CANCELLATION No C 18 304  (REVOCATION)

‘Mango-Media’ Sp. Z O.O., al. Grunwaldzka 411, 80309 Gdańsk, Poland (applicant), represented by Baker Mckenzie Krzyżowski I Wspólnicy Spółka Komandytowa, Rondo ONZ 1, 00-124 Warsaw, Poland (professional representative)

a g a i n s t

Consolidated Artists B.V., Lijnbaan 81 3012 EM Rotterdam, the Netherlands (EUTM proprietor), represented by Baker & Mckenzie Barcelona, Av. Diagonal, 652 Edif. D, 8ª Planta, 08034 Barcelona, Spain (professional representative).

On 15/02/2021, 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 3 360 815 are revoked as from 08/12/2017 for some of the contested goods and services, namely:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; hair lotions; dentifrices.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; optical apparatus and instruments (except sunglasses); 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, data processing equipment and computers; fire-extinguishing apparatus.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; patterns for making clothes; patterns for dressmaking; stencil cases; plans; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 35: Advertising, including online advertising on a computer network; rental of advertising space; organisation of exhibitions and trade fairs for commercial or advertising purposes; outdoor advertising; dissemination of advertising matter, direct mail advertising; advertising mail; updating of advertising material; sales promotions for others; shop-window dressing; demonstration of goods; distribution of samples; modelling for advertising or sales promotion; press reviews; retailing of clothing, perfume and personal accessories.

3. The European Union trade mark remains registered for all the remaining goods (including those uncontested), namely:

Class 9 Optical apparatus and instruments, namely sunglasses; sunglasses and frames therefor.

Class 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; handbags, rucksacks, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25 Clothing, underwear, sportswear other than for diving, belts, gloves, shoes, headgear.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark No 3 360 815 (figurative mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; hair lotions; dentifrices.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; 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, data processing equipment and computers; fire-extinguishing apparatus.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; patterns for making clothes; patterns for dressmaking; stencil cases; plans; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 35: Advertising, including online advertising on a computer network; rental of advertising space; organisation of exhibitions and trade fairs for commercial or advertising purposes; outdoor advertising; dissemination of advertising matter, direct mail advertising; advertising mail; updating of advertising material; sales promotions for others; shop-window dressing; demonstration of goods; distribution of samples; modelling for advertising or sales promotion; press reviews; retailing of clothing, perfume and personal accessories.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that according to the best of its knowledge, the EUTM has not been put to genuine use by its proprietor for a continuous period of five years as of its registration for part of the goods and all the services for which it was registered. The EUTM proprietor requested an extension of its deadline to submit the proof of use, which was granted by the Office. The proceedings were then suspended until 09/11/2019 due to ongoing negotiations. The proceedings were resumed on 10/11/2019.

On 21/01/2020, within the time limit specified by the Office, the EUTM proprietor submitted evidence of use of the EUTM and stated that these documents proved genuine use of the EUTM for the contested goods and services and the application for revocation should be dismissed in its entirety.

Regarding the evidence, the applicant stated that none referred to Class 3 goods and that the proprietor had failed to prove its mark had been genuinely used for goods in Classes 9 and 16. Furthermore, for the services in Class 35, the proprietor had not submitted documents to prove that it had provided these services to third parties.

In its rejoinder, the EUTM proprietor refuted the applicant’s arguments and reiterated that it had filed evidence of genuine use of the EUTM for all the contested goods and services.

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 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 11/06/2008. The revocation request was filed on 08/12/2017. 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 08/12/2012 until 07/12/2017 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 21/01/2020 the EUTM proprietor submitted evidence as proof of use.

The EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. It justified its request by stating that the documents ‘contain a number of non-public and confidential information, such as internal reports on advertising campaigns, invoices, agreements with third parties and templates of agreements with franchisees. Furthermore, the compilation of all the documentation provides valuable insights into the internal business structure and processes of the EUTM proprietor, which should be treated as confidential’. The Cancellation Division accepts this request and will describe the evidence only in the most general terms without divulging any such data. However, this does not apply to evidence that consists of information that is already in the public domain (including available to the public, either in mass media or on the website of the EUTM proprietor).

The evidence to be taken into account are the following Annexes:

1. Printouts from the website of the ‘Cátedra MANGO’ at the ‘School of International Studies of the Pompeu Fabra University’ in Barcelona, Spain from 25/04/2016 and 29/03/2017, obtained through the Way Back Machine, that show the existence of a tool for calculating the carbon footprint of a logistics chain and of clothing and accessories. This document shows, in the proprietor’s opinion, that the ‘MANGO’ trade mark has been used at least since 2016 for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments.

2. A copy of the tool for calculating the carbon footprint of a logistics chain and of the instructions of use.

3. Articles from March and April 2017 giving information about the alliance between ‘MANGO’ and mobile app Shazam used to create and offer an in-store music application, which enables customers to choose music while shopping. The article states that ‘Mango and Shazam have joined forces to launch Shazam In-Store, a mobile marketing solution, in 20 Mango shops in Spain, giving in store consumers the opportunity to access Mango’s music playlist through Shazam’s app and select the music they want the store to play while they shop’ and that ‘[t]he app will also feature exclusive multimedia content from Mango, including campaign, special deals and the latest looks of the season. In addition, customers will have access to the brand’s social networks including its Spotify channel’. It also included, ‘In October 2016, the affordable womenswear brand rolled out a new payment system which allows customers to pay for their purchases anywhere in store, without ever having to stand in a checkout line’. The proprietor claims that these documents show that the ‘MANGO’ trade mark was used in the relevant period for apparatus for recording, transmission or reproduction of sound or images.

4. A copy of schedules 3 and 4 of the franchise agreement used, according to the EUTM proprietor, for all agreements with its European Union (EU) franchisees, called ‘[s]pecifications of the ambience musical system’, which includes the rental and maintenance of a music player called ‘MP-7000 MANGO’, which is a hardware system for playing music in the ‘MANGO’ stores and which includes broadcasting software specifically designed for the reproduction of music in the stores. This shows, in the proprietor’s opinion, the use of the ‘MANGO’ trade mark for apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs and data processing equipment and computers.

5. A screenshot of the ‘MANGO’ profile owned by the EUTM proprietor on the music streaming platform Spotify. The proprietor claims that this document shows that the trade mark ‘MANGO’ was used in the relevant period for apparatus for recording, transmission or reproduction of sound or images and magnetic data carriers, recording discs as well as for services in Class 35 such as advertising.

6. A screenshot of the ‘MANGO’ app available since 30/11/2010 on the Google Play Store, and photographs of advertising of the application in the 2015 ‘MANGO’ magazines, which, the proprietor claims, shows that the ‘MANGO’ trade mark has been used for data processing equipment and computers and for advertising.

7. A printout of a video clip ‘#MANGOGirls: Dinner in Milan AW 16’ featuring a page (possible a printed menu) displaying the ‘MANGO’ trade mark on a plate. The video was uploaded to YouTube on 23/09/2016, which, the proprietor claims, shows use of the mark for papers distributed during the event.

8. The design of a leaflet for a discount period in Germany, created on 17/10/2014, which, the proprietor claims, shows the use of the ‘MANGO’ mark for paper, cardboard and goods made from these materials, not included in other classes and printed matter and for advertising, as well as retailing of clothing, perfume and personal accessories.

9. A: printouts of websites showing images of paper bags and plastic bags with the ‘MANGO’ trade mark, dated between 2013 and 2017;

B: images of several types and sizes of paper bags, envelopes, carton boxes, paper labels and role of paper for receipts, showing, according to the EUTM proprietor, the use of the mark for goods in Class 16.

10. A screenshot of a video uploaded to YouTube on 16/07/2017 showing a ‘MANGO’ paper tag attached to a garment (showing, according to the EUTM proprietor, use for goods in Class 16).

11. A screenshot of a picture showing a printed photograph using the ‘MANGO’ trade mark (showing, according to the EUTM proprietor, use for goods in Class 16 – photographs).

12. A copy of an agreement signed with a French media agency in February 2015 (a one-year contract from 01/01/2015) showing the investments made in advertising services for the ‘MANGO’ trade mark and, according to the EUTM proprietor, that the contested sign has been used for all services in Class 35 for which it is registered, including advertising).

13. Press releases published by the EUTM proprietor under the ‘MANGO’ trade mark between January 2016 and December 2017. The press releases cover, in particular, some of the openings of the ‘MANGO’ megastores in the EU, the launching of campaigns, the sponsoring of the music festival Primavera Sound, with the opening of dedicated ‘MANGO’ spaces during the festival and the use of models for advertising purposes.

14. A press release dated 30/03/2017, which shows that there were 191 megastores under the ‘MANGO’ trade mark, that the firm opened more than 57 000 new square metres in franchise stores in the previous year and that the full store network comprised 2 217 stores with a total selling space of 798 000 m² globally. It also gives the turnovers globally.

15. A printout of the ‘mangoFashion’ section of the ‘MANGO’ Facebook profile, which includes a list of dozens of campaigns, look books, films and collections created under the ‘MANGO’ trade mark.

16. A printout of the YouTube channel of ‘MANGO’, which features a large number of videoclips of campaigns, collections and events organised or participated in under the EUTM.

17. Printouts of a number of YouTube video clips, which include examples of several campaign videos filmed and published during the relevant period, all of them with famous models and internationally recognised stars. Notably, some of the video clips have hundreds of thousands or even over a million of views.

18. Printouts of Instagram posts of the ‘MANGO’ page and of the model Kendall Jenner featuring the ‘MANGO’ trade mark. It shows that as of January 2020, the ‘MANGO’ Instagram page had 11.2 million followers and 3 759 posts. The first post was published before the relevant period on 23/12/2011.

19. Extracts from Interbrand rankings: Best Retail Brands 2014 (Europe) and Best Spanish brands 2014 and 2017. The ‘MANGO’ trade mark was the 8th best Spanish trade mark in 2013, the 18th best Spanish trade mark in 2017 and the 17th best European trade mark in 2014. The Mango mark is associated with ‘apparel’ and ‘fast fashion retailer’.

20. Social media reports by Fashionbi for February 2017 to July 2017 and August 2017 to January 2018, showing the presence of the ‘MANGO’ trade mark on social media, including Facebook, Instagram and Twitter.

21. The history of 2012-2019 advertising campaigns for ‘MANGO’.

22. Articles on the 2013, 2015, 2016 and 2017 campaigns, as well as pictures of the ‘MANGO HOUSE’ campaign at the ‘Primavera Sound 2017’ festival.

23. ‘Digital campaign screenshots abstract Fall/Winter 2017’. The proprietor claims that this shows that the ‘MANGO’ trade mark has been used for all services in Class 35 in relation to the digital advertising, including the rental of advertising space, dissemination of advertising matter, updating of advertising material, modelling for advertising or sales promotion and press reviews.

24. The executive summary of Spring/Summer 2016 campaign for the ‘MANGO’ trade mark on YouTube, other social media, magazines and in public spaces, such as London public buses and digital mega billboards.

25. An article, published on 26/11/2015, describing the opening of the ‘MANGO’ online store on Amazon Europe, and the advertising of products through other online stores.

26. A list of news articles from the online fashion magazine ‘Fashion Network’ and from the Spanish newspaper ‘El Periódico’, featuring the ‘MANGO’ trade mark. The proprietor claims this shows use of the EUTM for press reviews and advertising, including online advertising on a computer network.

27. Press clippings of the ‘MANGO’ trade mark between 2012 and 2018 in France, Germany, Italy, Portugal, Spain, and the United Kingdom.

28. An interview from 17/11/2017 of the EUTM proprietor’s eCommerce managing director.

29. An article, published on 06/09/2016, describing a new digital project under the ‘MANGO’ trade mark, ‘Journeys’, consisting of a mini-series of three films.

30. An article, published on 28/11/2014, describing the use of augmented reality by the mobile application offered under the ‘MANGO’ trade mark and including the following.

Baptized as Scan & Shop, this new functionality allows you to scan the images of catalogs[sic], advertising in magazines and advertising marquees of the brand to buy the garments through the app or simply locate them in their stores. At the moment, Scan & Shop is available for devices with the iOS operating system, although an Android version will soon be released. Mango’s mobile application, created more than 4 years ago, and currently has more than 1 600 000 downloads, presents all the group’s lines.

31. An article, published on 13/10/2017, on the awarding of the ‘MANGO award’ to the best emerging artist participating in the ‘SWAB Barcelona 2017 Art Fair’.

32. Two look books for the August 2013 and Fall/Winter 2017 collections.

33. Two sustainability reports for 2015 and 2017, which describe the ‘MANGO’ business model and approach to customer experience, history and value chain; they also show that the ‘MANGO’ trade mark is present in all 28 Member States, with a total of 1 524 shops in Europe in 2017 (this number includes all European countries, including non-Member States). One of the reports states that ‘at 31 December 2017, MANGO was present in 110 countries through 2 190 stores, 979 of which were company-owned and 1,211 franchises, with a total selling space of 812 723 m²’.

34. An article ‘Our new collection MANGO Committed is committed with the environment’, including the following.

The MANGO Chair of Social Responsibility at the Higher School of International Trade (ESCI-UPF) attached to the Pompeu Fabra University of Barcelona has as its main objective to deepen the knowledge of CSR and analyze the sustainability of economic and business activity, combining the Academic rigor and practical application.

35. Images of posters, catalogues and magazines under the ‘MANGO’ trade mark between 2013 and 2015.

36. A screenshot of a mailing campaign, dated 02/02/2015, related to the organisation of the fashion show ‘MANGO’ for Summer/Spring 2015.

37. Screenshots of videos and articles featuring fashion shows organised under the ‘MANGO’ trade mark.

38. Images of ‘MANGO’ shop windows from 2013 to 2017.

39. An article from the website emprendedores.es, dated 06/07/2015, mentioning the following data:

a. FRANCHISE DATA ‘Country of origin: Spain. Year of incorporation: 1984. Year of creation of the chain: 1984. Number of own premises: 979. Number of franchised premises: 1211. Number of premises abroad: 1838. Franchising company: PUNTO FA, SL. Priority expansion areas: Worldwide.’

b. ‘The flag offers its franchise system for ‘the entire European Union and the main capitals and cities of the rest of the world’ and makes available to the franchisee ‘continuous management advice, as well as a comprehensive service that covers all aspects of the product marketing.’ In addition, it is a franchise that allows goods¹ on deposit. Mango also offers the franchisor ‘a continuous attention in window dressing, advertising, training and merchandising that ensures that the own stores and franchises present the same image and level of service’.

40. A template of a franchise agreement.

41. Invoices from 2013 to 2017 for a range of clothing articles, footwear and headgear (Class 25), bags, wallets, umbrellas (Class 18), jewellery (Class 14), sunglasses and cases for sunglasses (Class 9) for clients in different countries: France, Germany, Italy, the Netherlands, Portugal, Spain and the United Kingdom.

42. Decisions of the First Board of Appeal of 03/10/2018 in the related cases R 1844/2017‑1 and R 2093/2017‑1, limango / MANGO (fig.) in which the EUTM proprietor opposed the registration of the EUTM No 30 781 282 ‘limango’ invoking as earlier mark the contested EUTM, and decision of the Opposition Division in the case 20/12/2019, No B 3 050 660. In the first decision the BOA acknowledged the reputation of the ‘Mango’ mark for goods in Class 25.

ASSESSMENT OF GENUINE USE – FACTORS

Time of use

The evidence must show genuine use of the contested EUTM 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 EUTM has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The evidence shows that the place of use consists of several Member States such as Germany, Spain, France, Italy, the Netherlands or Portugal. This can be inferred from the language of the documents (e.g. the invoices and press clippings or articles) and some addresses in the abovementioned countries. 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 EUTM is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The evidence submitted, when assessed as a whole, shows that the contested EUTM was used in such a way as to identify particular goods thus making it possible for the relevant consumer to link the goods to a certain commercial origin and to distinguish them from the goods of other manufacturers.

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 EUTM. 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 contested EUTM is the figurative mark . It was used as shown below.

The use of slightly different stylised writing or its absence does not alter the distinctive character of the mark as registered. The signs used show use of the mark as registered, or in a form essentially the same as that registered, and, therefore, this constitutes use of the contested EUTM under Article 18 EUTMR.

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).

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 obligation to produce evidence of genuine use of a trade mark is not designed to monitor the commercial success or to review the economic strategy of an undertaking. 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).

Furthermore, 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 EUTM is registered (nature of use: use in relation to the registered goods and services).

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.

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).

For part of the contested goods and services (see more on this below), the evidence, especially the invoices corroborated by the press articles, gives sufficient information regarding the extent of use of the mark, the commercial volume, the duration and the frequency of use.

The Cancellation Division will now proceed to explain in depth for which specific goods/services extent was proven and, consequently, for which contested goods/services the proprietor demonstrated genuine use of the contested mark.

Use in relation to the registered goods and services

Contested goods in Class 3

 Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; hair lotions; dentifrices.

The proprietor failed to prove that it used the contested EUTM for any of the registered goods in this class. Furthermore, it did not make any reference in its arguments to these goods. Consequently, the proprietor’s rights will be revoked as regards these goods.

Contested goods in Class 9

 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; 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, data processing equipment and computers; fire-extinguishing apparatus.

The EUTM proprietor claimed that it genuinely used the EUTM in relation to scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers.

In relation to the abovementioned goods, the Cancellation Division notes that the only goods in this class that appear to have been commercialised by the EUTM proprietor are sunglasses and cases for sunglasses (which appear mostly in the invoices from Annex 41). Although the evidence indicates a low commercial volume of use, it shows use of the EUTM in several Member States, namely, Germany, Spain, France, the Netherlands and Portugal throughout the relevant period. In fact, sunglasses, which are listed as such in the trade mark specifications, were not contested by the applicant. Nevertheless, they are also covered by the general specification of goods optical apparatus and instruments, which were contested by the applicant. Sunglasses can form a coherent category of goods under optical apparatus and instruments and consequently genuine use of the EUTM will be acknowledged for the subcategory of goods: optical apparatus and instruments, namely sunglasses. As regards cases for sunglasses, these goods belong to a category called accessories for optical instruments for which the mark is not protected.

The proprietor claims that the documents in Annexes 1-6 show use of the EUTM for the remaining goods. The Cancellation Division disagrees with this claim.

Some documents prove the existence of a website of an entity named ‘Cátedra Mango’ at the ‘School of International Studies of the Pompeu Fabra University’ in Barcelona, Spain and of a tool for calculating the carbon footprint of a logistic chain displaying no trade mark. This tool is an online tool, which is software; it has nothing to do with the scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments as claimed by the proprietor. Furthermore, there is no evidence that the tool is called ‘MANGO’ so that it could be considered as software belonging to the general category of data processing equipment, or that the EUTM proprietor provided this online tool to others in a commercial way, that is, with the intention to create a market share for the respective goods.

Furthermore, some documents show both the existence of an association between ‘MANGO’ and the Shazam mobile app to create and offer ‘an in-store music’ giving in‑store consumers ‘the opportunity to access MANGO’s music playlist through Shazam’s app’, and the existence of a ‘MANGO’ app. In the first case, the application on which the music will be accessed is Shazam, whereas, in the second case, on the basis of the evidence submitted, it is not possible to determine that the ‘MANGO’ app has created a market position for the EUTM proprietor beyond the promotional purpose of the app, even though it was downloaded millions of times worldwide. The evidence does not show that the app was made available for free or for a fee, but the market reality is that these applications are provided free of charge, with the aim of enabling the customers to buy online the goods they are interested in. Since there is no evidence to the contrary, the Cancellation Division finds that the evidence concerning the app in question merely shows use that was purely promotional to support the sales of clothing under the mark ‘MANGO’, but does not show a serious intention of the proprietor to create a position on the market of mobile applications.

The documents under Annex 4 show a franchise agreement allegedly used by the EUTM proprietor for all agreements with its EU franchisees, called ‘specifications of the ambience musical system’, which includes the rental and maintenance of a music player called ‘MP-7000 MANGO’. This is a hardware system for playing music in ‘MANGO’ stores that includes broadcasting software specifically designed for the reproduction of music in the stores. This document shows, in the proprietor’s opinion, the use of the ‘MANGO’ trade mark for apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs and data processing equipment and computers. However, from the document, it is not clear who the parties are (franchisee and franchisor). The document shows that the ambience musical services will be provided by a third-party marketing company and that a media company will ‘supply’ some services. These include ‘the rental and maintenance of a music player called MP-7000 MANGO, which has a central unit that allows the musical content’ created by the respective media company to be played in the store. Furthermore, there is no evidence that the hardware system was ever supplied to third parties (i.e. not only to MANGO stores), nor whether this supply of music in stores was sufficient as to create or preserve an outlet for the EUTM proprietor, and was more than a marketing aid.

As regards automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines; fire-extinguishing apparatus, the EUTM proprietor did not provide evidence of use of the contested mark or make any reference to these goods in its arguments.

Therefore, as regards the contested goods in this class, a genuine use of the EUTM will be acknowledged only for optical apparatus and instruments, namely sunglasses, whereas the proprietor’s rights will be revoked for the rest of the contested goods.

Contested goods in Class 16

 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; patterns for making clothes; patterns for dressmaking; stencil cases; plans; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

The EUTM proprietor claims genuine use for all goods in this class, focusing its arguments on paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; plastic materials for packaging (not included in other classes). Nevertheless, the evidence does not allow the Cancellation Division to reach a conclusion that the use of the mark was sufficient to create or preserve an outlet for the goods concerned in this class.

The evidence shows the existence of magazines, catalogues, posters, flyers, etc, on which the ‘MANGO’ figurative mark appears. However, there is no evidence that these items were actually marketed, by the proprietor or its franchisee companies. In other words, it is not clear whether the abovementioned goods were put on sale and to what extent. Therefore, the Cancellation Division is in the position of having to make an assumption. Typically such items are distributed for free and the Cancellation Division’s opinion is, in the absence of any evidence to the contrary, that these goods were distributed, not in order to enter the market of periodicals, but rather to serve as promotional items for the fashion articles displaying the EUTM.

The same applies to the paper goods such as paper bags as well as other packaging, carton boxes, paper labels or the paper rolls for receipts. The EUTM proprietor did not intend to enter the paper bag market and sell paper bags or paper labels under its mark to other companies, nor is there evidence that these items were commercialised to the public. Consumers understand that the large mark printed on a paper bag does not indicate the commercial origin of the paper bag itself, but merely advertises the trade mark used for whatever goods were originally placed in the bag, in this case fashion articles such as clothing, footwear, jewellery. Similarly, the trade mark that is printed on paper rolls for receipts or paper labels does not constitute use of the trade mark for these goods; these goods serve as proof of the purchase of the clothing article displaying the ‘MANGO’ mark, identify the origin of the respective clothing article (indicating that it is a genuine ‘MANGO’ item) or are a mere advertising media for the ‘MANGO’ trade mark. There is no evidence that any of these goods were sold or offered for sale to the public by any entity affiliated to the EUTM proprietor.

The criteria of ‘genuine use’ is not fulfilled where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter. In such cases, the mark does not compete on the market for the goods for which it is registered and the consumer does not commit any conscious act of acquiring the goods by comparing it with other similar, substitutable ones (15/01/2009, C‑495/07, Wellness, EU:C:2009:10, § 19).

There is no evidence of use of the mark in connection with the remaining goods in this class.

Consequently, the proprietor’s rights will be revoked in relation to all the contested goods in Class 16.

Contested services in Class 35

 Advertising, including online advertising on a computer network; rental of advertising space; organisation of exhibitions and trade fairs for commercial or advertising purposes; outdoor advertising; dissemination of advertising matter, direct mail advertising; advertising mail; updating of advertising material; sales promotions for others; shop-window dressing; demonstration of goods; distribution of samples; modelling for advertising or sales promotion; press reviews; retailing of clothing, perfume and personal accessories.

The EUTM proprietor claimed that it provided the services in Class 35 to third parties since, apart from owning its own stores, it possessed a franchising chain and, therefore, provided advertising and related services to third parties (e.g. its franchisees). Furthermore, it stated that it made its own promotional campaigns of all types to support the sales of its own products. The Annexes 12 to 38 are, in its opinion, clear examples of continuous advertising online and offline, and presence in media and social media through campaigns, look books, collections, films and events, including fashion shows and music festivals. The EUTM proprietor further claimed that it continuously invested in the most prominent advertising spaces, such as digital mega billboards, buses, facades of prominent buildings, and that the evidence showed continuous investment in sponsored articles and advertising in the most well-known fashion magazines and newspapers online and offline. Furthermore, the evidence showed, in its opinion, that it was particularly active in the social media environment, obtaining thousands of posts and hundreds of thousands of likes and views. Finally, the EUTM proprietor highlighted that it invested heavily in its store services, always innovating the ways to offer them and how to best satisfy its clients with services that ensured that the clients chose ‘MANGO’ over its competitors.

However, the Cancellation Division considers that advertising services (which refers to the majority of the contested services in this class and, in particular, to the contested advertising, including online advertising on a computer network; outdoor advertising; direct mail advertising; advertising mail; updating of advertising material) consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. Therefore, a company, such as the proprietor’s that produces fashion articles such as clothing, footwear, headgear, sunglasses, bags and advertises its own goods, cannot be qualified as advertiser.

The Cancellation Division considers that, in the case at issue, the advertisement, presentation or demonstration of the goods designed/manufactured by the proprietor are, in fact, ancillary to the production and sale of its own goods, and that handing out promotional items does not equal genuine use for the registered services: distribution of samples. The issue is not whether there is an end-consumer involved, but whether any third party at any level of the supply chain (i.e. the relevant public), enjoys the benefit of the relevant services so that it does not have to carry out the specific activity itself or is able to build on another party’s expertise in a specific area.

Furthermore, the Cancellation Division is of the opinion that the purpose of the EUTM proprietor of sponsoring events and campaigns and sending press reviews where different items of its fashion goods appeared in the press or at fashion shows where the proprietor’s goods were presented was to gain recognition in the market for its own goods or to promote its business of designing fashion articles. All the advertising done in relation to the sponsorship events and with relation to its participation in different showrooms, catwalks, etc was to promote the EUTM proprietor’s business, while at the same time sponsoring an event that it had arranged or was part of. As such, this is not the provision of services to third parties as required by organisation of exhibitions and trade fairs for commercial or advertising purposes or modelling for advertising or sales promotion, but it is for self-interest and promotion.

The fact that the EUTM proprietor is advertising its own goods and that its franchisees are benefiting from this advertising too does not mean that the EUTM proprietor is providing advertising services to third parties, nor that it provides rental of advertising space; sales promotions for others or shop-window dressing for others. The proprietor is actually advertising its own trade mark within its own group and in the interest of its franchise business, and it does not advertise third-party goods.

The EUTM proprietor does not provide press reviews or dissemination of advertising services by its press clippings, through the appearance of the EUTM in the news articles or by means of advertising the ‘MANGO’ trade mark. The fact that the EUTM appears in news articles/media in general, and the proprietor publishes or makes reference to these articles/events on, for example, its website does not constitute a provision of advertising services to third parties.

The Cancellation Division is of the opinion that the main purpose of the respective news clipping and of disseminating the advertisements to third parties is, again, for the proprietor’s self-interest or promotion; any other implications that this action might have would be ancillary and without a commercial purpose in the sense that they would not be made with the purpose of creating or preserving an outlet for the services concerned. The ultimate goal of the proprietor’s actions is to encourage the relevant public to purchase its goods and the fact that through this activity it also gives visibility to third-party media/events is ancillary.

The same applies to the demonstration of goods, namely of apparel and accessories, in order to facilitate the purchase these products. Such activities are in fact additional auxiliary services integrated in the selling process of the respective goods.

As regards the proprietor franchising, this is a way of doing business and a form of licensing, where a franchisor licences its intellectual property to a franchisee. The relationship involves a franchisor granting rights to a franchisee to market and distribute their goods and services under the franchisor’s brands and using the franchisor’s systems. The franchisee is operating an independent business while sharing a brand with the franchisor and other franchisees. Usually, a franchisee is not free to develop and use advertising or marketing materials that have not been reviewed and approved by the franchisor in advance. However, all this is an internal affair and cannot be regarded as a provision of advertising services to third parties in the sense of Class 35 of the Nice Classification.

Finally, the EUTM proprietor claims it provides retail of clothing, perfume and personal accessories in Class 35.

Retail services are defined in the explanatory note of the Nice Classification as

… the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

Therefore, it follows that the concept of ‘retail services’ relates to three essential characteristics: firstly, the purpose of these services is the sale of goods to consumers; secondly, they target consumers with a view to enabling them to conveniently view and purchase the goods; and, thirdly, they are provided for the benefit of others (04/03/2020, C‑155/18 P, C‑156/18 P, C‑157/18 P & C‑158/18 P, BURLINGTON / BURLINGTON ARCADE et al., EU:C:2020:151, § 126). The ‘others’ benefiting from the ‘bringing together of a variety of goods’ are the various manufacturers looking for an outlet for their goods.

The Court has held that the objective of retail trade is the sale of goods to consumers. This includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of this transaction. This activity consists in, inter alia, selecting an assortment of goods offered for sale and offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question, rather than with a competitor (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34). For example, the concept of ‘retail services’ includes a shopping arcade’s services aimed at consumers with a view to enabling them to conveniently view and purchase the goods, for the benefit of the businesses occupying the arcade concerned (04/03/2020, C‑155/18 P, C‑156/18 P, C‑157/18 P & C‑158/18 P, BURLINGTON / BURLINGTON ARCADE et al., EU:C:2020:151, § 130). The Court has confirmed that services can also be the subject of retail trade as there are situations in which a trader selects and offers an assortment of third-party services so that the consumer can choose among those services from a single point of contact (10/07/2014, C‑420/13, Netto Marken Discount, EU:C:2014:2069, § 34).

In the same way that advertising one’s own goods does not constitute use for advertising services in Class 35, as explained above, there is no use for retail services in Class 35 where the manufacturer is merely selling its own goods from its shop or website. The sale by the manufacturer of its own goods is not an independent service, but an activity covered by the protection conferred by registration for the goods. It would not be appropriate to equate the protection conferred by the registration for goods in any of Classes 1 to 34 with that conferred by registration for Class 35 retail services. While manufacturers may provide ancillary services (such as maintaining an outlet with shop assistants, advertising, consultancy, after-sales services) in the course of the sale of their own goods, these activities fall within the concept of a remunerated ‘service’ only if they do not form an integral part of the offer for sale of the goods (10/07/2014, C‑421/13, Apple Store, EU:C:2014:2070, § 26). Consequently, if a manufacturer uses a trade mark in relation to activities that form an integral part of the offer for the sale of its own goods, there is no use for retail services of these goods in Class 35. This interpretation is also confirmed by the examples of (infringing) use provided in Article 9(3) EUTMR.

Furthermore, this sales activity would not be in line with the definition of ‘retail services’ as provided in the explanatory note to the Nice Classification and interpreted by the Court, because it does not entail any benefit for third-party manufacturers. Therefore, an essential characteristic of retail services is missing.

Furthermore, genuine use must be consistent with the essential function of a trade mark. The trade mark used in relation to an outlet for the manufacturer’s own goods serves to distinguish those goods from goods of other manufacturers, but not to distinguish the services provided through that outlet from those provided through other outlets. Manufacturers selling their own goods from their own shops compete on the market of the goods they are selling, but do not compete on the retail services market, which targets third-party manufacturers. Operating a shop exclusively for the purpose of selling the manufacturer’s own goods excludes offering competing goods from third-party manufacturers.

The only exception to the above would be when bringing together goods offered by third parties, including, in addition to goods offered by other traders, goods that it itself manufactures. However, this exception is not present in this particular case since the EUTM proprietor does not commercialise goods from third parties together with the goods it produces under its own mark.

As the EUTM proprietor has not shown that any of the services in Class 35 were actually provided to third parties independently, then the EUTM proprietor has failed to show genuine use in relation to these services.

The EUTM proprietor referred in its arguments to case-law to support its arguments. In particular, it provided as an example of such a possibility to provide services in Class 35 to support sales of own product, the case of another brand operating in the same fashion sector, ZARA (which covers similar products and, in particular, services in Class 35), which was recognised to be reputed for the products in Class 25 and for the provision of services in Class 35 by the Second Board of Appeal in its decision of 05/07/2017 (in joined cases R 2330/2011‑2 and R 2369/2011‑2, ZARA TANZANIA ADVENTURES (Fig.) / ZARA et al.), which was later confirmed by the General Court in its judgement of 11/04/2019, T‑655/17, ZARA TANZANIA ADVENTURES (Fig.) / ZARA et al., EU:T:2019:241.

However, the Cancellation Division agrees with the applicant that the case the proprietor refers to is not relevant to the present proceedings. The action before the General Court in the abovementioned case, relied on a single plea in law, namely, the infringement of Article 8(5) EUTMR, and the Court partially upheld the action. It found, in essence, that the Board of Appeal erred in finding that the use of the EUTM application in that particular case would not result in a risk of unfair advantage being taken of the distinctive character or the repute of the earlier mark. Consequently, the Court did not enter into an assessment regarding the genuine use of the earlier ‘ZARA trade mark for services in Class 35. Furthermore, the judgment in the ‘ZARA’ case, 11/04/2019, T‑655/17, ZARA TANZANIA ADVENTURES (Fig.) / ZARA et al., EU:T:2019:241, was issued prior to the judgment of the Court of Justice of 04/03/2020, C‑155/18 P, C‑156/18 P, C‑157/18 P & C‑158/18 P, BURLINGTON / BURLINGTON ARCADE et al., EU:C:2020:151 in which the Court of Justice explained the concept of ‘retail services’ as described above.

Overall assessment and conclusion

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

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; hair lotions; dentifrices.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; optical apparatus and instruments (except sunglasses); 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, data processing equipment and computers; fire-extinguishing apparatus.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; patterns for making clothes; patterns for dressmaking; stencil cases; plans; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 35: Advertising, including online advertising on a computer network; rental of advertising space; organisation of exhibitions and trade fairs for commercial or advertising purposes; outdoor advertising; dissemination of advertising matter, direct mail advertising; advertising mail; updating of advertising material; sales promotions for others; shop-window dressing; demonstration of goods; distribution of samples; modelling for advertising or sales promotion; press reviews; retailing of clothing, perfume and personal accessories.

In addition, the EUTM proprietor did not put forward any proper reasons for the non-use for the above goods and services.

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 08/12/2017.

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(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

Michaela SIMANDLOVA

Ioana MOISESCU

Pierluigi M. VILLANI

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.