and incubators for eggs. It is noted from the outset that the classification of tools depends on their mode of operation. Class 7 encompasses primarily power-operated tools, machines and machine tools (as well as motors and engines, and parts of machines, motors and engines), while hand-operated tools are in Class 8.
The EUTM proprietor claims genuine use of the mark for various other goods (such as for example mortar/paint/plaster stirrers, helical ribbon mixers, diamond core drills, polishing discs, boring bars, power saw blades or electronic side cutters etc.), which in its opinion would fall under the broader categories of the registered machines for processing metal, wood and plastics, machines for the chemical industry, agriculture, mining, textile machines, machines for the beverages industry, construction machines, packing machines and machine tools; motors and engines (except for land vehicles); agricultural implements (so far as included in class7); electrically powered tools and machines; pneumatic tools and machine tools. Such claims cannot succeed since the respective goods are either parts of machines for which the EUTM is not registered in Class 7 or are properly classified in a different class for which the mark is registered but which does not include the respective goods (as is the case for example of the claimed electronic side cutter, which, as can be seen from the catalogue3 is in fact a hand operated tool and as such properly classified in Class 8).
The mark has therefore to be revoked for the remaining registered goods in Class 7, namely for: machines for processing metal, wood and plastics, machines for the chemical industry, agriculture, mining, textile machines, machines for the beverages industry, construction machines, packing machines and machine tools; motors and engines (except for land vehicles); agricultural implements (so far as included in class7); incubators for eggs; electrically powered tools and machines; pneumatic tools and machine tools.
Registered goods in Class 9
Having in view the evidence of use made available by the EUTM proprietor and bearing in mind the above mentioned principles arising from the Aladin judgement, genuine use of the mark is acknowledged for the following registered goods in this class: optical and measuring apparatus and instruments; accident protection apparatus for workers, protective masks, clothing for protection against accidents; electric cables and cable joints of metal.
Contrary to the proprietor’s assertions, the Cancellation Division was not able to identity persuasive evidence of use in relation to the remaining goods. The proprietor contends for example that the mark is also used for head protection and refers to protective helmets4 in support of its claims. However, as is apparent from the catalogues, the respective goods appear to be designated by other signs than ‘PROMAT’, for instance ‘optrel’, ‘Speedglass’, ‘Schuberth’ or ‘Scott’.
It is further noted that the proprietor lists in a general manner various other goods (such as for example electronic needle nose pliers, stripping pliers, stripping blades, scribers, etc.) which in its opinion would be encompassed by the broader categories of the registered scientific, nautical, surveying, photographic, cinematographic, weighing, signaling, checking (supervision), life-saving and teaching apparatus and instruments; electric apparatus and instruments (included in class 9); apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines and data-processing equipment; fire-extinguishing apparatus. However, as can be seen from the respective catalogues, these goods are properly classified in other classes than Class 9, such as for example electronic needle nose pliers5 which, as can be seen from the respective catalogue, are hand-operated tools and thus belong to Class 8. There are also other goods such as stereo microscope for which the proprietor indicated only the respective article number, without mentioning the catalogue, chapter or page where the good could be found. The Cancellation Division has carried out an in deep and time consuming assessment of the catalogues looking for the respective good, without however being able to identify it.
The mark is therefore revoked as regards the remaining registered goods in this class, namely: scientific, nautical, surveying, photographic, cinematographic, weighing, signaling, checking (supervision), life-saving and teaching apparatus and instruments; electric apparatus and instruments (included in class 9); apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines and data-processing equipment; fire-extinguishing apparatus; head protection.
Registered goods in Class 10
There is evidence of use as regards ear plugs and ear defenders and therefore use of the mark is acknowledged for the registered ear plugs [ear protection devices] and hearing protection devices in this class.
The EUTM proprietor did not make available any evidence of use as regards the remaining registered goods in this class. Nor did it advance that there are proper reasons for non-use. The mark will therefore be revoked for: surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; cases fitted for use by surgeons and doctors.
Registered goods in Class 11
There is evidence of use as regards goods (such as LED clip lights, LED flashlights) that fall under the broader category of the registered apparatus for lighting. Along similar lines of reasoning to what it has been stated above on the legitimate interest of the proprietor in being able in the future to extend his range of goods, genuine use is acknowledged for the entire category of the registered apparatus for lighting.
The EUTM proprietor did not make available any evidence of use as regards the remaining registered goods in this class. Nor did it advance that there are proper reasons for non-use. While it is true that goods such as ventilating or heating apparatus are featured in the catalogues6, they are nonetheless not designated by the sign ‘PROMAT’. The mark will therefore be revoked for: apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; ash pits for furnaces; filters [parts of household or industrial installations]; filters for air conditioning; gas cleaners and purifiers; guard devices for lighting; hangings for lamps; lamp casings; lamp chimneys; lamp glasses; hangings for lights; lamp reflectors; lamp shades; lampshade holders; level controlling valves in tanks; light diffusers; igniters; oil-scrubbing apparatus; regulating and safety accessories for gas apparatus; sockets for electric lights; welding lights.
Registered goods in Class 12
There is evidence of use for several types of human powered trolleys and carts, such as sack trucks, handling carts, table trolleys as well as parts thereof. There is also evidence for cleaning trolleys. Therefore genuine use of the mark is acknowledged for the following registered goods: sack trucks, handling carts, wheeled dolly trolleys, table trolleys; sack trucks; cleaning trolleys; parts of trucks. It is furthermore noted that the contested EUTM is registered in this class for, inter alia, vehicles, a broad category encompassing a variety of items used for transporting people or cargo and which allows for several subcategories to be identified within it. Therefore, taking into account the evidence of use and on the basis of the purpose of the goods for which the mark is used, the Cancellation Division finds human powered trolleys and carts to represent a coherent sub-category for which use has been shown for the general category of the registered vehicles.
For the remaining goods in this class, no evidence of use has been made available and no proper reasons for non-use have been advanced and proved. For the sake of completeness it is noted that some of the registered goods in this class, such as wheelbarrows do appear in the catalogues7, however designated by other signs than ‘PROMAT’. Therefore, the proprietor’s rights in respect of vehicles (except for human powered trolleys and carts); apparatus for locomotion by land, air or water; workshop vans; axle journals; axles for vehicles; tipping apparatus, parts of waggons; wheelbarrows must be revoked.
Registered goods in Class 14
The EUTM proprietor did not make available any evidence of use as regards the registered goods in this class. Nor did it advance that there are proper reasons for non-use. The mark will therefore be revoked for all these goods, namely for: precious metals and their alloys and goods of precious metals or coated therewith, included in class 14; jewellery, precious stones; chronometric and horological instruments.
Registered goods in Class 16
There is evidence of use for goods which either appears as such in the specification of the mark (for example adhesives) or that fall under broad categories for which the EUTM is registered and are thus sufficient to secure genuine use for the respective broad category in its entirety (such as staples, staplers, labels). Therefore, and bearing in mind the above mentioned principles arising from the Aladin judgement, genuine use of the mark is acknowledged for the following registered goods in this class: stationery; adhesives for stationery or household purposes; office requisites (except furniture).
As regards the remaining registered goods in this class there is no persuasive evidence of use. Nor did the proprietor advance and demonstrate that there are proper reasons for non-use. While it is true that some of the registered goods in this class are featured in the catalogues, for example paints brushes8, however the respective goods are not designated by the sign ‘PROMAT’. The proprietor’s rights as regards the remaining registered goods in this class (namely paper, cardboard and goods made from these materials (included in class 16); printed matter; bookbinding material; photographs [printed]; artists' materials; paint brushes; typewriters and instructional and teaching material (except apparatus); playing cards; printers' type; printing blocks) are therefore revoked.
For the sake of completeness it is noted that the proprietor claims use in this class also for paper roll holders. In this regard, it is pointed out that paper holders belong to Class 16 or to Class 21, depending on the specific type of paper. For example, paper clip holders and writing paper holders are in Class 16, whereas kitchen paper holders, toilet paper holders or fitted holders for wiping, drying, polishing and cleaning paper are in Class 21. As can be seen from the respective catalogue, the goods relied upon by the proprietor are holders for wiping, drying, cleaning paper. As such goods do not belong to Class 16, but to Class 21, the Cancellation Division will assess the proprietor’s claims further down below.
Registered goods in Class 17
Having in view the evidence of use filed by the EUTM proprietor (which shows goods such as silicones, sealants, assembly foams that fall under broad categories for which the EUTM is registered and thus are sufficient to secure use for the entire category) and bearing in mind the above principle arising from the Aladin judgement, the Cancellation Division deems that genuine use of the trade mark must be established for the following registered goods in this class: Packing, stopping and insulating materials.
The mark must be revoked for the remaining registered goods in this class (i.e. Rubber, gutta-percha, gum, asbestos, mica and goods made from rubber, gutta-percha or gum in the form of blocks, plates, rods, foils, cord or bands (all being semi-finished products); Plastics in extruded form for use in manufacture; Flexible pipes and fittings, not of metal) as no evidence of use was filed nor any proper-reasons for non-use advanced and proved.
Registered goods in Class 20
There is evidence as regards storage boxes made of polypropylene, transport containers made of polypropylene, storage containers made of polyethylene or semi-open containers made of polystyrol. There is also evidence as regards dividers (for example made of polystyrol) as well as closures for containers (dust covers). Bearing in mind the purpose of the goods used, the Cancellation Division finds containers and closures therefor (included in class 20) of plastics and dividers (included in class 20) of plastics to represent coherent sub-categories for which use has been shown for the general category of the registered goods (included in class 20) of plastics.
For the remaining registered goods in this class no persuasive evidence of use was made available and no proper reasons for non-use advanced and demonstrated.
The EUTM proprietor refers to several goods (such as anti-slip mats, workshop cranes, chest of drawers, workbenches, inspection mirrors, cable reels etc) that would be encompassed, in its view, by the registered mirrors, picture frames; goods (included in class 20) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and would thus show the genuine use of the mark for the respective goods. The Cancellation Division cannot however concur with the proprietor. The respective goods are either specific furniture items for which the mark is not registered in this class or belong to other classes. As an example, inspection mirrors are properly classified in Class 9 and have already been taken into consideration for acknowledging use of the mark for optical apparatus and instruments. In a similar vein, workshop cranes are classified in Class 7 and were duly considered for giving genuine use in respect of elevating apparatus in this class. For the sake of completeness it is noted that the proprietor claims use in this class also for can holders and indicated the German name of the goods (Dosenhalter), the article number (40 00 871 056) and the catalogue where the goods could be found (chapter 7, page 41, year 2017). The Cancellation Division was however not able to identify such goods. A search by the German name reveals a good not designated by any sign (in a different chapter and with a different article number), whereas the indicated product code is not featured in the ‘Tool Technology’ catalogue 2016/2017.
Against this background the proprietor’s rights as regards the remaining goods in this class (namely: mirrors, picture frames; goods (included in class 20) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, goods (included in class 20) of plastics (except for containers and closures therefor (included in class 20) of plastics and except for dividers (included in class 20) of plastics) have to be revoked.
Registered goods in Class 21
There is evidence for cleaning articles and steelwool and therefore use of the mark is acknowledged for the registered articles for cleaning purposes; steelwool.
The EUTM proprietor refers to several goods (such as transport containers, waste bins, aluminium boxes, several type of brushes, like wire cup brush, round brush steel wire, round brush nylon, wire brush, etc) that would be encompassed, in its view, by the registered goods in this class and would thus show the genuine use of the mark for the respective goods. However, the respective goods are either specific items for which the mark is not registered or belong to other classes. As an example, the claimed transport containers are properly classified in Class 20 and have already been taken into consideration for acknowledging use of the mark for containers. In a similar vein, aluminium boxes are classified in Class 6 and were duly considered for giving genuine use in respect of containers in this class. As for the claimed brushes, as can be seen from the respective catalogues the goods at issue belong to either Class 7 or Class 8, depending on whether they are parts of machines or hand-operated tools.
As stated above when discussing use in relation to the registered goods in Class 16, the proprietor claims use for paper roll holders, which could be found in the ‘Tool Technology’ catalogue 2016/2017, with articles numbers 40 00 871 122 and 90 00 429 058, respectively. There is however no conclusive evidence on file that such goods are marketed under the contested mark. The good designated by article number 40 00 871 122 is a workshop trolley. The fact that it incorporates a holder for wiping/drying/cleaning paper roll is insufficient, in the absence of further evidence, to demonstrate that paper roll holders are also sold independently under the contested EUTM. As for the good designated by article number 90 00 429 058 (also a holder for wiping/cleaning/drying paper roll), there is no mention in the catalogue of the sign ‘PROMAT’ in relation thereto.
Therefore, as no persuasive evidence was filed for the remaining goods in this class, nor proper reasons for non-use were claimed and proved, the proprietor’s rights as regards household or kitchen utensils and containers, included in class 21, not of precious metal or coated therewith; combs and sponges; brush-making materials; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware (included in class 21) have to be revoked.
Registered goods in Class 25
There is evidence of use for certain clothing and footwear articles. Therefore, and bearing in mind also the principles set out in the above mentioned Aladin judgement and in particular the legitimate interest of the proprietor in being able in the future to extend its range of goods, within the confines of the terms describing the goods for which the trade mark was registered, the Cancellation Division deems that genuine use of the trade mark must be established for clothes and footwear in this class.
As regards the remaining headgear; insoles; fittings of metal for footwear; non-slipping devices for boots and shoes; tips for footwear, no evidence of use was made available. Moreover, the proprietor did not advance and prove any reasons for non-use. Therefore, the proprietor’s rights as regards these goods will be revoked.
Registered services in Class 37
The EUTM proprietor did not make available any evidence of use as regards the registered services in this class. Nor did it advance that there are proper reasons for non-use. The proprietor’s rights will therefore be revoked for all these services, namely for: building construction; installation services; maintenance technology.
For the sake of completeness it is also noted that the evidence shows various other goods for which the EUTM is not registered, such as for example several hand-operated tools (and parts thereto) like axes, shovels or rakes, office furniture like office chairs or cosmetic products such as hand creams, to name just a few. However, these goods cannot be taken into consideration for the present purposes as the EUTM is not registered for these specific goods.
Conclusion
It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the goods and services in Classes 14 and 37 and for some of the registered goods in Classes 6, 7, 9, 10, 11, 12, 16, 17, 20, 21 and 25, for which the mark must, therefore, be revoked.
The EUTM proprietor has proven genuine use for the remaining goods in Classes 1, 3, 6, 7, 8, 9, 10, 11, 12, 16, 17, 20, 21 and 25 (as listed hereinabove when discussing use in relation to the registered goods and services); 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 15/03/2017.
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
Nicole CLARKE |
Oana-Alina STURZA |
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.
1 Submitted by the EUTM proprietor on 08/07/2020 (Item 38 – see list of evidence of use further down below)
2 According to the EUTM proprietor, each of the printed versions of the catalogues contains over 2,500 pages and weighs more than five kilograms.
3 See ‘Tool Technology’ catalogue, 2016/2017, chapter 5, page 281, article number 4000810526.
4 See for example ‘Tool Technology’ catalogue 2016/2017, chapter 11, pages 14 and 15 or pages 28 to 30.
5 See ‘Tool Technology’ catalogue, 2016/2017, chapter 5, page 281, article number 4000810524.
6 See for example ‘Tool Technology’ catalogue 2015/2016, chapter 10, page 6 article number 4000896881 or page 7, article number 4000896900.
7 See for example ‘Tool Technology’ catalogue 2015/2016, chapter 10, pages 9 and 10, articles numbers 4000818168 or 4000818173.
8 See for example the ‘Tool Technology’ catalogue 2015/2016, chapter 10, pages 62 or 64, articles numbers 4000817393, 4000817394, 4000817470 or 4000817459.
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