CANCELLATION No 32 723 C (REVOCATION)

Alcar Aktiebolag, Box 20104, 161 02 Bromma, Sweden (applicant), represented by Advokatfirman Marlaw AB, Riddargatan 7A, 5 tr, 114 35, Stockholm, Sweden (professional representative)

a g a i n s t

Alcar Holding GmbH, Esteplatz 4/17 A-1030 Vienna, Austria (EUTM proprietor), represented by Fritz & Brandenburg Patentanwälte, Stolberger Str. 368, 50933 Cologne, Germany (professional representative).

On 09/12/2019, 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 2 800 811 are revoked as from 08/02/2019 for all the contested goods, namely:

Class 6: Anti-theft devices for wheels (wheel clamps).

Class 7: Exhaust systems.

Class 12: Vehicle parts and accessories, namely wheel nuts and wheel screws, valves for pneumatic tyres, snow chains.

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

Class 12: Vehicle parts and accessories, namely disc edges of aluminium or steel.

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

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 2 800 811 ‘ALCAR’ (word mark), (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 6: Anti-theft devices for wheels (wheel clamps).

Class 7: Exhaust systems.

Class 12: Vehicle parts and accessories, namely wheel nuts and wheel screws, valves for pneumatic tyres, snow chains.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM proprietor has not put the contested EUTM to genuine use for a continuous period of five years in relation to any of the contested goods. It argues that the EUTM has only been used in relation to ‘wheel rims of aluminium or steel for motor cars’ and cannot show use for any of the contested goods. Therefore, the applicant requests that the EUTM be revoked for all of the contested goods.

The EUTM proprietor contests the applicant’s arguments and insists that it has put the EUTM to genuine use in relation to all of the contested goods. The EUTM proprietor submits evidence to prove the use of the EUTM which will be listed in detail below in the present decision. The EUTM proprietor states that there are ongoing proceedings between the parties and that is why the applicant has taken the present revocation proceedings against the EUTM. The EUTM proprietor points out that it is the head of a group of companies that all contain the name ‘ALCAR’ along with other elements and which are located throughout Europe and provides the names, addresses and webpage details for all of the daughter companies. The EUTM proprietor states that it is the leading company in the European steel and alloy wheel market. It states that the ‘ALCAR’ companies are involved in the production and distribution of car wheels under the EUTM. Furthermore, it states that it owns twelve large warehouses around Europe with a capacity of 1 million wheels for immediate availability and its annual production is 1.2 million car wheels a year. The EUTM proprietor states that it is one of the largest production and distribution companies for car wheels in Europe. It also states that it owns an online shop which is accessible by professional dealer clients only. It claims that the brand is very well-known as it has been used for over fifteen years and had a very high turnover in countries throughout the EU, and as such, the EUTM has a high level of distinctiveness. Finally, the EUTM proprietor describes the evidence submitted and its relevance and insists that the evidence is sufficient to prove use for all of the contested goods and the application for revocation should be rejected.

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 23/07/2004. The revocation request was filed on 08/02/2019. 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 08/02/2014 to 07/02/2019 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 09/04/2019 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Annex D1: Decision of the Board of Appeal of 14/11/2018, R 378/2018-1 ‘alcar.se (fig.) / Alcar’.

• Annex D2: Excerpt from the proprietor’s website showing anti-theft devices which is undated.

• Annex D3: Invoices for the sale of anti-theft devices dated between 2014 and 2018 (one for each year and each for the sale of one unit ranging in price from EUR 18.67 to EUR 413.60). On the top of each invoice is found the sign .

• Annex D4: Table of unknown origin outlining sales volumes for anti-theft devices for the years 2014-2018 for fifteen different EU countries and which range from sales in the hundreds of EUR to the tens of thousands of EUR for each year and country.

• Annex D5: Invoices for the sale of exhaust all which bear the sign at the top of the invoice. There is one invoice per year submitted and each invoice shows the sale of one to three goods which range in price from EUR 94.50 to EUR 367.50.

• Annex D6: Table of unknown origin outlining sales volumes for exhausts in France for the years 2014-2018 and which show total sales of exhausts in the hundreds of millions of EUR.

• Annex D7: Except from the proprietor’s website showing exhaust systems which is undated. The sign appears at the top of the page and in relation to the exhaust systems it shows the sign .

• Annex D8: Invoices for the sale of wheel nuts dated between 2014 and 2019 and range between EUR 4 to EUR 40 for the specific goods. All of the invoices bear the sign at the top.

• Annex D9: Excerpts from the proprietor’s website showing car parts or accessories, these excerpts are also undated.

• Annex D10: Table of unknown origin providing sales volumes for accessories for the years 2014-2019 for many different EU countries.

• Annex D11: Invoices for the sale of valves for the years 2015 to 2019 for very small amounts ranging from less than 1 EUR to PLN 670 (approximately EUR 155) .

• Annex D12: Table of unknown origin providing sales volumes for valves for the years 2014-2019 in Poland and Romania and which ranges from EUR 51 to EUR 9,055.

• Annex D13: Excerpts from the proprietor’s website, which are undated, showing valves and at the top of the page the sign

• Annex D14: Affidavit from the CEO of the EUTM proprietor and dated 09/04/2019 which states that the EUTM has been used extensively and continuously between 2014 and 2019 for the contested goods and that the figures provided in the above mentioned tables of unknown origin are true and correct. He also states that all of the daughter companies and the proprietor itself use the sign on the goods and packaging and webpages. Attached to this Affidavit is the registration certificate of the EUTM.

• Annex D15: Photos of goods and packaging bearing the sign and advertising material with the sign .

Preliminary remarks

Affidavits

As far as the Affidavit is concerned, Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight 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.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) 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.

Ongoing proceedings

The EUTM proprietor states that there are ongoing proceedings between the parties and that is why the applicant has taken the present revocation proceedings against the EUTM.

However, the Cancellation Division notes that the fact that the parties are involved in separate proceedings does not affect the present application. The applicant or any other company may initiate revocation proceedings for non-use without having to state what interest it might have in doing so. Therefore, this argument must be set aside.

Assessment of genuine use – factors

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 smaller the commercial volume of the exploitation of the mark, the more necessary it is for the EUTM proprietor to submit additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37).

In the Affidavit the EUTM proprietor claims to have made very substantial sales under the EUTM in relation to contested goods. Moreover, the tables with overall turnover figures submitted also reflect these large sales. However, the tables are of unknown origin, although admittedly it would appear to be an internal document from the EUTM proprietor. As these documents emanate from the EUTM proprietor itself they have less probative force, and as mentioned previously, would need to be backed up with concrete independent evidence to prove the content thereof.

In this respect the EUTM proprietor submitted a small number of invoices, one for each year from 2104 to 2018 or in some cases 2019 for each of the different contested goods. These goods themselves are not expensive goods and the invoices are generally for the sale of one product or in one case for about 6 products. The invoices are billed for amounts ranging from below one EUR to a maximum of EUR 413, so all of the invoices are for very small amounts of sales for inexpensive goods. The invoices are billed to a number of different countries but the amounts charged for such sales, and the low units of products sold cannot possibly back up the claims of substantial sales during the relevant period for each of the goods.

The EUTM proprietor also submitted some printouts from its webpage. Again, this webpage belongs to the EUTM proprietor and therefore it is not concrete independent evidence. Moreover, these extracts are not dated so it is impossible to know whether they existed during the relevant period. However, even assuming that these pages were from the relevant time period there is no further data to prove that goods were bought through this page, where the consumers who bought the goods were located, that the sales occurred during the relevant time, the volume of sales made, or any other piece of significant concrete independent evidence to prove the factor of extent of use.

The EUTM proprietor did state that the invoices were only examples, however, the EUTM proprietor was not limited in any way to provide sufficient evidence to prove the use of the EUTM in relation to the contested goods but chose to limit the evidence. One invoice for each year and good, especially when the unit sales and the price of the goods are so low, is manifestly insufficient to prove a genuine use or the extent of any such use in the relevant territory during the relevant period. Therefore, the EUTM proprietor has failed to prove the factor of extent of use.

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 not been sufficiently demonstrated for the relevant factor of extent of use.

The different factors of use are cumulative and the failure to prove one factor leads to a finding that the EUTM proprietor has failed to prove use for any of the contested goods.

Conclusion

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

Class 6: Anti-theft devices for wheels (wheel clamps).

Class 7: Exhaust systems.

Class 12: Vehicle parts and accessories, namely wheel nuts and wheel screws, valves for pneumatic tyres, snow chains.

The EUTM remains on the register for all the uncontested goods.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 08/02/2019.

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.

The Cancellation Division

Ioana MOISESCU

Nicole CLARKE

Richard BIANCHI

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.