CANCELLATION No 18 264 C (REVOCATION)

Beiersdorf AG, Unnastr. 48, 20253 Hamburg, Germany (applicant), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Diffulice Sàrl, Place Chauderon 18, 1003 Lausanne, Switzerland (EUTM proprietor), represented by Jones Day, 2, rue Saint Florentin, 75001 Paris, France (professional representative).

On 19/06/2020 the Cancellation Division takes the following

DECISION

1. The application for revocation is partially upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 1 071 612 are revoked as from 07/12/2017 for some of the contested goods, namely:

Class 3: Nail care preparations, except nail varnish.

Class 8: Depilation appliances, electric and non-electric; hair-removing tweezers; nail clippers and nail files, nail cutters, electric and non-electric.

3. The European Union trade mark remains registered for all the remaining goods and services (including the non-contested ones), namely:

Class 3: Cosmetic preparations for depilation; nail varnish.

Class 42: Hygienic and beauty care for human beings; Beauty salons; Hairdressing salons; Massage; Hair removal.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 1 071 612 (the EUTM) for the figurative sign shown below:

The request was originally directed against all the goods and services covered by the EUTM, but in the applicant’s observations of 10/02/2020 it explicitly stated that it no longer attacked the services in Class 42 but that the request was only directly against the goods in Classes 3 and 8, namely:

Class 3: Cosmetic preparations for depilation; nail care preparations.

Class 8: Depilation appliances, electric and non-electric; hair-removing tweezers; nail clippers and nail files, nail cutters, electric and non-electric.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant argues that the contested EUTM has not been put to a genuine use for a continuous period of five years. In reply to the evidence of use submitted by the EUTM proprietor, the applicant argues that it does not show genuine use. In particular, it argues that the evidence submitted by the proprietor is clearly insufficient with respect to nail care preparations in Class 3 and although there are some references to nail varnish, the evidence shows no use of the logo at issue or even any ‘BODY minute’ logo with respect to these goods. In relation to cosmetics the applicant argues that the proprietor has only submitted some images of cosmetic goods but that no sales have been shown of these goods and as such, no genuine use has been proven. In relation to Class 8 it argues that none of the evidence shows sales of these goods branded under any of the proprietor’s marks and the extent of use has not been proven, as it only refers to royalty payments and not to the sale of any appliances or apparatus. The applicant states that it makes no observations in relation to the services in Class 44. It requests that the application be uphold in relation to all of the goods in Classes 3 and 8.

In reply to the second set of evidence, the applicant repeats its previous arguments and argues that its position has not changed following the receipt of the new evidence which still does not show use for any of the registered goods in Classes 3 and 8. The applicant argues that the depilation goods shown in the evidence are sold under the ‘Epil’minute’ brand and not the EUTM and contests the proprietor’s arguments that the ‘Body’minute’ sign is an umbrella brand so use is shown for all of the goods and services and relies on the judgment 18/01/2011, T‑382/08, Vogue, EU:T:2011:9, §47 in this respect.  It claims that the use of the sign on shop fronts or shopping bags cannot create a link to the goods. It contests the evidence and observations of the proprietor and argues that it cannot link the images to the invoices or determine if any goods were sold under the sign and whether the evidence is actually from the relevant time frame or at what point in the time frame. It argues that the nail varnishes are sold under the ‘Nail’Minute’ mark and the depilation goods under the ‘Epil’minute’ mark and that these goods were not sold under the contested EUTM. There is no evidence for any nail care preparations besides nail varnishes. It also criticizes some of the evidence for not relating to the contested sign or the contested goods.

In relation to Class 8 it argues that the evidence only shows a sign ‘SKIN Minute LAB’ and not the contested sign. Also, it argues that there is no actgual use in relation to the goods in Class 8 as these goods are not being sold. Furthermore, the evidence is insufficient to prove use, and these goods, being IPL machines, would be in Class 7 and not Class 8 anyway. If anything, the evidence would indicate use in relation to the services of depilation but not for the sales of machines and the numbers included in the invoices do not make sense if they refer to the sales of machines as they show 50 and 25 pieces sold to a franchisor. There are no sales of the goods to end customers and any machines do not bear the contested sign. The evidence could only at best show the provision of services. Therefore, it insists that no use has been shown in relation to any of the contested goods.

In response to the third set of evidence submitted by the proprietor the applicant again confirms its previous observations and contests the evidence. In particular it contests the applicant’s argument that the sign is an umbrella brand as it is not used on the goods themselves but just in the retail context. It argues that there is no evidence of the sign used in relation to cosmetic preparations for depilation and that it is impossible to discern if the sign is on the products in the images submitted. It states that it is possible that the proprietor used the sign on depilation products prior to December 2012 but not from that time or during the relevant period. In relation to the nail care preparation evidence it argues that the advertising excerpts are not dated and that it cannot discern whether the sign appears in the images and the use of BODY MINUTE in the text merely refers to the company and not the brand. The evidence of hand cream, it argues, cannot show use for nail care preparations and it denies that use has even been shown for these goods. The applicant clarifies that the extent of the application for revocation is now restricted to the goods in Classes 3 and 8 and that it is no longer directed against Class 42.

In reply to the fourth set of evidence the applicant points out that it disagrees with the proprietor being allowed to continually submit new evidence and that it refrains from commenting thereon as it wishes the proceedings to be closed. It denies the proprietors accusation of bad faith on the applicant’s part and maintains its previous observations.

The case for the EUTM proprietor

The EUTM proprietor missed the deadline to submit its evidence of use but later requested a continuation of proceedings and submitted evidence of use of its EUTM which will be listed in detail below. Moreover, after receiving the applicant’s arguments the EUTM proprietor submitted further evidence to prove use. It also submitted an index of the Exhibits and an explanation of their relevance. The EUTM proprietor contests the arguments of the applicant. It argues that the contested sign is an umbrella brand, and afterwards sub-brands were introduced and placed under the main brand. It argues that the EUTM appears on advertising and shopping bags and that the goods sold under the sub-brands are also distinguished as a result by the contested sign as an umbrella brand and with use of two signs simultaneously.

It insists that the evidence shows use of the sign as registered. It points out that the main distinctive elements appear in all of the signs as used and it argues that only secondary elements are changed or omitted and, as such, said use does not alter the distinctive character of the sign as registered.

It argues that even if the sign is not affixed to the products it is used above the door to denote the institute name and also inside so that the products are clearly linked to the contested sign. The proprietor claims that the sign has been mainly used on depilatory wax strips for hair removal and creams for use before and after hair removal during the relevant time period. It further states that over time the design of the sign has changed and evolved with the use of different colours, like blue and pink to shade the circle and with the apostrophe or minute mark changing in shape. The proprietor claims that the sign has been widely advertised in popular magazines and that the sign is also included on goods bearing sub-brands of the proprietor. It also provides a breakdown of the reflected number of sales in the invoices of different products such as wax strips, soothing lotions and scrubbing gels to customers in France, Germany and Luxembourg. It submits images of goods bearing the contested sign or bearing both the contested sign in a small position at the bottom of the product and a larger sub-brand at the top, or on displays marked with the sign and containing many different goods branded with a variety of sub-brands, as well as the contested EUTM. Some of the advertisements show the proprietor’s goods bearing sub-brands but with the advertisement referring to Body Minute or also containing the contested sign on the same page. It also provides the breakdown of the reflected sales in the invoices of hand and nail products in France, Germany and Luxembourg during the relevant period.

In relation to Class 8 it argues that the sign ‘SKIN minute LAB’ is used simultaneously with the contested sign and this is reflected in the invoices, promotional tracts and visuals to be displayed at the institutes. It submits further evidence to prove the use of these goods and claims that about 217,500 advertising tracts were distributed in 2017 in France to promote pulsed light services and apparatus and purchase orders from the institutes to obtain the promotional visuals presenting the services. It submits pictures of the cabins with the pulsed light apparatus and the contested sign along with the ‘SKIN minute LAB’ sign. It also provides arguments regarding use in relation to Class 42. Therefore, it insists that it has shown use for all goods and services.

In reply to the applicant’s arguments the EUTM proprietor submitted further evidence and notes that the applicant no longer challenges Class 42. It contests the applicant’s arguments and points out that the sign is not just used on shop fronts but also is affixed to the goods themselves. It has a very large amount of institutes that form part of its franchise and it sells goods to them and they sell them to the end customer but such use is indeed genuine use. It points out the dates of the different promotions that were undertaken to promote its goods to show that the images were taken during the relevant time period. It insists that its sign was used alongside the NAIL MINUTE and HAND MINUTE brands to promote the goods. In relation to Class 8 the proprietor limits itself to state that it contests the applicant’s arguments.

In its final submissions the EUTM proprietor again submits evidence and contests the applicant’s arguments and repeats its previous arguments. It argues that the applicant’s comments were made in bad faith as it had no valuable and legitimate arguments but the proprietor has submitted technically enhanced copies of the documents to improve the quality and definition to show the EUTM clearly, although some evidence could not be enhanced for technical reasons. It argues that the new evidence was necessary as it was responding to the arguments of the applicant and the applicant’s criticism that it could not discern the sign on the evidence. It argues that the dates of the advertisements can be seen at the bottom of the advertisements and therefore they are not undated. It insists also that it has shown use of the goods in Class 8 and that they are in fact hand operated and evidence has been submitted such as purchase orders in relation to hair removal apparatus. Therefore, it claims to have proven use for all of the remaining contested goods.

Preliminary remark

Initially the EUTM proprietor was provided with a deadline of 24/02/2018 in which to submit the evidence of use of the EUTM. This deadline was later extended to 24/04/2018. The EUTM proprietor did not submit any evidence in response to the application. Therefore, on 24/05/2018 the Office notified a decision to revoke the EUTM in its entirety to both parties. However, on 19/06/2018 the EUTM proprietor submitted the evidence of use of the EUTM and on 22/06/2018 the EUTM proprietor submitted a request for a continuation of the proceedings and duly paid the required fee. On 23/07/2018 the Office notified the parties that the request for a continuation of the proceedings had been accepted and forwarded the evidence of use to the applicant for its comments. Therefore, the evidence of use is accepted as having been filed on time.

The applicant argues that when the EUTM proprietor submitted the evidence initially, that there was no index or description of the evidence provided. However, in response to this argument the EUTM proprietor submitted an index and description of the evidence, and the applicant has had the opportunity to further comment on the evidence having received said information. Therefore, this argument can be set aside.

It is further noted that the EUTM proprietor had another deadline of 27/07/2019 in which to submit further observations which was later extended until 27/09/2019. However, it did not reply within the relevant time limit so on 07/10/2019 the Office closed the adversarial part of the proceedings. On 26/11/2019 the EUTM submitted new observations and on 27/11/2019 it submitted a request for a continuation of proceedings which was accepted by the Office on 17/01/2020 and the observations were accepted and forwarded to the applicant who had the possibility to comment thereon. Therefore, these observations are taken into consideration in the present proceedings as they were deemed to be filed on time.

GROUNDS FOR THE DECISION

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37, 43).

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

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

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

In the present case, the EUTM was registered on 14/06/2000. The revocation request was filed on 07/12/2017. 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 07/12/2012 to 06/12/2017 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 19/06/2018 the EUTM proprietor submitted evidence as proof of use which is the following:

• Exhibit 1: Presentation of the umbrella and guarantee mark Body’minute to designate beauty institutes, manicure services and cosmetic products even if some of the products bear another brand.

• Exhibit 2: Sales Volumes and royalties information, comprising of an affidavit signed by the General Director of JCDA (company which is the franchisor of the BODY MINUTE network) relating to the volume of sales of products under the Challenged Mark to BODY MINUTE franchisees from 2014 to 2017 and a certificate signed on 11/06/2018 by the JCDA’s auditor Ernst & Young attesting to the accuracy of the amounts indicated in the above-mentioned affidavit. It also contains a financial statement of the BODY MINUTE network for 2016 showing very substantial sales figures. It also includes a table indicating the number of subscription cards subscribed by consumers. This table makes this inventory by distinguishing three subscription cards (“cartebody”, “cartemultipass” and “cartenail”) in the different institutes on the French territory and the years of subscription (from 2013 to 2017).

• Exhibit 3: Network information which consists of pre-contractual information documents describing the BODY MINUTE institutes franchise network, in Belgium, France, Germany, Luxembourg and Portugal between 2012 and 2016. Each pre-contractual information document describes, in particular, the concept of beauty institutes BODY MINUTE in relation to which the contested sign is intended to be used, and lists all the BODY MINUTE institutes existing in the relevant year in France and abroad, with an indication of their addresses.

• Exhibit 4: 4.1-4.2: Advertising / Promotion information which consists of extracts from well-known general-audience magazines (such as “Glamour”, “Voici”, “Public” and others) and from online websites promoting and advertising beauty, manicure and depilation products and services under the contested sign between 2012 and 2017 and a market opinion study report dated 17/12/2014 showing the different in reputation of the sign in 2014 compared to 2010. Promotional leaflets and posters dated between 1996-2016 promoting beauty, manicure and depilation services bearing the contested sign and template purchase order forms.

• 4.3: Network Communication which consists of:

i. communication budgets for 2012 – 2017 specifying amounts spent by the BODY MINUTE franchisor (JCDA) on the advertising, promotion and communication related to the products and services offered in BODY MINUTE institutes, including beauty, manicure and depilation products and services bearing the contested sign, in particular via press publications, promotional leaflets ad posters, SMS, web, TV and radio;

• ii. Examples of information dated 2012-2015 sent by BODY MINUTE franchisor (JCDA) to its franchises including promotional tracts relating to beauty, manicure and depilation products and services under the sign, purchase order templates, suggestions for advertising and sales pitch.

• 4.4: Network Seminars. It contains presentation documents distributed at the occasion of the national seminars organized by the BODY MINUTE franchisor (JCDA) for its franchisees in Paris (France) in 2015 and 2017 regarding the evolution of the packaging of beauty, depilation and nail care products bearing the contested sign, as well as the marketing strategy to promote said products.

• Exhibit 5: Cosmetic products bearing the EUTM contained in documents sent to the franchisees and screenshots from the Wayback Machine and press publications in English, French and German showing depilation and nail care products. A promotional poster presenting beauty care services under ‘SKIN minute LAB’ using hair removal apparatus ‘IPL’, a purchase order template relating to promotional visuals and posters and numerous invoices dated 2017 and 2018 covering services provided with IPL apparatus. Subscription cards for clients to benefit from beauty, manicure and depilation products and services. Photos of different stores or institutes bearing the sign.

• Exhibit 6: Pricing/Purchase Orders/ Invoices: It contains examples of purchase order templates and invoices dated 2010-2017 and related to the purchase, by BODY MINUTE franchisees in Belgium, France, Germany, Luxembourg and Portugal of depilation, cosmetics and nail care preparations offered under the contested sign which it states were purchased for resale to their clients.

In response to the applicant’s arguments the EUTM proprietor then submitted further evidence on 21/01/2019 which consists of the following:

• Exhibit 7: Franchise contracts for franchisees in Belgium, France, Germany, Luxembourg and Portugal between 2012-2016 to use and promote the EUTM in relation to beauty, depilation and manicure goods and related services.

• Exhibit 8: Communications sent by the franchisor to franchisees in relation to the promotion and commercialization of its products and services which consists of emails, informative documents and promotional materials dated from 2010 to 2017 in relation to cosmetics and beauty care services.

• Exhibit 9 : Emails sent by franchisees to the franchisor to provide photographs of

their BODY MINUTE and NAIL’ MINUTE institutes and products in 2015, 2016 and 2017 and promotional materials related to such products.

• Exhibit 10 : Attendance sheets for national seminars organized by the franchisor for its franchisees in 2015 and 2017.

• Exhibit 11: Invoices relating to the purchase of products bearing the challenged mark by franchisees located in France in relation to depilation, cosmetic and nail care products under the sign.

• Exhibit 12: Affidavit signed on 18/01/2019 by the General Director of the franchisor to attest the accuracy of the amounts indicated in the communication budgets for 2012-2017 mentioned in the observations.

• Exhibit 13: Screenshot from the Wayback Machine showing the BODY MINUTE website between 2013-2017 showing beauty, manicure and depilation goods and related services being promoted under different signs and some of the images show the contested sign on skin creams.

• Exhibit 14: Pre-contractual information document 2017 describing the BODY MINUTE institutes franchise network in 2017, including institutes in France and in Luxembourg.

• Exhibit 15: Purchase orders enclosed in emails dated 19/10/2017 and 17/11/2017 showing the orders for cabins with both the BODY MINUTE logo and the SKIN minute LAB logo and invoices for promotional materials most dated within the relevant period but one dated outside the relevant period on 27/12/2017.

Evidence submitted on 26/11/2019

• Exhibit 15 (it is noted that there are two exhibits with this number in the evidence): Publications from 2014-2016 related to various cosmetic products bearing the challenged mark. The item consists of numerous extracts from well-known general-audience magazines (such as “Gala”, “Femme actuelle”, Grazia”, “Voici”, “Elle”, “Marie Claire”, ”Closer” and others) and from online websites promoting and advertising cosmetic products (in particular, nail care products) under the challenged mark, between 2013 and 2015.

Evidence submitted on 24/04/2020:

• Exhibit 16: Enhanced version of the various photos originally submitted in Exhibits 4.1, 8, 9 and 15.

• Exhibit 17: Photos of samples of some of the products depicted in the contentious photos above mentioned on different cosmetic products bearing the contested sign.

Preliminary remarks

Additional evidence

On 21/01/2019, 26/11/2019 and 24/04/2020, after the expiry of the time limit, the EUTM proprietor submitted additional evidence.

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

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

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. Moreover, two of them were filed after the acceptance of a continuation of proceedings request so they were submitted in a timely fashion.

The Cancellation Division notes that the applicant had the possibility of commenting on all of the later evidence.

Therefore, 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 21/01/2019, 26/11/2019 and 24/04/2020.

Assessment of genuine use – factors

Time of use

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

Most of the evidence is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

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

The purchase orders/invoices, franchise contracts, advertisements and network information show that the place of use is Belgium, France, Germany, Luxembourg and Portugal. This can be inferred from the language of the documents (French, English), the currency mentioned (EUR) and some addresses in Belgium, France, Germany, Luxembourg and Portugal. Therefore, the evidence relates to the relevant territory.

Nature of use: use as a trade mark

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

The evidence shows use of the EUTM as a sign to indicate the commercial origin of the goods. Therefore, the evidence contains sufficient indications of the use of the sign as a trade mark.

Nature of use: use of the mark as registered

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

The contested sign as registered is a figurative sign as shown below:

However, the evidence of use shows many different versions of the sign such as the following:

1. 2) 3)

4) 5) BODY’MINUTE 6)

7) 8) 9)

10)

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).

It is appropriate to consider whether the form in which the contested trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the contested EUTM have the same distinctive character. First, the distinctive character of the contested EUTM must be clarified. Then, it must be considered whether or not the mark as used alters this distinctive character.

Assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the trade mark (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 36).

The sign as registered contains a large circle filled in black with the word ‘Body’ depicted in large standard white title case typeface placed in the center of the sign, underneath which is the smaller word ‘minute’ depicted in much smaller white standard lower case typeface. At the top of the sign is a white mark that could be described perhaps as a minute mark or apostrophe or indeed an abstract decoration with no meaning, which is superimposed on, and partially intersects, the top right part of the circle.

The word ‘Body’ is weak in relation to some of the contested goods, for example, for cosmetic preparations for depilation which would be applied on the body but it is not descriptive of the goods themselves and moreover, part of the public will not understand the meaning of the word, namely, the non-English speaking consumers and for these consumers the word is distinctive to an average degree. Furthermore, it would not be weak in relation to other goods, such as tweezers and therefore, would be normally distinctive.

The word ‘minute’ could refer to the amount of time it takes to use the product or in which the service will be provided. This word will be understood by nearly all consumers in the EU as either identical words exists in some languages like French or very similar words exists in most EU languages like ‘minuto’ in Spanish and Italian, ‘minuté’ in Lithuanian etc. Therefore, it could be seen as referring to the amount of time it takes to use the product or in which the service will be provided. Therefore, this word on its own also could be descriptive and non-distinctive for most consumers in the EU. Although it is noted that in some languages, like Hungarian the corresponding word is very different and therefore, it cannot be ruled out that this word would be meaningless and as such distinctive to an average degree for a small part of the consumers in the EU.

However, it is noted that the term ‘Body‘minute’ as a whole does not have any exact meaning for any consumers and although it can allude to the fact that the goods are related to the body and can be done in a relatively quick time frame, it is not a clear conceptual unit. Therefore, this term is distinctive to a below average degree for the consumers understanding the meaning of the words and to an average degree for those who will not understand them.

The use of different colours in signs Nos 1) – 4) above does not alter the distinctive character of the sign as registered. Although the colour black of the circle as registered is striking in contrast to the white typeface of the verbal element, as pointed out by the EUTM proprietor, the contrasts between the light letters and the darker background colour of the circles is still consistent. Furthermore, it is common practice for trade mark owners to use variations of colours of a sign in relation to the colour of the background on the product label or advertisement to make it stand out more. Therefore, this does not alter the distinctive character of the sign. It is noted that in signs 1) and 3) – 4) the minute sign or apostrophe has the same shape as the one in the registered sign but it is placed in a somewhat different position a little further down and to the right. This is nearly imperceptible and does not affect the distinctive character of the sign. Moreover, in signs Nos 2) and 6) the minute sign or apostrophe has a somewhat different shape and the outside of the circle is irregular but again this does not impact the distinctiveness of the sign as registered, additionally sign 6) has the same colours of black and white as the sign as registered. Sign No 5) is the word mark ‘BODY’MINUTE’ and it is noted that the word element has overall either a below average or average degree of distinctiveness. The circle is a mere simple geometric shape and the colours are not distinctive in their own right. Therefore, the omission of these details does not alter the distinctive character of the sign as registered. As such, the signs Nos 1) – 6) above clearly show use of the sign as registered or in an acceptable variation.

Signs 7) – 10) show how some goods and services are marked with other brands of the proprietor, such as ‘Epil’minute’, ‘Hand’minute’ or ‘SKIN minurte LAB’. However, it can be observed from the images in these signs that the EUTM is also placed on the goods or advertised in relation to the services and this amounts to use of two signs simultaneously. The proprietor argues that the EUTM is an umbrella brand. It is common practice for companies to use a house mark or umbrella brand to distinguish all of its goods or services and then sub-brands to identify specific ranges. From the evidence this can be seen as some of the goods are actually branded under the sign while others are co-branded with the sign, albeit it in a secondary position to another sign and most of the advertising also contains the EUTM. However, this is clear use of two signs simultaneously. The applicant has relied on the judgment 18/01/2011, T‑382/08, Vogue, EU:T:2011:9, §47 to argue that the use of the sign on shop fronts or shopping bags cannot create a link to the goods. However, this argument must be rejected considering that the goods actually bear the sign as a house brand or umbrella brand.

Therefore, the evidence of use contains sufficient indications of use of the sign as registered or in a form essentially the same as that registered under Article 18 EUTMR.

Extent of use

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

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

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

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

The EUTM proprietor submitted overall promotional figures spent on its brand and a small sample of advertising carried out. The evidence also contains purchase orders and invoices which show sales, at least in relation to some of the contested goods, and this will be discussed further below in the following section. These sales span the majority of the relevant period, although they are not extremely high.

Although the evidence indicates a somewhat low commercial volume of use the sales figures provided in the affidavit are rather substantial and the advertisements and invoices are examples only and serve to back up the claimed figures. Moreover, the evidence shows use of the EUTM in several Member States, namely, Belgium, France, Germany, Luxembourg and Portugal and that promotional activities and franchise agreements are in place. Therefore, the EUTM proprietor has provided sufficient indications of the extent of use, at least in relation to some of the goods.

Use in relation to the registered goods

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

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)

Since consumers are searching primarily for a product or service to meet their specific needs, the purpose of the product or service in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods or services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 29).

The contested EUTM is registered for the following goods:

Class 3: Cosmetic preparations for depilation; nail care preparations.

Class 8: Depilation appliances, electric and non-electric; hair-removing tweezers; nail clippers and nail files, nail cutters, electric and non-electric.

However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation in respect of 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.

In the present case, the evidence shows genuine use of the trade mark for different types of cosmetic preparations for depilation, namely, pre- and post-depilation creams and gels, waxing strips, wax etc. All of these goods fall within the broad category of the following goods: cosmetic preparations for depilation. The EUTM proprietor does not have to show every conceivable type of cosmetic that would fall into that category, indeed it has shown a wide variety of these goods. Therefore, the EUTM proprietor has shown use in Class 3 for the board category of cosmetic preparations for depilation.

The evidence shows that the proprietor is selling nail vanishes which are being advertised alongside its umbrella mark, although the bottles do not appear to bear the additional sign. However, they are being sold in institutes or stores that only contain the proprietor’s goods and therefore, the argument about retail does not apply as there is only one company’s goods on offer. As such, the sale of these goods on stands bearing the umbrella mark and the different displays, shop signs, advertising and shopping bags bearing the house mark creates a sufficient link between these goods and the EUTM. Nail polish falls within the broad category of the following goods: nail care preparations. The EUTM proprietor does not have to show every conceivable type of preparation that would fall into that category however, it has only shown this specific type of good. The EUTM proprietor argues that it has shown nail polishes but also hand creams. However, the Cancellation Division notes that the later goods are specifically hand creams and are not principally aimed at nail care. Although it might be a secondary result of the creams that is insufficient to prove use of nail care preparations. Therefore, a clear sub-category of goods can be drawn for nail varnish as no evidence for use of the contested sign has been shown for any remaining goods.

In relation to Class 8 the EUTM proprietor submitted some evidence of sales of wax heaters, wax cartridges, wax strips and spatulas in relation to the goods of depilation appliances, electric and non-electric, in Class 8. It is noted that the wax cartridges and wax strips or bands would fall under Class 3 and not Class 8 as it is the cosmetic itself that would classify those goods and not the apparatus. The wax cartridges are not refillable and are not sold separately to the wax, or at least no evidence of this was submitted by the EUTM proprietor. Therefore, it is the wax, as a cosmetic which is being sold in a particular format, namely, cartridges or strips. As such, contrary to the EUTM proprietor’s arguments in this respect, the sale of such goods cannot show use of the goods in Class 8. Moreover, cosmetic spatulas are properly classified in Class 21 and wax heaters are classified in Class 11 and not Class 8 and as such, the sales of spatulas and wax heaters cannot show use of depilation appliances in Class 8.

The EUTM proprietor also submitted images of an IPL machine which uses pulsed light for depilation and claims to be selling these goods. The applicant points out that machines such as IPL machines should be registered in Class 7 and not in Class 8 which is reserved for hand operated machines. To this end the proprietor replied that the machine is used by hand. However, the Cancellation Division cannot agree to this as the machine is an electric machine and although the user might use their hands to operate it, it is not a manual machine only used by hand. Leaving the classification of the goods aside, the Cancellation Division also notes that the evidence submitted would only appear to prove that services were provided in relation to the use of the machines, such as depilation or beauty services. There is no evidence that the actual machines themselves were sold, but just that related publicity tracts and information packages were sold to the franchises so that they could advertise their services. Therefore, the proprietor has failed to prove genuine use of any of the goods in Class 8.

The Cancellation Division notes that the proprietor explicitly restricted the scope of the application for revocation and no longer contests the services in Class 42 and as such, the evidence in this regard will not be examined.

Overall assessment

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

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors of time, place, nature and extent of use only in relation to some of the contested goods, namely, the goods:

Cosmetic preparations for depilation, nail varnish, in Class 3.

Conclusion

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

Class 3: Nail care preparations, except nail varnish.

Class 8: Depilation appliances, electric and non-electric; hair-removing tweezers; nail clippers and nail files, nail cutters, electric and non-electric.

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

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 07/12/2017.

COSTS

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

Since the cancellation is successful only for part of the contested goods 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

Janja FELC

Nicole CLARKE

Ioana MOISESCU

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.