CANCELLATION No 34 504 C (REVOCATION)

OneSpan, Naamloze vennootschap, Romeinsesteenweg 564C, 1853 Strombeek-Bever, Belgium (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem. Belgium (professional representative)

a g a i n s t

OneSpin Solutions GmbH, Nymphenburgerstr. 20a, 80335 München, Germany (EUTM proprietor), represented by 24IP Law Group Sonnenberg Fortmann, Herzogspitalstr. 10 a, 80331 München, Germany (professional representative).

On 30/06/2020, the Cancellation Division takes the following

DECISION

1. The application for revocation is partially upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 4 952 818 are revoked as from 01/04/2019 for some of the contested goods and services, namely:

Class 9: Scientific, measuring, signalling, and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; data carriers, recording discs; data processing equipment and computers; computer apparatus and software for processing data (except verification software); computer hardware and computer software for use in the field of semiconductor production (except verification software); verification devices, in particular in the field of semiconductor production.

Class 41: Education; providing of training; arranging and conducting of workshops and training courses; computer training.

Class 42: Scientific services and research and design relating thereto; technological services and research and design relating thereto (except those related to verification software); industrial analysis and research services; design and development of computer hardware and software (except verification software); licensing of computer software (except verification software); providing of computer software technical support services (except in relation to verification software); application engineering (except in relation to verification software); creation, leasing, hiring and renting out of computer software (except verification software).

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

Class 9: Computer software for processing data, namely verification software; computer software for use in the field of semiconductor production, namely for verification purposes; verification software, in particular in the field of semiconductor production; formal verification software.

Class 42: Technological services and research and design relating thereto, in relation to verification software; design and development of computer software, namely verification software; development of verification software; licensing of computer software, namely verification software; providing of computer software technical support services, in relation to verification software; application engineering, in relation to verification software; development, production and distribution of software for the formal verification of semiconductors and other technical components as well as the provision of any related services; creation, leasing, hiring and renting out of computer software, in relation to verification software.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 4 952 818 for the word mark ‘OneSpin 360’. The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Scientific, measuring, signalling, and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; data carriers, recording discs; data processing equipment and computers; computer apparatus and software for processing data; computer hardware and computer software for use in the field of semiconductor production, in particular for verification purposes; verification software and devices, in particular in the field of semiconductor production; formal verification software.

Class 41: Education; providing of training; arranging and conducting of workshops and training courses; computer training.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; development of verification software; licensing of computer software, in particular verification software; providing of computer software technical support services; application engineering; development, production of software for the formal verification of semiconductors and other technical components as well as the provision of any related services; creation, leasing, hiring and renting out of computer software.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

In the application for revocation of 01/04/2019, the applicant argues that the contested EUTM has not been put to genuine use for a continuous period of five years in relation to any of the registered goods and services.

On 04/07/2019, the EUTM proprietor submitted written observations and evidence of use (four main annexes, which will be listed and analysed further down in the following section of the decision). It explained that, on 06/02/2019, it had filed an opposition against the applicant’s EUTMA No 17 896 351 ‘ONESPAN’ on the basis of, inter alia, EUTM No 4 952 818 ‘OneSpin 360’, and that the applicant, on 01/04/2019, had filed this request for cancellation due to non-use. The proprietor argues that the request for revocation for non-use is unfounded since genuine use of the EUTM No 4 952 818 ‘OneSpin 360’ is clearly demonstrated for all the goods and services registered.

The applicant replied on 13/11/2019, where it argues that the evidence submitted is insufficient to establish genuine use of the contested trade mark. The applicant affirms that even when all of the evidence submitted by the proprietor is taken as a whole, the proprietor failed to prove that it has put its registered trade mark ‘OneSpin 360’ to genuine use in the EU in connection with the relevant goods and services for which it is registered during the relevant period. It argues that the submitted documents do not allow to reach a conclusion that the mark was genuinely used, without resorting to probabilities and presumptions, as these materials do not contain sufficient indications as regards, at least, the nature of use, the extent of use of the mark in the relevant territory and the use in relation to the registered goods. It is concluded with the request that the Cancellation Division uphold the cancellation application and revoke the contested mark in its entirety.

On 03/02/2020 the EU proprietor submitted a response where it is asked that the Office render a decision based on the documents already filed, as the proprietor is of the opinion that they sufficiently show genuine use of the mark in the European market. As a side note, the proprietor pointed out that the exact same set of documents was considered sufficient by both the US patent and trademark office as well as the Chinese trademark office to show genuine use in the respective markets.

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 06/03/2008. The revocation request was filed on 01/04/2019. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 01/04/2014 to 31/03/2019 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 04/07/2019 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

Annex A (A.1 - A.13):	Copies of 13 invoices, dated from December 2017 to December 2018. The invoices are issued by the proprietor, whose address is in Munich, Germany. The amounts in the invoices are given in Euros. As for the specific amounts, there are two invoices ranging between 10 000 and 15 000 Euros, six invoices with amounts between 40 000 and 80 000 Euros, two invoices with amounts between 125 000 and 175 000 Euros, and three invoices with amounts exceeding 500 000 Euros. The product descriptions in the invoices refer to goods and services, which on the basis of the other annexes can be identified as software solutions in the field of formal verification and related licensing and IT services. The proprietor’s mark is seen represented as following:
Annex B:	Translation in English of the financial statement regarding the financial year 2017 for the company ‘Onespin Solutions GmbH’. The statement shows the balance sheet as of December 31, 2017, the income statement for 2017 and notes to the financial statements for the business year 2017. Lastly, it includes a report by a German Public Auditor who audited the said financial statement.
Annex C:	Copies of product specifications for OneSpin 360 EC-FPGA, OneSpin 360 DV-Inspect and OneSpin 360 DV-Verify. In summary, these goods relate to various software tools for verification purposes that aim to optimize and to verify the functioning and efficiency of various electronic components.
Annex D (D.1 – D.10):	Overview of some of the various press releases on the proprietor’s website of the last five years (from February 2015 to May 2019). Annexes D.1 and D.2 specifically mentions the products ‘OneSpin 360’. The press releases are issued both from San Jose, California in the United States of America and from Munich in Germany. The statements mainly concern announcements of demonstrations of new products on events, the integration of OneSpin’s software into third parties systems, or challenges issued for solving various riddles or problems using the proprietor’s formal verification tools.

The EUTM proprietor also made reference to its Facebook page by providing link, where traces of contributions from various conferences, talks, videos, etc. with the OneSpin logo, employees, customers and competitors can be found. Reference was also made to the proprietor’s webpage for further press releases.

Preliminary remarks

In relation to the fact that the EUTM proprietor submitted several hyperlinks to various websites, the Cancellation Division notes that it can only rely on the evidence submitted by the parties, and a mere indication of a website through a hyperlink does not constitute evidence. However, in accordance with Article 95(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates, inter alia, to the factual basis of decisions by the Office, that is, the facts and evidence on which those decisions may be validly based. It is not for the Office decision-taking bodies to search the EUTM proprietor’s website for the relevant data to prove the use of the contested mark (see by analogy 04/10/2018, T-820/17, Alfrisa (fig.) / Frinsa F (fig.), EU:T:2018:647, § 61-63).

Furthermore, it is clear that the nature of a hyperlink to a website does not allow the content and data to which it is meant to refer to be copied and transmitted as a document, so that the other party can access that information. Websites are dynamic and easily updated, and most do not provide any archive of previously displayed material, or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited by means of only a hyperlink to a website cannot, therefore, be verified. Consequently, the submission of links to websites cannot be considered as valid pieces of evidence and cannot be taken into account on their own.

As regards the fact that the applicant would have filed the revocation action in retaliation to an opposition filed on the basis of the contested EUTM: Article 63(1)(a) EUTMR grants all natural and legal persons the right to file an application for a declaration of revocation on the basis of Article 58 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision. The applicant’s intentions are, therefore, irrelevant in the examination of the application.

Assessment of genuine use – factors

The Court of Justice has held that there is ‘genuine use’ of a mark where it 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 does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the EUTM proprietor’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, Strategi, EU:T:2010:424, § 43). This means that the proprietor is obliged not only to indicate but also to prove each of these requirements.

However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Furthermore, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (06/10/2004, T356/02, EU:T:2004:292, VITAKRAFT, § 28).

Time of use

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

All of the evidence is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor, in particular the invoices and the press releases submitted as Annexes A and D, contains sufficient indications concerning the time of use.

Regarding duration of use, it is important to remember that only trade marks whose genuine use was interrupted for a continuous period of five years are subject to the sanctions provided for in Article 18(1) EUTMR. Therefore, it is sufficient for avoiding these sanctions that a trade mark was genuinely used for only part of this period (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52;09/07/2009, R 623/2008‑4, Walzer Traum (fig.) / Walzertraum, § 28).

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).

What matters is the impact of the use on the internal market; more specifically, whether it is sufficient to maintain or create market share on that market for the goods and services covered by the mark, and whether it contributes to a commercially relevant presence of the goods and services on that market. Whether that use results in actual commercial success is not relevant (see the Advocate General’s opinion delivered on 19/12/2012, C149/11, Leno, EU:C:2012:816, § 50).

The invoices submitted as Annex A clearly show that the EUTM proprietor’s business was conducted in Germany. This may be inferred by the provider’s address shown on the invoices, being in Munich, Germany, as well as the amount of the orders being indicated in the currency of Euro.

Furthermore, the financial statement submitted as Annex B, which was audited by a German public auditor, and the press releases (Annex D), which were partly issued from Munich, Germany, all support the fact that the EUTM proprietor did conduct business from or within the relevant territory. The submitted evidence mainly points to business being conducted from Munich, Germany. The use of the mark in Munich only is considered sufficient taking into account that it is the third largest city in Germany, and the 11^th largest city in the European Union. Moreover, Munich is today a global centre for several industries, amongst them IT technology.

According to Article 18(1), second subparagraph, point (b) EUTMR, the affixing of the European Union trade mark to goods or to the packaging thereof in the European Union solely for export purposes also constitutes use within the meaning of Article 18(1) EUTMR.

Therefore, despite the fact that no customer information is displayed in the submitted invoices, and thereby not giving much indications on whether the goods and services were provided to customers within the relevant territory, or whether these were exported outside of the EU, the Cancellation Division finds that, in any case, such use would indeed constitute use for the relevant territory.

Consequently, when assessed in its entirety, the evidence of use filed by the EUTM proprietor (albeit not particularly extensive) contains the minimum of indications to allow for a conclusion that the evidence relates to the relevant territory.

Nature of use: use as a trade mark and use of the mark as registered

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.

Furthermore, the evidence must show 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).

The contested EUTM is the word mark ‘OneSpin 360’. The evidence submitted, in particular the invoices, product specifications and press releases in Annexes A, C and D, shows that the contested EUTM was used in such a way as to identify particular goods and services, thus making it possible for the relevant consumer to link the goods and services to a certain commercial origin and to distinguish them from the goods and services of other manufacturers/providers.

Consequently, the evidence does show use of the sign as a trade mark.

As regards the use of the mark as registered, the evidence shows that the mark was used both as a word mark, in the invoices, product specifications and press releases, with and without the element ‘360’, and as a figurative mark , as seen on some of the invoices and product specifications. As regards the omission of the figure ‘360’ in part of the evidence, this figure refers to the number of degrees of a complete circle or the number of degrees in one full rotation, and will be perceived as a reference to a complete, holistic or all-inclusive service or product that covers all aspects of the customers’ needs. Therefore, the element ‘360’ is a laudatory term that lacks distinctive character. Furthermore, considering that the figurative element is mainly of decorative nature, neither the addition of the figurative element nor the omission of the number ‘360’ in some of the evidence, alter the distinctiveness of the contested sign as registered. It is still is the verbal element ‘OneSpin’ that has the most impact in the sign.

Therefore, the evidence shows that the mark has been used as registered or in a form essentially the same as that registered and, therefore, constitutes use of the contested EUTM under Article 18 EUTMR.

Extent of use

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

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

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

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

Although the evidence does not indicate an extensive territorial scope of the use, as the Cancellation Division can only infer from the evidence that the proprietor’s business has been conducted from Munich, Germany, the invoices give a good indication of the commercial volume that may counteract the territorial scope. The thirteen invoices show substantial amounts with two of them even exceeding 500 000 Euros, which indicate that there is indeed a commercial purpose linked to the proprietor’s use of the contested mark. Also, Annex B (financial statement) and Annex D (press releases) corroborate this finding. In addition, Annex D serves as an indicator that the mark has been used throughout the entire relevant period.

Therefore, despite the fact that the evidence submitted is not particularly exhaustive, the Cancellation Division is of the opinion that the evidence gives sufficient information regarding the extent of use of the mark, the commercial volume, the duration and the frequency of use. Furthermore, the evidence is considered sufficient to demonstrate the EUTM proprietor’s intention to acquire or maintain a commercial position in the relevant market and it rules out token use.

Use in relation to the registered goods and services

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 the goods and services listed above in the section ‘Reasons’. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services 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.

Furthermore, 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).

From the evidence submitted it is clear that the EUTM proprietor’s activity is limited to a specific field of IT solutions, namely that it provides verification software and related IT services. The verification software in question aims at ensuring that specific electronic devices, such as semi-conductor devices, fully satisfy all the expected requirements, such as having correct, efficient and secure functionality, and in general to optimize the functionality and reliability of various electronic components.

As regards the contested services in Class 41, these are services related to education, providing of training and arranging and conducting of workshops and training courses. The EUTM proprietor claims that Annexes A (invoices) and C (product specifications) prove genuine use for services such as those in Class 41. However, having examined the evidence submitted, in particular Annexes A and C, the product specifications do indeed serve to clarify the products mentioned in the invoices. However, these product specifications refer to various IT solutions or packages connected to verification solutions, and do not in any way prove use for educational and training services covered by the EUTM in Class 41. Likewise, the services referred to in the invoices are IT installation and consultation services correlated with the EUTM proprietor’s IT verification tools, which are rather technical IT services that belong to those under Class 42. Considering the submitted evidence, and in lack of further clarification by the EUTM proprietor, the Cancellation Division cannot deduce that the evidence proves any use for the registered contested services in Class 41.

As to the contested goods in Class 9, the submitted evidence, in particular the invoices, refers to various tools related to the EUTM proprietor’s solution called ‘OneSpin 360 Safety Solution’, which include products such as ‘360 DV-Inspect’, ‘360 Fault-Analysis-Engines’, ‘360 DV-FPA Fault Propagation Analysis’, ‘360 DV-FDA Fault Detection Analysis’, and ‘360 DV-FCA Fault Contribution Analysis’, ‘360 DV-Verify Property Checking Add-on to DV-Inspect’ and ‘360 EC-RTL RTL to RTL Equivalence Checker’. These products are further explained by the product specification submitted as Annex C, and are software tools and applications used in relation to verification technology. Likewise, the press releases issued by the EUTM proprietor (Annex D) also solely relate to the same various software tools. As an example, in Annex D.5 the EUTM proprietor presents itself as ‘a leader in formal verification through a range of advanced electronic design automation (EDA) solutions for digital integrated circuits’. While the evidence does indeed show use in relation to software tools for verification purposes, it does not show use in relation to any of the remaining goods in Class 9, such as computers or hardware.

Along the same line of reasoning as in relation to the aforementioned goods in Class 9, the evidence also shows that the EUTM proprietor used the mark for the contested services in Class 42 that relate to the development, licensing and technical support all in relation to software tools for verification purposes. On the other hand, no use has been proven for the remaining services that are not related to verification software solutions.

In view of the above, it will be taken into account in the conclusion below as regards the goods in Class 9 and the services in Class 42 that the evidence does not demonstrate genuine use for all types of software or software related services, but only for those related to verification software solutions.

Overall assessment and conclusion

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 all the relevant factors, namely place, time, extent and nature of use, but only for a part of the relevant goods and services since the evidence is only related to verification software and related services.

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

Class 9: Scientific, measuring, signalling, and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; data carriers, recording discs; data processing equipment and computers; computer apparatus and software for processing data (except verification software); computer hardware and computer software for use in the field of semiconductor production (except verification software); verification devices, in particular in the field of semiconductor production.

Class 41: Education; providing of training; arranging and conducting of workshops and training courses; computer training.

Class 42: Scientific services and research and design relating thereto; technological services and research and design relating thereto (except those related to verification software); industrial analysis and research services; design and development of computer hardware and software (except verification software); licensing of computer software (except verification software); providing of computer software technical support services (except in relation to verification software); application engineering (except in relation to verification software); creation, leasing, hiring and renting out of computer software (except verification software).

The EUTM proprietor has proven genuine use for the remaining contested goods and services; 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 01/04/2019.

COSTS

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

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

The Cancellation Division

Catherine MEDINA

Tu Nhi VAN

Richard BIANCHI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.