CANCELLATION No 14 646 C (REVOCATION)

HGF BV, Gedempt Hamerkanaal 147, 1021 KP Amsterdam, The Netherlands (applicant), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP Amsterdam, The Netherlands (professional representative)

a g a i n s t

Greenwich Polo Club, Inc., 80 Field Point Road, Greenwich, CT 06830, United States of America (EUTM proprietor), represented by Edwin Coe LLP., 2 Stone Buildings, Lincoln's Inn, London WC2A 3TH, United Kingdom (professional representative).

On 29/11/2018, 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 3 950 011 are revoked as from 20/03/2017 for some of the contested goods, namely:

Class 9: Photographic, cinematographic and optical apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; computers, computer hardware and computer software, parts and fittings for all the aforesaid goods; electronic publications (downloadable); interactive computer software; apparatus for searching electronic information from a global computer network or the Internet; computer programs, namely, software linking digitised video and audio media to a global computer information network; arcade games adapted for use with television receivers only; CD-ROM games; video and computer game programs; video game discs, cartridges and cassettes; digital music (downloadable) provided from the Internet; digital music (downloadable) provided from MP3 Internet web sites; MP3 players; motion picture films, and motion picture films for broadcast on television; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes; digital versatile discs; stereo headphones; batteries; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitation of leather or of cloth or textile materials; telephone and/or radio pagers; hand-held calculators; hand-held karaoke players; cinematographic films and recordings; cameras; audio cassette recorders and players; video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players, electronic diaries; radios; mouse pads; mouse mats; eyeglasses, sunglasses and cases therefore; encoded magnetic cards, phone cards, credit cards, cash cards, debit cards and magnetic key cards; decorative magnets; swimming floats; swim boards.

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; clocks; alarm clocks; desk clocks; watches; alarm watches; sporting watches; coffee services, containers, cruet sets, flasks, penknives, tankards, tea services and trays, all of precious metal or coated therewith; jewellery; costume jewellery; bracelets, ankle bracelets; brooches; chains; charms; cuff-links; earrings; lapel pins; tie pins; tie clips; necklaces; ornamental pins; pendants; rings; key rings, all of precious metal or coated therewith; belt buckles of precious metal or coated therewith for clothing; figurines (decorative) of precious metal or plated therewith; wall decorations of precious metal; cases for clocks, watches or jewels; cases and containers of precious metal; coins.

Class 24: Textiles, not included in other classes; travelling rugs and lap rugs; canopies, bed pads, crib bumpers, mosquito nets, pillow shams; sleeping bags (sheeting); cloth; napkins, serviettes; kitchen linens, namely, barbecue mitts, cloth doilies, cloth napkins, dish cloths, tea cloths and tea towels, kitchen towels, oven mitts, washing mitts, pot holders, cloth coasters; curtains; draperies; curtain holders of cloth; banners; handkerchiefs; coverings of plastic for furniture; covers for toilet lids of fabric; textile wall hangings; cotton, polyester and/or nylon fabric, fabric of imitation animal skins; upholstery fabrics; lingerie fabric.

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

Class 24: Textile goods, not included in other classes, bed and table covers; towels; bed linen, blankets, bedspreads, quilts, bed sheets, pillow cases, comforters, duvet covers, mattress covers; fabric table covers and table linen; place mats; table runners; fabric table cloths, fabric place mats, fabric table runners; bath linen; bath towels, face cloths and wash cloths; towelling robes; household linen; mats of linen; coverings of textile for furniture; covers for cushions; loose covers for furniture; shower curtains; golf towels.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 3 950 011 (the EUTM) for the figurative sign as shown below:

The request is directed against all the goods covered by the EUTM, namely against all the registered goods in Classes 9, 14 and 24.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM has not been used continuously for five years and therefore, it must be revoked.

The EUTM proprietor submitted evidence to prove the use of the EUTM which will be listed in detail below in the section entitled ‘Grounds for the decision’. The EUTM proprietor further argues that it is the owner of the well-established polo club ‘Greenwich Polo Club’ and that it has sold a wide variety of goods branded under this name for almost 20 years. The EUTM proprietor claims that the evidence submitted shows sufficient indications of place, time, extent and nature of use and that therefore, the application must be rejected.

Preliminary remark

On 01/02/2018 the applicant submitted its reply to the EUTM proprietor. However, the deadline to submit said observations ended on 24/12/2017. Therefore, on 13/03/2018 the Office informed the parties that the observations would not be taken into consideration as they were received outside of the time limit and closed the adversarial part of the proceedings. On 15/03/2018 the applicant submitted a copy of an extension request which it claimed had been submitted on 21/12/2017 and it also claimed that this extension had been confirmed by the Office. However, the document submitted by the applicant is clearly marked as ‘DRAFT’ and is not a copy of the final document or a receipt and no confirmation has been submitted. Moreover, there is no record of any confirmation being sent or communicated to the applicant. Therefore, the applicant has not shown that the extension request was submitted in due time and this deadline cannot be extended. As such, the applicant’s observations of 01/02/2018 cannot be taken into consideration.

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 24/07/2006. The revocation request was filed on 20/03/2017. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 20/03/2012 to 19/03/2017 inclusive, for the contested goods:

Class 9: Photographic, cinematographic and optical apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; computers, computer hardware and computer software, parts and fittings for all the aforesaid goods; electronic publications (downloadable); interactive computer software; apparatus for searching electronic information from a global computer network or the Internet; computer programs, namely, software linking digitised video and audio media to a global computer information network; arcade games adapted for use with television receivers only; CD-ROM games; video and computer game programs; video game discs, cartridges and cassettes; digital music (downloadable) provided from the Internet; digital music (downloadable) provided from MP3 Internet web sites; MP3 players; motion picture films, and motion picture films for broadcast on television; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes; digital versatile discs; stereo headphones; batteries; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitation of leather or of cloth or textile materials; telephone and/or radio pagers; hand-held calculators; hand-held karaoke players; cinematographic films and recordings; cameras; audio cassette recorders and players; video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players, electronic diaries; radios; mouse pads; mouse mats; eyeglasses, sunglasses and cases therefore; encoded magnetic cards, phone cards, credit cards, cash cards, debit cards and magnetic key cards; decorative magnets; swimming floats; swim boards.

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; clocks; alarm clocks; desk clocks; watches; alarm watches; sporting watches; coffee services, containers, cruet sets, flasks, penknives, tankards, tea services and trays, all of precious metal or coated therewith; jewellery; costume jewellery; bracelets, ankle bracelets; brooches; chains; charms; cuff-links; earrings; lapel pins; tie pins; tie clips; necklaces; ornamental pins; pendants; rings; key rings, all of precious metal or coated therewith; belt buckles of precious metal or coated therewith for clothing; figurines (decorative) of precious metal or plated therewith; wall decorations of precious metal; cases for clocks, watches or jewels; cases and containers of precious metal; coins.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; travelling rugs and lap rugs; towels; bed linen, blankets, bedspreads, quilts, canopies, bed pads, bed sheets, pillow cases, comforters, duvet covers, mattress covers, crib bumpers, mosquito nets, pillow shams; sleeping bags (sheeting); cloth; fabric, table covers and table linen; place mats; napkins, serviettes and table runners; kitchen linens, namely, barbecue mitts, cloth doilies, cloth napkins, dish cloths, tea cloths and tea towels, fabric table cloths, kitchen towels, fabric place mats, oven mitts, washing mitts, fabric table runners, pot holders, cloth coasters; curtains; draperies; curtain holders of cloth; banners; handkerchiefs; bath linen; bath towels, face cloths and wash cloths; towelling robes; household linen; mats of linen; coverings of textile and of plastic for furniture; covers for toilet lids of fabric; covers for cushions; loose covers for furniture; textile wall hangings; shower curtains; cotton, polyester and/or nylon fabric, fabric of imitation animal skins; upholstery fabrics; lingerie fabric; golf towels.

On 08/09/2017 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.

The evidence to be taken into account is the following:

• Annex 1: Witness Statement of Nicholas Durbridge of 07/09/2017. He states inter alia, that Performance Licensing Company was the exclusive worldwide representative of the proprietor from 1999 and that also the Copyrights Group acted as the exclusive worldwide representative from 1999 until May 2017. He points out that the brand has been advertised and sold under the following signs . He speaks about the license agreements which have been in place in Greece with a number of companies who sell the EUTM branded goods since 2014 to date and also the possible Spanish proposed licence coming into effect on 01/05/2017.

• Exhibits: NFD1-2: Documents evidencing representation agreements between the proprietor and Performance Licensing Company from 1999 and later with The Copyrights Group Limited in May 2017.

• Exhibit NFD3: Printouts from the proprietor’s website which it claims shows that is has a reputation in the field of polo sport and which bears the only date indication of ‘copyright © 2017’. This document provides a history of the proprietor’s Polo Club which was established in 1981 and which has hosted many famous people and celebrities as well as some of the best polo players in the world.

• Exhibit NFD 4: What appears to be a brochure by the Copyrights Group showing different products marked under the ‘GREENWICH POLO CLUB’ brand in Japan but also for products in Greece, which involve different types of towels and bathrobes, pillow protection slips, duvet covers and bed sheet; it also shows different types of clothing. The evidence shows that the proprietor is using a number of different signs which all contain a horse and polo player holding a polo stick aloft, together with the words ‘GREENWICH’ above the words ‘POLO CLUB’ like (in a variety of different colours) and . The document is not dated.

• Exhibit NFD5: Licence agreements in place in the EU.

• Exhibits NFD6-8 and NFD16: Examples of licensed products marketed and sold in the EU through licenses. The documents refer to the period between 2014 and December 2017 and the same goods and signs as listed under Exhibit NFD4; some of the screen shots are dated after the end of the relevant period while others use the wayback machine to show the pages during the relevant period.

• Exhibits NFD9-11 and NFD14-15: The Copyrights Group’s promotion of the Greenwich Polo Club brand on its website from 2014-2017, the Licensing Source Book Europe 2014-2015, email to trade press dated 2015 and information about their participation in the Brand Licensing Europe shows and invoices to show that they rented exhibition space at the shows for the years 2012-2017.

• Exhibit NFD12: Extracts from Total Licensing’s website detailing its business with a copyright © 2012 notice but referring to 2017 and dates after the end of the relevant period.

• Exhibit NFD13: Extracts from www.licensingsource.net and www.max-publishing.co.uk websites which explain the distribution and circulation of The Licensing Source Book which states that it has over 20,000 readers globally which are licensors, licensees and retailers with 60% located in the UK and 20% in Europe.

• Exhibit NFD16: Screenshots of the television advertisment that was launched in October 2015 by Masoutis in Greece which shows the EUTM on bed linen. One fo the screenshots shows the date 20/10/2015 for the offer. It also contains extracts from www.1src.com and www.youtube.com which show that the advert was available to view as of 04/11/2015.

• Exhibits NFD17-18: Extracts from Masoutis’ website which provide information concerning its distribution (267 stores, 245 supermarkets, 22 wholesale cash and carry outlets and a logistics centre throughout Greece) and large customer base and a summary of Masoutis’ in-store promotion of the EUTM branded goods in 2015 under the sign .

• Exhibits NFD19-20: Turnover and royalty figures for sales in Greece and also in other territories. The figures for sales in Greece begin in Q2 of 2015 for three different companies and are substantial. The figures come from an unknown source, probably the proprietor itself.

• Annex 2: Witness Statement of Polly Emery dated 08/09/2017. It states that the Copyrights Group has circulated the EUTM brand since at least 2011 to trade press.

• Exhibit PE1: Examples of editorials and visuals that were sent out to the trade press to promote the EUTM via email dated 2015.

• Exhibit PE2: Brand materials sent to international agents to promote, sell and market the brand via email dated 2015. It shows examples of different goods branded with GREENWICH POLO CLUB, most of which are not registered goods, but some include bed linen, bathrobes and towels for sale in Greece, along with other goods being sold outside of the EU and a range of many goods for which the EUTM is not registered, like clothing, beer etc, and the sign it speaks of having agents for the brand in Greece, Israel, Spain, Portugal and Japan and new branded apparel, accessories and homeware for 2016.

• Exhibit PE3: Redacted copy of email correspondence from PJB Brand Limited to Polly Emery presenting the licence terms for the future licence agreement with Vision AP DWW-LLC covering Spain dated just after the end of the relevant period in March 2017 which appear to confirm that the deal can now proceed in relation to Spain.

• Annex 3: Witness Statement of Simon Miles dated 08/09/2017 where he states that his Intellectual Property department has acted for the Copyrights Group Ltd in managing the proprietor’s portfolio since in or around January 2012. He also confirms that the first notice that his firm had of the revocation action was on 04/04/2017 when the action was notified to them.

• Annex 4: Photographs and products marketed by various entities using an image of a polo player and horse together with the word ‘POLO’ or as part of a polo club.

Assessment of genuine use – factors

Time of use

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

Although some of the evidence of use is dated outside the relevant time period, like, for example, the licensing agreement signed in 1999 or the email correspondence concerning the potential licensing agreement dated after the end of the period in 2017, they can shed light on the evidence dated during the relevant time period and also show a continued use before, during and after the relevant period. Moreover, indeed most of the evidence is dated within the relevant period, and for the most part from 2014 to 2017. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

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

The licence agreements, advertising, invoices for the renting of space at trade exhibitions, sales and royalty figures and emails show that the place of use is mainly Greece, but also the United Kingdom and Spain. This can be inferred from the language of the documents (Greek and English), the currency mentioned (EURO and GBP), the licensing information in contracts and email correspondence and some addresses in Greece and the UK. Therefore, the evidence relates to the relevant territory.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers. It is clear from the evidence submitted that the use that has been made of the sign is use as a trade mark to indicate origin.

Nature of use: use of the mark as registered

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

The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

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

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

The sign as registered is shown below:

The evidence of use shows use of the signs:

1) 2)

It is noted that all of the signs as used contain the three verbal elements GREENWICH POLO CLUB and the depiction of a man playing polo with a polo stick up in the air. However, the depiction and arrangement of the elements are different in each sign. The term GREENWICH POLO CLUB does not have any meaning in relation to any of the relevant goods and therefore, is distinctive. The image of the polo player is very large and as such, dominant in the sign, moreover, it is also distinctive in relation to the goods. The EUTM proprietor submitted evidence to try to show that the depiction of a polo player is used heavily in trade marks and that it is not distinctive. However, examples existing on the Register are insufficient to show that the consumers are used to viewing this device and will disregard it for not being distinctive. Therefore, it is the sign as a whole that is distinctive. The Cancellation Division notes that, although the arrangement of the elements is different in all of the signs they all contain the distinctive verbal element GREENWICH written above POLO CLUB (even if not in the same exact manner), they also all contain a depiction of a polo player with his stick in the air and coincide, for the most part, in the colouring of the elements. As all of the distinctive and dominant elements are contained within each of the signs, albeit in a different layout or colour, the Cancellation Division considers that the use shown does not alter the distinctive character of the sign as registered.

Extent of use

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

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

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

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

The EUTM was advertised to possible licensees and others in the industry in trade fairs in the UK from 2012-2017. Moreover, as mentioned above, there were licence agreements in place for some of the goods with a number of different companies in Greece during the relevant period. Moreover, there were negotiations under way to secure a new licence agreement for the sale of goods in Spain, although this admittedly, did not come into effect until after the end of the relevant period and has not been officially proven, although it is noted that steps were being taken to create a new outlet for the goods in this territory. The Licensing Source Book is distributed in the EU and the proprietor has submitted concrete evidence which refers to at least 3 Member States of the EU.

The evidence of sales of goods under the EUTM consists of table of figures for sales and royalties which is from an unknown source, but presumably is from the EUTM proprietor itself or its licensees. These tables show substantial sales, at least in relation to part of the goods for which the EUTM is registered. However, this evidence is not independent. The proprietor did not submit any invoices for sales of the goods themselves. However, it did submit copies of brochures and advertising materials which show that the goods are sold under license by companies in Greece and being advertised in the EU to professional clients who might wish to license the brand. Moreover, it produced screenshots of the television advertisement placed in Greece along with a picture of a YouTube video, which is dated within the relevant period, of the same video, and advertisements in Greece for the sale of the EUTM branded goods in a chain of stores throughout the relevant territory. The evidence showing the advertisement of the brand in the trade publications which are aimed at licensees, licensors and others in business, the promotion of the brand in the trade fairs in the UK, which exposes the brand to consumers to create an outlet for the brand in the EU, and support the figures for sales and royalties of the brand provided. The evidence is certainly not very strong, but there are sufficient indications to show the extent of use of the EUTM, at least in relation to some of the contested goods.

Use in relation to the registered goods

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

The contested EUTM is registered for goods in Classes 9,14 and 24 as listed in detail under the section ‘Grounds for the Decision’ above. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation in respect of only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

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

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 24: Textile goods, not included in other classes; bed and table covers; towels; bed linen, blankets, bedspreads, quilts, bed sheets, pillow cases, comforters, duvet covers, mattress covers, fabric table covers and table linen; place mats; table runners; fabric table cloths, fabric place mats, fabric table runners, bath linen; bath towels, face cloths and wash cloths; towelling robes; household linen; mats of linen; coverings of textile for furniture; covers for cushions; loose covers for furniture; shower curtains; golf towels.

The contested EUTM is also registered for textile goods, not included in other classes, in Class 24. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it. The evidence shows that the contested EUTM has been used for a broad range of bed and table covers, bed linen, towelling robes, towels and blankets which are all types of textile goods included in Class 24. Therefore, the Cancellation Division considers that the EUTM proprietor has also shown use in relation to the goods textile goods, not included in other classes, in Class 24.

In relation to the goods golf towels, it is unclear how these types of goods can be distinct from the general category of towels for which the EUTM proprietor has submitted evidence of use and therefore, they fall under the broad category of towels. Therefore, the evidence is sufficient to also prove use of these goods.

Some of the evidence submitted shows use of the sign on items of clothing and accessories. However, the EUTM is not registered for these goods. Moreover, these goods were sold in Japan and therefore, this evidence does not show use in the EU. The EUTM proprietor in its advertising material which it sends to potential licensees states that: ‘The brand is especially suited to lifestyle ranges such as apparel, footwear, bags and luggage as well as men’s and women’s fashion accessories’. However, it is noted that the EUTM is not registered for such goods and therefore, any promotion of the brand for these goods does not go towards showing use of the contested EUTM in relation to the registered goods.

Therefore, the Cancellation Division declares the EUTM to be revoked for the remaining goods for which it is registered.

Overall assessment

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

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors of place, time, extent and nature of use only in relation to some of the goods in Class 24 as specified above.

No indications of use in relation to the remaining goods were submitted, and therefore, in relation to these goods, an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the remaining relevant goods (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43). Therefore, the EUTM must be revoked for these remaining goods.

Conclusion

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

Class 9: Photographic, cinematographic and optical apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; computers, computer hardware and computer software, parts and fittings for all the aforesaid goods; electronic publications (downloadable); interactive computer software; apparatus for searching electronic information from a global computer network or the Internet; computer programs, namely, software linking digitised video and audio media to a global computer information network; arcade games adapted for use with television receivers only; CD-ROM games; video and computer game programs; video game discs, cartridges and cassettes; digital music (downloadable) provided from the Internet; digital music (downloadable) provided from MP3 Internet web sites; MP3 players; motion picture films, and motion picture films for broadcast on television; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes; digital versatile discs; stereo headphones; batteries; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitation of leather or of cloth or textile materials; telephone and/or radio pagers; hand-held calculators; hand-held karaoke players; cinematographic films and recordings; cameras; audio cassette recorders and players; video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players, electronic diaries; radios; mouse pads; mouse mats; eyeglasses, sunglasses and cases therefore; encoded magnetic cards, phone cards, credit cards, cash cards, debit cards and magnetic key cards; decorative magnets; swimming floats; swim boards.

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; clocks; alarm clocks; desk clocks; watches; alarm watches; sporting watches; coffee services, containers, cruet sets, flasks, penknives, tankards, tea services and trays, all of precious metal or coated therewith; jewellery; costume jewellery; bracelets, ankle bracelets; brooches; chains; charms; cuff-links; earrings; lapel pins; tie pins; tie clips; necklaces; ornamental pins; pendants; rings; key rings, all of precious metal or coated therewith; belt buckles of precious metal or coated therewith for clothing; figurines (decorative) of precious metal or plated therewith; wall decorations of precious metal; cases for clocks, watches or jewels; cases and containers of precious metal; coins.

Class 24: Textiles, not included in other classes; travelling rugs and lap rugs; canopies, bed pads, crib bumpers, mosquito nets, pillow shams; sleeping bags (sheeting); cloth; napkins, serviettes; kitchen linens, namely, barbecue mitts, cloth doilies, cloth napkins, dish cloths, tea cloths and tea towels, kitchen towels, oven mitts, washing mitts, pot holders, cloth coasters; curtains; draperies; curtain holders of cloth; banners; handkerchiefs; Coverings of plastic for furniture; covers for toilet lids of fabric; textile wall hangings; cotton, polyester and/or nylon fabric, fabric of imitation animal skins; upholstery fabrics; lingerie fabric.

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 20/03/2017.

COSTS

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

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Oana-Alina STURZA

Nicole CLARKE

Irina SOTIROVA

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.