CANCELLATION No 13 414 C (REVOCATION)

Trademarkers Merkenbureau C.V., Amersfoortsestraatweg 33 B, Bussum 1401, Netherlands (applicant)

a g a i n s t

Kabushiki Kaisha Square Enix (also trading as Square Enix Co., Ltd.), 6-27-30 Shinjuku Shinjuku-ku, Tokyo, Japan (EUTM proprietor), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative).

On 04/07/2018., the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 1 402 924 are revoked in their entirety as from 01/08/2016.

3. The EUTM proprietor bears the costs, fixed at EUR 630.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 1 402 924 ‘Parasite EVE’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 9: Computer game software, video game software, coin-operated game machines, musical sound recordings, audio and/or video recordings featuring music, drama, action and adventure, controllers and joysticks, mouse pads.

Class 16: Books, game strategy guidebooks, posters, calendars, trading cards, playing cards, greeting cards, post cards, stickers, printed matters, stationery.

Class 28: Toy action figures, dolls, toys and playthings, games, hand-held electronic game machines.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM is due for cancellation for non-use as the applicant could not ascertain any use by the EUTM proprietor from public sources in connection with all the protected goods in Class 9, 16 and 28 within a continuous period of five years and is, therefore, to be revoked.

The EUTM proprietor submits evidence (listed further in the decision) for the genuine use of the EUTM and argues that the evidence demonstrates that very large scale commercial use of the EUTM in relation to the goods was made between April 2011 and March 2016 in the form of EU total disc and download sales of the most recent instalment of the Parasite Eve series, The 3^rd Birthday, in excess of GBP 1 million. The EUTM proprietor then proceeds with a detailed analysis of the submitted evidence and its relevance for proving the genuine use of the EUTM, in particular in relation to the indications time, place, nature and extent of use as well as use in relation to the registered goods. In conclusion the EUTM proprietor requests that the Office refuses the application for revocation and grants an award of costs in favour of the EUTM proprietor.

In its submissions in response of the submitted evidence the applicant performs a detailed analysis of each document, in particular its probative value and relevance for proving the time, place, nature and extent of use of the EUTM and comes to the conclusion that the evidence as a whole is clearly insufficient to indicate that there was genuine use of the EUTM in relation to the registered goods during the relevant period.

The EUTM proprietor did not file observations in reply.

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 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 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 30/11/2000. The revocation request was filed on 01/08/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 01/08/2011 to 31/07/2016 inclusive, for the following contested goods:

Class 9: Computer game software, video game software, coin-operated game machines, musical sound recordings, audio and/or video recordings featuring music, drama, action and adventure, controllers and joysticks, mouse pads.

Class 16: Books, game strategy guidebooks, posters, calendars, trading cards, playing cards, greeting cards, post cards, stickers, printed matters, stationery.

Class 28: Toy action figures, dolls, toys and playthings, games, hand-held electronic game machines.

On 16/01/2017 the EUTM proprietor submitted evidence as proof of use.

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. It is to be noted nevertheless, that a major part of the evidence has already been made public.

The evidence to be taken into account is the following:

Attachment 1 An extract from the UK home of the official PlayStation Store showing for sale a game with the title ‘The 3^rd Birthday®’. There is no mention of the EUTM.

Attachment 2 A Wikipedia article regarding the subgenre of video games called ‘Survival horror’. In a section called ‘Golden age (1996-2004)’ the article mentions the release of the games ‘Parasite Eve’ in 1998 and its sequel ‘Parasite Eve II’ in 1999.

Witness Statement of Koichiro Hayashi, company secretary and CFO within Square Enix, Ltd (Europe) dated 13/01/2017. The statement is being given to prove that the EUTM proprietor used the trade mark ‘Parasite EVE’ on and in relation to video games throughout the European Union during the relevant period. Several exhibits (listed below) are linked to the witness statement in support of the declarations made by Koichiro Hayashi. The witness statement contains also a table with the alleged sales of the game ‘Parasite EVE II’ across several European Union Member States during the relevant period.

Exhibit 1 Images of the packaging and actual DVD-ROM disc bearing among others the sign ‘Parasite Eve II’. The copyright notice refers to the years 1999, 2000.

Exhibit 2 A screenshot taken from the ‘Gamiversary’ twitter feed of 25/08/2016 showing the sign ‘Parasite Eve II’.

Exhibit 3 Selection of articles (GamesRadar, dated 04/06/2010, www.pocketgamer.co.uk, dated 02/11/2012, http://powerupgaming.co.uk, dated 27/10/2015) suggesting that ‘Parasite Eve’ games are deserving of a remake for next generation consoles or smartphones.

Exhibit 4 Printout from www.amazon.co.uk showing a DVD-ROM disc bearing the sign ‘Parasite Eve’ for sale through third party sellers. The printout is dated 17/11/2016. It contains 4 user reviews: 2 from 2009 and 2 from 2013. One user review states that the game was only released overseas. The review of another user confirms that the game has never been edited for the European market and was incompatible with the European game consoles. Two users made verified purchases.

Exhibit 5 Printouts from www.amazon.co.uk showing the game ‘Parasite EVE II’ for sale through a variety of third party sellers. Few users made verified purchases.

Exhibit 6 Copies of the back and front covers of the ‘Parasite Eve II’ walkthrough book (in German). The copyright notice refers to the years 1999, 2000.

Exhibit 7 Printout from www.amazon.de showing the ‘Parasite Eve II’ walkthrough book (in German) offered for sale. There is a review from a customer who made a verified purchase.

Exhibit 8 Printout from www.amazon.co.uk showing a CD with the soundtrack to ‘Parasite Eve’ offered for sale. One verified purchase has been made.

Exhibit 9 Printouts from the EUTM proprietor’s website, www.amazon.co.uk and www.games.it regarding the game ‘The 3^rd Birthday’. The articles and the reviews allow for the conclusion to be drawn that the main character of the games ‘Parasite Eve’ and ‘Parasite Eve II’ Aya Brea is also the main character of the game ‘The 3^rd Birthday’ which is considered a sequel of the previous two games.

Exhibit 10 Printouts of two online news articles from the website www.vg247.com both dated 2010 (outside of the relevant period) mentioning that the release of the games ‘Parasite Eve’ and ‘Parasite Eve II’ for the European market is under consideration.

Exhibit 11 Printout of the official online PlayStation Store webpage offering the game ‘Parasite EVE II’ for sale.

Exhibit 12 An article from the website www.pcadvisor.co.uk of 23/01/2015 entitled ‘The best PS One games on Play Station Store: 12 classics that transport you back to your childhood.’ mentioning ‘Parasite Eve II’.

Assessment of genuine use – factors

The factors time, place, extent and nature of use are cumulative (05/10/2010, T‑92/09, STRATEGI, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indications of all these factors to prove genuine use. The Cancellation Division finds it appropriate to first examine the extent of use of the contested EUTM.

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 evidence that contains information regarding quantitative data allowing the Cancellation Division to draw a conclusion on the extent of use of the EUTM is the table with the alleged sales of the game ‘Parasite EVE II’ across several European Union Member States during the relevant period provided as part of the Witness Statement of Mr. Koichiro Hayashi. The sales were allegedly effectuated via the official online PlayStation Store webpage offering the game ‘Parasite EVE II’ for sale (Exhibit 11).

It is to be noted that even if the witness statement of Mr. Koichiro Hayashi is as such admissible as means of proof of use, it is given less weight as far as its probative value is concerned than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. This does not mean that the presented statement does not have any probative value at all. The probative value of the witness statement depends on whether or not it is supported by other types of evidence (invoices, audited annual financial reports) and/or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

No such evidence has been presented by the EUTM proprietor. The origin of the table, the data contained therein and its correctness/reliability cannot be verified. The fact that the indication of the currency (€) was later added in handwriting does not increase the credibility of the table and the data provided therein. It wouldn’t have been difficult for the EUTM proprietor to present such a document issued by the owner of the platform through which the alleged sales were generated (the official online PlayStation Store webpage), and/or provide a certain number of invoices for actual sales. The EUTM proprietor did not support the data in the table with additional evidence even after the applicant heavily disputed its probative value.

The remaining evidence that gives some information about possible sales are exhibits 4,5 (in relation to the games with titles ‘Parasite Eve’ and ‘Parasite Eve II’ respectively) and 7,8 (in relation to the walkthrough book and the CD with the soundtrack to the game). Even taken altogether these few purchases cannot justify a finding of sufficient extent of use. It cannot be established from this kind of evidence where the purchases come from. The same argument is valid in relation to the evidence intended to prove the sales effectuated via the official online PlayStation Store webpage. The fact that the domain names have the country code top-level domain for the United Kingdom does not mean that purchases are effectuated from the territory of the United Kingdom.

All other pieces of evidence refer either to a different sign (‘The 3^rd Birthday’) or relate to periods which are (by far) outside of the relevant period and do not serve the purpose of proving the extent of the use of the contested EUTM. The fact that the games ‘Parasite Eve’ and ‘Parasite Eve II’ are somehow conceptually linked through the main character with the game called ‘The 3^rd Birthday’ is basically irrelevant. Possible sales of the game bearing the sign ‘The 3^rd Birthday’ cannot be considered as showing the extent of use of the sign subject to the current assessment, namely the contested EUTM ‘Parasite Eve’.

Taking all the circumstances of the case into account, the Cancellation Division cannot conclude on the extent of the use of the EUTM, in particular in relation to 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 and its territorial scope, without resorting to probabilities and presumptions.

Conclusion

Taking into consideration the above and recalling that the requirements for proof of use are cumulative and the proprietor failed to prove the extent of use, there is no need to assess the other factors. The Cancellation Division concludes that the evidence furnished by the EUTM proprietor is insufficient to prove that the contested trade mark was genuinely used. At the same time, the EUTM proprietor did not submit any proper reasons for non-use of the EUTM.

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 01/08/2016.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Oana-Alina STURZA

Plamen IVANOV

Judit NÉMETH

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.