CANCELLATION No 28 667 C (REVOCATION)

SZ DJI Technology Co., Ltd., 6F, Hkust SZ Ier Bldg., No. 9 Yuexing 1st Rd., Hi-Tech Park (South), Nanshan District, Shenzhen, Guangdong Province 518057, People’s Republic of China (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Mavic S.A.S., Les Croiselets, 74370 Metz-Tessy, France (EUTM proprietor), represented by Plasseraud IP, Immeuble le Rhône Alpes, 235 Bis cours Lafayette, 69006 Lyon, France (professional representative).

On 28/09/2020, 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 5 163 721 are revoked as from 17/10/2018 for some of the contested goods, namely:

Class 9: Scientific apparatus and instruments, revolution counters, meters, mileage recorders for vehicles.

Class 12: Motorcycles, rims except bicycles rims, derailleurs, derailleur levers, pedals except bicycles pedals, hubs except bicycles hubs, handlebars, frames, reduction gears for vehicles, brakes except bicycles brakes, wheels except bicycle wheels, inner tubes except bicycle inner tubes and repair kits, spokes except bicycles spokes, saddles, pedal housings except bicycle pedal housings, bicycle springs, gears for bicycles, chain wheels, cranks, chains for bicycles, suspension shock absorbers, non-skid devices, bicycle locks, trailer couplings, horns, luggage carriers, stands, cables, chassis, mudguards, saddle covers, cranks for bicycles, air pumps, safety seats for children, bells for bicycles, suspensions, spoke clips for wheels except spoke clips for bicycles wheels, tricycles, valves except bicycle valves, mopeds, pedal attachment for footwear except bicycle pedal attachments for footwear.

Class 25: Clothing, sportswear and leisurewear, footwear, leisure shoes and sports shoes except cycling shorts, cycling T-shirts, cycling windbreakers, cycling blousons, cycling socks, cycling footwear, cycling leisure shoes and cycling sports shoes, caps, visors.

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

Class 12: Bicycles, cycles, bicycles rims, bicycles pedals, bicycles hubs, bicycle brakes, bicycles wheels, bicycle inner tubes and repair kits, bicycles spokes, bicycles pedal housings, tyres for bicycles, spoke clips for bicycles wheels, bicycles valves, bicycles, bicycle pedal attachments for footwear.

Class 25: Cycling clothing, namely shorts, T-shirts, windbreakers, blousons, socks, cycling footwear, cycling leisure shoes and cycling sports shoes, caps, visors.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 5 163 721 ‘MAVIC’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 9: Scientific apparatus and instruments, revolution counters, meters, mileage recorders for vehicles.

Class 12: Bicycles, cycles, motorcycles, rims, derailleurs, derailleur levers, pedals, hubs, handlebars, frames, reduction gears for vehicles, brakes, wheels, inner tubes and repair kits, spokes, saddles, pedal housings, bicycle springs, tyres for bicycles, gears for bicycles, chain wheels, cranks, chains for bicycles, suspension shock absorbers, non-skid devices, bicycle locks, trailer couplings, horns, luggage carriers, stands, cables, chassis, mudguards, saddle covers, cranks for bicycles, air pumps, safety seats for children, bells for bicycles, suspensions, spoke clips for wheels, tricycles, valves, bicycles, mopeds, pedal attachments for footwear.

Class 25: Clothing, sportswear and leisurewear, cycling clothing, namely shorts, T-shirts, windbreakers, blousons, socks, footwear, leisure shoes and sports shoes, caps, visors.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark ‘MAVIC’ has not been put to genuine use within the relevant time period. The evidence provided by the proprietor is insufficient because it only shows use of the contested trade mark for a very limited part of the goods covered by the contested trade mark in Class 12 (rims, pedals, hubs, wheels, inner tubes, spokes, pedal housings, tyres, spokeclip for wheels, valves, pedal attachments for footwear, all for road bikes and mountain bikes) and Class 25 (cycling clothing, namely shorts, T-shirts, windbreakers, blousons, socks, cycling shoes, caps).

The evidence provided by the EUTM proprietor as proof of use of the contested trade mark for bicycles does not meet the requirements of genuine use; the pictures provided by the EUTM proprietor only show vehicles used as advertising carriers as part of the ‘Tour de France’. The EUTM proprietor does not claim that the bicycles shown on the pictures were offered on the market under the contested trade mark. In its supplemental observations, the EUTM proprietor merely states that ‘neutral (technical) assistance services have been provided under the contested trade mark. Like the cars shown in the pictures, the bicycles are only used as advertising carriers. Therefore, these pictures cannot prove genuine use of the contested trade mark for bicycles, as the trade mark in this context has not been used for its primary function: to distinguish the goods offered by one entity from the goods offered by another.

As regards the sales of an ‘ultimate bicycle’ under the contested trade mark, since the end of 2018 the bicycle has actually carried the brand name of the well-known bicycle manufacturer FACTOR on the frame and ‘MAVIC’ merely present on the wheels. In line with this branding, the invoices provided by the EUTM proprietor only indicate the brand of the bicycle as FACTOR, and therefore do not demonstrate genuine use of the contested trade mark for bicycles. Furthermore, the dates of the offering for sale of the bicycle are outside the relevant time period, and therefore the evidence provided by the EUTM proprietor does not prove genuine use of the contested trade mark for bicycles, with the purpose of maintaining or creating a share in the market, within the relevant time period.

Even if the EUTM proprietor’s arguments are accurate the evidence submitted as proof of use in the ongoing opposition proceedings between the parties indicates merely token use of the contested trade mark, serving solely to preserve the rights conferred by the mark.

The EUTM proprietor does not claim use of the contested trade mark for brakes, but only for brake pads. Although, while offering brake pads, the EUTM proprietor does not claim to offer brakes, this clearly shows that the EUTM proprietor’s finding that there is proof of use for brakes is inaccurate. Brake pads are not even a sub-category of brakes, but are completely different products, therefore, contrary to the EUTM proprietor’s argument, the EUTM proprietor did not provide any evidence regarding use of the contested trade mark for brakes. Furthermore, no brake pads have been offered under the contested trade mark since 2015, as the evidence provided by the EUTM proprietor for 2016, 2017 and 2018 does not show any use.

As regards bike computers, the EUTM proprietor itself accepts that the evidence it provided only shows use of the contested trade mark for bike computers until 2012. The catalogues for the following years do not include any bike computers. The invoices provided as item 43 were neither provided within the time limit for submitting proof of use nor do they show sales of bike computers bearing the contested trade mark as asserted by the EUTM proprietor. Consequently, the EUTM proprietor did not provide solid and objective evidence or even plausible information on an effective use of the trade mark for bike computers within the relevant time period.

On 03/03/2020, the applicant requested a right to reply to the last observations of the EUTM proprietor. The Office refused to reopen proceedings. The Cancellation Division considered that the parties had had sufficient opportunities to react to the other party’s arguments as there had been three rounds of observations followed by a suspension.

The EUTM proprietor filed evidence of use. Concerning the relevant period between 17/10/2013 and 14/08/2016, it requested the Office to re-use the evidence provided in the file of opposition No° B 2 807 512, by letter and attachments of 19/04/2018. For the remaining period, that is 15/08/2016 to 16/10/2018, it provided further pieces of evidence described below. The EUTM proprietor provided a very detailed table for the evidence (170 pages) and claims genuine use for the following goods:

 Wheels, tyres and rims for road bikes and mountain bikes and parts thereof;

 Accessories for bicycle wheels, namely tools, bags;

 Brakes for bicycles;

 Pedals for bicycles;

 Biking apparels including shoes;

 Wheel magnets for bike computers.

 Bike computers.

The EUTM proprietor also mentions that the present action is the applicant’s reaction to the previous opposition proceedings and decisions 30/04/2019, B 2 807 405 and B 2 807 512, which rejected its own EUTM applications No°15 750 128 and No°15 909 538 for the imitating marks ‘MAVIC’ and ‘MAVIC PRO’. In these decisions, genuine use of the mark ‘MAVIC’, subject of these proceedings, was recognised by the Opposition Division as sufficiently and clearly proved, at least (but not only) in relation to bicycle tires, rims and wheels and at least in France.

Since 1985 and without any interruption, MAVIC has been using its mark to offer neutral assistance services during the international cycling challenges and competitions. In this framework, they are used to provide competitors with entire bicycles bearing the mark ‘MAVIC’. According to the applicant, these bicycles should be seen exclusively as promotional carriers. The EUTM proprietor does not share this position. Indeed, although the branded bicycles might play a promotional function to help in selling other MAVIC-branded products, this does not mean that the mark is not used on bicycles to play its essential function of designating origin. Indeed, the dated pictures in the evidence indisputably show MAVIC-branded bicycles. The public is not accustomed to seeing bicycles as promotional carriers as opposed to cars, trucks, planes or other larger vehicles. Indeed, bicycles offer very restricted advertising spaces and most of the time the only clearly visible mark is the brand of the bicycle itself or the branded name of its model, affixed on the bicycle frame. Therefore, it is clear that the public attending the cycling events will perceive the yellow bicycles as MAVIC-branded bicycles and not as mere promotional carriers for the ‘MAVIC’ brand for other goods or services.

In this regard, more recently the EUTM proprietor has developed an ‘ultimate bicycle’ (a limited edition for a small number of owners), which has been on sale through its corporate website since the end of 2018. This new product is, as are all ‘MAVIC’ products, a highly technological product that needed years of effort in terms of research, design, development and conception to be able to meet the high expectations of MAVIC’s specialist consumers (athletes and cycling enthusiasts). This explains why these ‘MAVIC’ bicycles (models: ‘MAVIC’ X Factor / Factor o2) were available only 2 months after the end of the relevant proof of use period. Furthermore, the arrival of this product on the market was announced before that date and the development of the product clearly began well before the end of the relevant period. In the current international, economic and industrial context, and due to market globalisation, it has become very difficult to conceive and manufacture such complex products in Europe, so that niche products have a better chance of finding their consumers. This is the case here, since MAVIC exclusively conceives and produces highly technological products for cycling specialists and these goods are rather expensive and their price as well as their targeted consumers, requires perfection. The use of a mark for goods about to be marketed has already been judged as an acceptable use when there are proper reasons, beyond the willingness of the EUTM proprietor. This is a good example of the exception.

Regarding brakes,

according to the general remarks of the World Intellectual Property Organization (WIPO) accompanying the Tenth edition of the Nice Classification 2013, the categorisation of finished goods in the Nice Classification is in principle carried out in accordance with its function or intended use and not the materials used in its production. It is also apparent from the case-law that the criterion of purpose or intended use is of fundamental importance in the definition of a sub-category of goods or services in so far a consumers search primarily for goods or services which can meet their specific needs.

(06/03/2014, T‑71/13, Annapurna EU:T2014:105,§ 64).

In the present case, brake pads are essential and constitutive parts of brakes as they enable them to fulfil their function. According to the case-law, it is necessary

to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. In those circumstances, only the goods which are not in essence different from those for which the proprietor of the earlier mark has succeeded in proving genuine use and which belong to a single group which cannot be divided other than in an arbitrary manner are covered by that mark.

(16/06/2015, T‑660/11, POLYTETRAFLON / TEFLON, EU:T:2015:387, § 67).

As already explained, ‘brake pads’ are not in essence different from ‘brakes’, so their use must objectively be seen as an exploitation of the mark for brakes.

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 21/06/2007. The revocation request was filed on 17/10/2018. 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 17/10/2013 to 16/10/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On15/02/2019 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

 Item 1: MAVIC Catalogue 2015 in English, showing different ‘MAVIC’ products in relation to bicycles such as wheels, tyres, rims, blades, inner tubes, valve extensions, brake pads, wheel bags, axle adapters for wheels, hub bodies, rims for wheels, pedals and spare parts for bicycle pedals, biking protective helmets, cycle-riders technical apparel, protective and comfort apparels for biking such as cushions, underwear articles for cycling, shorts, under shorts, biking suits and under suits, jerseys, jackets, vests, knickers, biking shoes and shoes accessories such as grips and straps for shoes, ratchets for shoes, shoe locks and frames, shoe tongues, shoe outsoles.

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 Items 2 and 3: MAVIC catalogues 2013 and 2014 in English.

 Item 4: MAVIC brochure 2011 in English.

 Item 5: MAVIC user guide in English.

 Items 6 and 7: MAVIC catalogues 2011 and 2012 in French.

 Item 8: document regarding MAVIC SAS, issued by Ernst & Young Audit, certifying the turnovers of the company for 2012, 2013, 2014, 2015 and 2016 in the European Union (EU) market.

 Item 9: invoices of MAVIC SAS and addressed to clients in the United Kingdom between 10/11/2011 and 29/07/2016 for wheels, apparels, shoes, etc. sold under different trade marks including Cosmic, Ksyrium, etc.

 Item 10: invoices addressed to clients in Italy.

 Item 11: invoices addressed to clients in France.

 Item 12: invoices addressed to clients in Spain.

 Item 13: invoices addressed to clients in Austria.

 Item 14: invoices addressed to clients in Germany.

 Item 15A and B: press articles in Germany.

 Item 16: press articles in Austrian magazines.

 Item 17: press articles in Belgium magazines.

 Item 18: press articles in Danish magazines.

 Item 19A to C: press articles in Spanish magazines.

 Item 20: press articles in Finnish magazines.

 Item 21A to D: press articles in French magazines.

 Item 22A and B: press articles in Italian magazines.

 Item 23: press articles in Dutch magazines.

 Item 24: press articles in Portuguese magazines.

 Item 25 A to C: press articles in the United Kingdom.

 Item 26: list of Mavic stores.

 Item 27: bailiff report.

 Item 28: advertising expenses.

 Item 29: MAVIC pricelist for 2016.

 Item 30: MAVIC pricelist for 2017.

 Item 31: MAVIC pricelist for 2018.

 Item 31A: bike systems for 2018.

 Item 32: invoices in France from 2016 to 2018.

 Item 33: invoices in Germany from 2016 to 2018.

 Item 34: invoices in Italy from 2016 to 2018.

 Item 35: invoices in Spain from 2016 to 2018.

 Item 36: invoices in the UK from 2016 to 2018.

 Item 37: press articles in 2016.

 Item 38: press articles in 2017.

 Item 39: press articles in 2018.

 Item 40 and 41: press reviews in 2018.

On 12/09/2019, the EUTM proprietor filed additional evidence:

 Item 42: opposition decisions of 30/04/2019, B 2 807 405 and B 2 807 512 between the same parties.

 Item 43-1: invoice for bike computer accessories and parts (English translation).

 Item 43-2: invoices to Spain (1), Germany (1) and France (6).

 Item 44-1: screenshots from the website mavic.com, promoting and offering the MAVIC bicycle ‘X Factor’ for sale.

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 Item 44-2: extract from waybackmachine https://web.archiv.org, dating the presence of the ‘MAVIC’ bicycle on the mavic.com website.

 Item 44-3 and 4: invoices in France for the X Factor bicycle.

Additional evidence

On 12/09/2019, after the expiry of the time limit, the EUTM proprietor submitted additional evidence.

The applicant argues that the EUTM proprietor submitted this evidence late and, therefore, it cannot be taken into account. In this regard, the Cancellation Division considers that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The additional evidence is likely to be relevant to the outcome of the proceedings and the stage at which it was submitted does not preclude the evidence from being taken into account.

The fact that the applicant disputed the initial evidence submitted by the EUTM proprietor justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

The additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division therefore decides to take into account the additional evidence submitted on 12/09/2019.

Assessment of genuine use — factors

Time of use

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

Most of the evidence is dated within the relevant period: 17/10/2013 to 16/10/2018 inclusive. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use for part of the goods.

Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the EUTM proprietor’s mark within the relevant period. This is because the use it refers to is very close to the relevant period.

To paraphrase paragraph 37 of Minimax (11/03/2003, C‑40/01, EU:C:2003:145), although the evidence submitted about bicycles does not show use for goods available on the market within the relevant period, it does indicate use of the mark for goods about to be marketed and for which preparations to secure customers are under way. Consequently, the evidence contains indications as to time of use which may be relevant for determining whether or not use has been genuine. However, whether this evidence is sufficient or not depends in particular on whether the indication concerning extent of use is sufficient or not.

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 catalogues and invoices show that the place of use is France. This can be inferred from the language of the documents (French), the currency mentioned (euro) and the addresses in France. In addition, there is evidence for other countries in the European Union. 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 accepted that the contested mark is used to distinguish at least some goods.

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 contested trade mark is a word mark and the evidence shows that the mark has been used as registered or in a figurative form such as where the word mark is clearly visible and the additional figurative characteristics have little impact.

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).

Use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers is under way (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37).

Assessing the circumstances of the case may include giving consideration, inter alia, to the nature of the goods or services, the characteristics of the market concerned and the scale and frequency of use of the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

The characteristics of the market in question must be taken into account (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 51).

The Court has found that, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, while not providing direct information on turnover, can also be sufficient for proving extent of use in an overall assessment (08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

In the present case, the evidence is sufficient in terms of extent of use, including the small volumes of sales for bicycles considering their price (see below); in particular, in item 8, an independent auditor, Ernst & Young Audit, certified the turnovers of the, company for 2012, 2013, 2014, 2015 and 2016 in the EU market, combined with the catalogues and the invoices showing the company products dedicated to very specific products for cyclists. This is not challenged by the applicant, which recognises there has been genuine use for part of the products.

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 the abovementioned goods in Classes 9, 12 and 25. An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’ used in the EUTM proprietor’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

In the present case, the evidence shows genuine use of the trade mark for the following goods, all in relation to bicycles (except caps and visors as they are not specific for cycling):

Class 12: Bicycles, cycles, bicycles rims, bicycles pedals, bicycles hubs, bicycle brakes, bicycles wheels, bicycle inner tubes and repair kits, bicycles spokes, bicycles pedal housings, tyres for bicycles, spoke clips for bicycles wheels, bicycles valves, bicycles, bicycle pedal attachments for footwear.

Class 25: Cycling clothing, namely shorts, T-shirts, windbreakers, blousons, socks, cycling footwear, cycling leisure shoes and cycling sports shoes, caps, visors.

The applicant considers that the mark is used for ‘brake pads’, which is not equivalent to use for ‘brakes’, which is the expression covered by the contested mark. The Cancellation Division considers that the EUTM proprietor has proved use of the contested trade mark for ‘brake pads’, which fall under the sub-category ‘bicycle brakes’. It is not required to prove use of all the conceivable variations of bicycle brakes and use for bicycle brake pads to show genuine use for bicycle brakes.

Regarding bicycles in Class 12, the Cancellation Division concurs with the applicant and considers that use of the contested mark on bicycles during the relevant period does not constitute genuine use for bicycles, as the finished products were used as promotional carriers. Nevertheless, the evidence shows that, at the end of the relevant period, the EUTM proprietor had developed a bicycle in a limited edition, which has been offered for sale through its corporate website since the end of 2018. It is possible to see from its characteristics and price that this new product is, as are all ‘MAVIC’ products, a highly technological product that needed years of effort in terms of research, design, development and conception to be able to meet the high expectations of MAVIC’s specialist consumers (athletes and cycling enthusiasts). Even if this ‘MAVIC’ bicycle (the X Factor model/Factor o2) was available only 2 months after the end of the relevant proof of use period, the arrival of this product on the market was announced before that date and the development of the product clearly began well before the end of the relevant period.

Even if ‘FACTOR’ is also used to distinguish the bicycle, as mentioned by the applicant, it remains a ‘MAVIC’ product and is presented as such on the website of the EUTM proprietor, who has shown that ‘MAVIC’ is known as a brand for its goods and not only as a company name. Finally, contrary to the applicant’s argument, the production of the limited edition bicycle cannot be considered token use considering the investments necessary to produce such a highly technological product.

The goods covered in Class 25 are all related to cycling as they are preceded by the expression ‘namely’, which reduces the scope of protection. Nevertheless, strictly speaking, footwear and headgear are not clothing articles therefore the Cancellation Division has specified that the limitation applies to these goods as well. There is evidence of use for all the items in Class 25 including caps. Although the applicant considers there is no evidence for visors, since caps also include visors, the Cancellation Division considers there is genuine use for these goods as well.

However, there is no evidence for the remaining goods covered by the contested trade mark. In particular, the EUTM proprietor’s evidence for bike computers as a finished product ends in 2012: before the start of the relevant period. After that date, the EUTM proprietor provided, in item 43, evidence that there is use during the relevant period for parts of bike computers sold previous to the period. The Cancellation Division considers that the use of several parts of bike computers (battery, magnet adjustment) is not sufficient to include use of the finished good during the relevant period.

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 part of the goods and for the relevant factors time, place, extent or nature of use of the mark as registered.

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: Scientific apparatus and instruments, revolution counters, meters, mileage recorders for vehicles.

Class 12: Motorcycles, rims except bicycles rims, derailleurs, derailleur levers, pedals except bicycles pedals, hubs except bicycles hubs, handlebars, frames, reduction gears for vehicles, brakes except bicycles brakes, wheels except bicycle wheels, inner tubes except bicycle inner tubes and repair kits, spokes except bicycles spokes, saddles, pedal housings except bicycle pedal housings, bicycle springs, gears for bicycles, chain wheels, cranks, chains for bicycles, suspension shock absorbers, non-skid devices, bicycle locks, trailer couplings, horns, luggage carriers, stands, cables, chassis, mudguards, saddle covers, cranks for bicycles, air pumps, safety seats for children, bells for bicycles, suspensions, spoke clips for wheels except spoke clips for bicycles wheels, tricycles, valves except bicycle valves, mopeds, pedal attachment for footwear except bicycle pedal attachments for footwear.

Class 25: Clothing, sportswear and leisurewear, footwear, leisure shoes and sports shoes except cycling shorts, cycling T-shirts, cycling windbreakers, cycling blousons, cycling socks, cycling footwear, cycling leisure shoes and cycling sports shoes, caps, visors.

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 17/10/2018.

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

Carmen SÁNCHEZ PALOMARES

Jessica LEWIS

Vít MAHELKA

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.