CANCELLATION No 30 381 C (REVOCATION)

Bodegas Vinos De Leon - Vile, S.A., C/ La Vega, s/n, 24011 Armunia, Léon, Spain (applicant), represented by Hoffmann Eitle S.L.U., Luis Soriano Albert, Paseo de la Castellana 140, 28046 Madrid, Spain (professional representative)

a g a i n s t

AEG Presents Ltd, Almack House, 28 King Street, London SW1Y 6QW, United Kingdom (EUTM proprietor), represented by Osborne Clarke LLP, One London Wall, London EC2Y 5EB, United Kingdom (professional representative).

On 03/04/2020, 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 5 832 712 are revoked as from 29/11/2018 for some of the contested goods and services, namely:

Class 9: Recordings of sound or images; films, records, compact discs, MP3 players, portable digital electronic devices, mini discs, laser discs, digital video discs (DVD), digital audio recordings, audio cassettes, video cassettes; magnetic tape; CD-ROM, interactive compact discs; magnetic data carriers, recording discs; computer games, video games, interactive games; digital music provided from the Internet; digital recordings of performing arts entertainment provided from the Internet; sound recordings and images downloadable from the Internet; parts and fittings for all the aforesaid goods.

Class 16: Printed matter, printed publications; periodical publications; books, booklets; promotional literature, brochures, event programmes, printed programmes; magazines, leaflets, flyers, tickets, passes, cards, calendars, pictures, posters, photographs; photograph albums; banners, diaries; catalogues; comic strips; guides; carrier bags; paper bags; pamphlets; news sheets; stationery, writing instruments; chalk; pens, pencils, crayons; erasers; rulers; pencil sharpeners; pen and pencil boxes and cases; pencil holders; ring binders; bookends; bookmarks; folders; notebooks; notepads; address books; autograph books; postcards; greetings cards; gift cards; drawings (graphic); stickers; transfers (decalcomanias); stencils.

Class 25: Clothing; headgear, caps, hats, bandannas; t-shirts, sweatshirts, sweatpants, sweaters, singlets, underwear, jeans, pullovers, bomber jackets, waterproof clothing, wind-cheaters, overcoats, shorts, jackets, fleece tops, jumpers, belts, polo shirts, dresses, swimwear, cardigans, coats, trousers, overalls, dance clothing, scarves; footwear, shoes, boots, trainers, sandals.

Class 35: Advertising; marketing and promotion of music artists; promotion and management of entertainment venues; promotion and management of performing arts entertainments and festivals; information, advice and consultancy in respect of all the aforesaid services.

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, excluding such services provided on-line from a computer database or the Internet; performance arts and musical entertainment services; festival services, performance of dance, comedy, theatre, poetry and circus entertainment, including such services provided on-line from a computer database or the Internet; performance of music, excluding such services provided on-line from a computer database or the Internet; conducting artistic and musical events; musical concert entertainment; performance and production of music award ceremonies; production and performance of radio and television programmes; production or performance of sound recordings, image recordings, videos, films, concerts and shows; recording studio services; the production or co-production of entertainment events or concerts; recording and production services; entertainment; live music; provision of amusements; nightclubs; cultural and sporting activities; music and text publishing services; operation of entertainment venues; information, advice and consultancy in respect of all the aforesaid services.

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

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, such services provided on-line from a computer database or the Internet; performance of music, such services provided on-line from a computer database or the Internet; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 5 832 712 ‘COACHELLA’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely

Class 9: Recordings of sound or images; films, records, compact discs, MP3 players, portable digital electronic devices, mini discs, laser discs, digital video discs (DVD), digital audio recordings, audio cassettes, video cassettes; magnetic tape; CD-ROM, interactive compact discs; magnetic data carriers, recording discs; computer games, video games, interactive games; digital music provided from the Internet; digital recordings of performing arts entertainment provided from the Internet; sound recordings and images downloadable from the Internet; parts and fittings for all the aforesaid goods.

Class 16: Printed matter, printed publications; periodical publications; books, booklets; promotional literature, brochures, event programmes, printed programmes; magazines, leaflets, flyers, tickets, passes, cards, calendars, pictures, posters, photographs; photograph albums; banners, diaries; catalogues; comic strips; guides; carrier bags; paper bags; pamphlets; news sheets; stationery, writing instruments; chalk; pens, pencils, crayons; erasers; rulers; pencil sharpeners; pen and pencil boxes and cases; pencil holders; ring binders; bookends; bookmarks; folders; notebooks; notepads; address books; autograph books; postcards; greetings cards; gift cards; drawings (graphic); stickers; transfers (decalcomanias); stencils.

Class 25: Clothing; headgear, caps, hats, bandannas; t-shirts, sweatshirts, sweatpants, sweaters, singlets, underwear, jeans, pullovers, bomber jackets, waterproof clothing, wind-cheaters, overcoats, shorts, jackets, fleece tops, jumpers, belts, polo shirts, dresses, swimwear, cardigans, coats, trousers, overalls, dance clothing, scarves; footwear, shoes, boots, trainers, sandals.

Class 35: Advertising; marketing and promotion of music artists; promotion and management of entertainment venues; promotion and management of performing arts entertainments and festivals; information, advice and consultancy in respect of all the aforesaid services.

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, including such services provided on-line from a computer database or the Internet; performance arts and musical entertainment services; festival services, performance of music, dance, comedy, theatre, poetry and circus entertainment, including such services provided on-line from a computer database or the Internet; conducting artistic and musical events; musical concert entertainment; performance and production of music award ceremonies; production and performance of radio and television programmes; production or performance of sound recordings, image recordings, videos, films, concerts and shows; recording studio services; the production or co-production of entertainment events or concerts; recording and production services; entertainment; live music; provision of amusements; nightclubs; cultural and sporting activities; music and text publishing services; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet; operation of entertainment venues; information, advice and consultancy in respect of all the aforesaid services.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claimed that the contested EUTM had not been put to genuine use for a continuous period of 5 years.

The EUTM proprietor replied by submitting proof of use of the EUTM, consisting of a witness statement and its exhibits (listed and assessed below). The proprietor also referred to a decision from the Spanish Patent and Trade Mark Office in relation to an opposition filed by the proprietor against the applicant’s Spanish registration ‘COACHELLA’ in Class 33. The Spanish Office considered in this decision that the contested EUTM was a ‘notoriously well-known trade mark’. This decision is currently under appeal. The proprietor provided a copy of this decision in support of its claims.

The applicant considered that the proprietor did not file any real and effective evidence of use of the EUTM and criticised the documents as having a piecemeal approach. It notably pointed out that the witness statement, as it originated from the adverse party, had a very limited probative value. The applicant also claimed that the evidence referred to an American music festival ‘Coachella’, but did not show that any goods or services were effectively used/provided in Europe. Merely the fact that the festival had echoes in Europe, in newspapers and via the videos available online, was not sufficient. Likewise, the number of tickets for the festival bought by EU consumers was low and irrelevant to evidencing a real and effective use in the European Union. Finally, the applicant noted that the proprietor did not provide any invoices of sale or documents showing concrete expenditures on promotion and advertising for the mark in the EU. The documents did evidence the existence of the festival held in the United States, but not that the trade mark had been used in relation to the designated goods and services in the European Union.

The applicant also considered that the decision rendered by the Spanish Office, according to which the contested sign had a notoriety in the EU, was not relevant as the European trade mark system is independent from the national systems and national precedents do not influence EUIPO’s decisions. It was obvious from the documents provided in the present proceedings that there was no real and effective use in the EU and therefore the national judgment cannot be followed by the EUIPO.

The proprietor disagreed with the applicant’s contentions and claimed that the evidence of use provided was probative, genuine and sufficient to show that the contested EUTM had been used in the European Union. In particular, the proprietor referred to the witness statement and considered that as it was corroborated by other means of evidence, it was not devoid of all probative value. Regarding the evidence of use, the proprietor recalled that use of the mark did not need to be quantitatively substantial to be genuine. There was no minimum threshold required for genuine use; it was only required that the use of the mark served a commercial purpose with a view to creating/maintaining a share in the market for the relevant goods and services, which was the case here. The EUTM had been used publicly and outwardly for the purpose of maintaining a market share for music and sound recordings, posters, event programmes, clothing, promotion and management of artist and festivals, and entertainment services (including arts, music and cultural entertainment festivals), as well as the organisation thereof, including such services provided online.

The proprietor also pointed out that evidence of use had to be considered overall and not as each document individually, as done by the applicant in its observations. The proprietor further considered that the evidence did show that the festival was known in the European Union, as demonstrated by the articles published in the EU press, quoting EU artists attending the festival and being aware of its existence for years. This was corroborated by the ticket orders and invoices for the festival by EU consumers. Moreover, and contrary to the applicant’s statement, the test for genuine use was not the size of the EU but the size of the EU market for the particular goods and services of interest. In this context, 1.2 million unique users from the EU accessing the proprietor’s website www.coachella.com in 2017 and 2018 was a significant number of people and could not be deemed irrelevant. Similarly, the fact that over 16 % of the followers of the ‘Coachella’ Facebook page are EU citizens cannot be deemed insignificant. Finally, the proprietor claimed that the fact that the festival was held in the US did not prevent the EUIPO from finding that genuine use of the mark had been made in the European Union and referred to the ‘Mantra’ case (28/09/2018, 13 471 C) to support its argumentation. It concluded that the evidence did show that the festival was known by EU consumers (press articles) and that EU citizens had attended the festival and were present in the proprietor’s media account and YouTube channel. Therefore, the evidence related to the relevant territory.

Regarding the reference made to the Spanish Office’s decision, the proprietor indicated that this decision, even if not binding for the EUIPO, was relevant as it was the opinion of an independent third party based in the EU attesting to the fact that the contested EUTM was ‘notoriously well-known’.

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 11/03/2008. The revocation request was filed on 29/11/2018. 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 29/11/2013 to 28/11/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 04/04/2019 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:

• Witness statement dated 04/04/2019 from the proprietor’s general counsel and director commercial affairs, and its exhibits (listed below).

According to this declaration, the contested mark has been used since 1999 in the United States in relation to entertainment services, namely organising and producing musical and cultural events. The trade mark is now known and is used worldwide, including in the European Union. The ‘Coachella Festival’ is held every year in California and is one of the most critically acclaimed music festivals in the world with approximatively 750 000 attendees, including EU consumers. Extracts from the proprietor’s website www.coachella.com show information about the ‘Coachella Festival’ and its sponsors. The proprietor points out that among them are well-known EU drinks companies such as ‘Absolut’ and ‘Heineken’. Merchandise is also sold (sweatshirts and T-shirts, hats, tote-bags, posters, etc.). Articles about the festival and the celebrities participating are published in the European Union, namely in Spain, France and the UK. Apart from live music, the proprietor produces remix albums under the trade mark via its two licensees as shown on the website www.coachellamixes.com. These albums are available worldwide, including from the EU. The proprietor also mentions cultural/artistic events since 2009. The festival features works from international artists, which are also reproduced in the festival’s guidebooks.

According to this statement, attendance from EU consumers at the Festival is evidenced by videos on YouTube. The proprietor owns a channel on YouTube where it uploads number of videos containing clips of performances at the festival, interviews of the music artist and live performances during the first weekend of the ‘Coachella Festival’. These videos are accessible online including for EU consumers. On April 2019 the ‘Coachella’ channel had 844 395 subscribers. The proprietor’s website is also accessible online to EU consumers.

In 2018, the proprietor spent over USD 1 million in marketing for the ‘Coachella Festival’, via its YouTube channel worldwide. 5 million co-branded items of apparel were sold in 2016, including in the EU.

• Exhibit 1: screenshots from the proprietor’s website www.coachella.com. They refer to the ‘Coachella’ music and arts festival organised on April 2018 in California (USA), and former festivals since 1999. It also shows sponsors of the 2018 festival and a photo of the ‘Coachella merchandise tents’ (and the possibility to order via the ‘Coachella’ app).

• Exhibit 2: copies of ‘Coachella’ festival posters, listing the artists present.

• Exhibit 3: extract from the online encyclopaedia www.wikipedia.org page for ‘Coachella Valley Music and Arts Festival’ and extracts from articles in www.timeout.com and www.festicket.com about the best music festivals in the world, mentioning the ‘Coachella’ festival.

The Wikipedia page indicates that the ‘Coachella festival’ or ‘Coachella’ is an annual event held in California, founded in 1999, and that it is ‘is one of the largest, most famous, and most profitable music festivals in the United States and all over the world’. It features music artists and art installations and sculptures.

• Exhibit 4 : articles from www.festicket.com, www.mtv.co.uk, and www.iq-mag.net about the tickets sold for the ‘Coachella’ festivals, dated 2012, 2013 and 2019 respectively.

• Exhibit 5: copies of extracts from ‘Coachella Festival’ guidebooks, dated 2003-2009 and 2016-2018, presenting artists and events featuring the events.

• Exhibit 6: extracts from online news articles www.express.co.uk, www.guardian.com, www.telegraph.co.uk, www.bbc.com, www.bbc.co.uk, www.lemonde.fr, www.elpais.com, www.glamourmagazine.co.uk, www.mirror.co.uk, www.popsugar.co.uk and www.harpersbazaar.com. They refer to the ‘Coachella’ festival and the artists present and are dated 2014-2019.

• Exhibit 7: pictures of the ‘Coachella’ festival decorative ticket boxes for 2014-2019. They contain merchandise: calendars, bracelets, puzzle, booklets.

• Exhibit 8: table containing data relating to sales of tickets to the 2017 and 2018 ‘Coachella’ festivals to EU consumers.

• Exhibit 9: ticket orders/invoices relating to the 2017, 2018, and 2019 ‘Coachella Festivals’.

• Exhibit 10: extract from an article on www.billboard.com, dated 2015. It contains a ranking ‘Top 10 festivals’, where the ‘Coachella’ festival is first with 198 000 attendees and a total of approximatively USD 84 000 000.

• Exhibit 11: extracts from www.coachellamixes.com presenting the ‘Coachella mixes’ by J. Beaver and T. Radman, dated from 2007 to 2019, and a copy of a license agreement between the proprietor and those two persons dated 2018. According to this agreement, it is a formalisation of a previous agreement between the parties since 1999 for compilation of select musical content consisting of various performances from the ‘Coachella’ festivals and the production of CD, DVD or other electronic formats.

• Exhibit 12: an article from www.domusweb.it and an extract from www.newsubstance.co.uk about artistic work exposed during the ‘Coachella’ festivals in 2018.

• Exhibit 13: views from third-party videos published on www.youtube.com showing performances during ‘Coachella’ festivals. The proprietor stated that some persons originate from the UK.

• Exhibit 14: extracts from the proprietor’s ‘Coachella’ channel on www.youtube.com. It registers 844 331 subscribers.

• Exhibit 15: articles referring to the proprietor’s live stream from www.independent.co.uk, and www.dailymail.co.uk, dated 2017 and 2018. The article reports that over 43 1 million people across 232 countries tuned into the live steam during the weekend.

• Exhibit 16: document ‘Coachella & YouTube’ about the collaboration between the proprietor and YouTube for webcasts.

• Exhibit 17: data relating to the proprietor’s ‘Coachella’ YouTube channel. The data shows that in 2018 7 % of the viewers of online contents were from the EU, with 9.5 % in 2017 and 2016, 10 % in 2015 and 10.5 % in 2014.

• Exhibit 18: extracts from the proprietor’s website www.coachella.com, dated 2013-2016, obtained from Wayback Machine (www.archive.org/web/), and screen shots taken in 2019.

• Exhibit 19: data extracted from www.analytics.google.com relating to the proprietor’s website for 2017 and 2018, detailing the audience by countries. For example, in 2017 67 % were from the USA, 5 % from the UK and 2 % from France or Germany. In 2018, 66 % were from the USA, 5 % from the UK and 1.7 % from France of Germany.

• Exhibit 20: data extracted from www.business.facebook.com, not dated, relating to the proprietor’s ‘Coachella’ Facebook page detailing demographic data according to user profiles (for example: 580 100 fans in the USA, 81 400 in Italy, 63 000 in the UK and 5 300 in France) and data provided by Sprinklr relating to the proprietor’s ‘Coachella’ Instagram page.

• Exhibit 21: data provided by Sprinklr relating to the proprietor’s social media influence.

• Exhibit 22: extracts from the proprietor’s ‘Coachella’ pages on Facebook, Twitter and Instagram relating to the promotion of the ‘Coachella Festival’.

• Exhibit 23: extracts from the proprietor’s ‘Coachella’ pages on Facebook, Twitter and Instagram, dated 2018, showing promotion of merchandise (sweats and T-shirts).

• Exhibit 24: extracts from articles from www.pe.com, www.ocregister.com and www.pe.com, dated 2016, 2017 and 2018 respectively, about merchandise available under ‘Coachella’ (tote bags, sweats, T-shirts, posters, caps) bearing the sign ‘Coachella’ or the name of artists.

• Exhibit 25: picture of a T-shirt, that is, a ‘Coachella Festival promotional t-shirt available as an “add-on” purchase with tickets’, according to the proprietor. The word ‘Coachella’ is depicted in small characters on the T-shirt:

.

• Exhibit 26: a collection of ticket orders/invoices relating to ‘add-on’ purchases during the ‘Coachella’ festivals in 2017, 2018 and 2019.

• Exhibit 27: a company report on the 2018 ‘Coachella Festival’.

• Exhibit 28: an extract from www.wikipedia.org for the page ‘H&M’ and extract from www.hm.com.

• Exhibit 29: copy of a sponsorship and license agreement between the proprietor and a third party.

• Exhibit 30: copies of two press releases from www.hm.com ‘H&M to announce the first ever co-branded collection with the Coachella Valley music & arts festival’ and ‘H&M loves Coachella collection: get the festival spirit with the atomics’, dated 2015 and 2017.

• Exhibit 31: extracts from www.hm.com/de, www.hm.com/fr, www.hm.com/it and www.hm.com/pl listing clothing articles under the expression ‘H&M loves Coachella’.

• Exhibit 32: table from the proprietor listing products from the ‘H&M Loves Coachella’ 2016 collection and number of items sold. According to this document, approximatively 5 085 000 items were sold in total.

• Exhibit 33: articles from www.glamourmagazine.co.uk, www.brigitte.de, www.gq-magazine.co.uk, www.globalblue.com, www.vogue.de, www.vogue.fr, www.fuckingyoung.es and www.elle.fr. They refer to items from the ‘H&M Loves Coachella’ collection and show some of the products.

Preliminary remarks

Evidence

There is no limit on the methods and means of proving genuine use of a mark (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

The applicant argued that not all the items of evidence indicated genuine use in terms of time, place, extent, nature and use for the goods and services for which the EUTM was registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. 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.

The applicant also questioned the value of some of the documents, in particular the witness statement, as they came from the proprietor itself.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such documents depends on whether or not they are supported by other types of evidence (invoices, etc.) or evidence originating from independent sources.

The remaining evidence must be assessed in order to see whether or not the contents of the documents originating from the proprietor are supported by the other items of evidence.

Reference to a national decision

The proprietor referred to a decision from the Spanish Office to support its claims on the reputation attached to its trade mark in the European Union.

However, as pointed out by the applicant, decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Moreover, the Cancellation Division does not have access to the documents provided to the national office on the basis of which it rendered its decision. Therefore, the assessment on the use and reputation done by the Spanish office is not relevant to the present proceedings.

Assessment of genuine use — factors

Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22).

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 / Stratégies, EU:T:2010:424, § 43). This means that the proprietor is obliged not only to indicate but also to prove each of these requirements and provide argumentation in this regard.

Place of use

Trade marks must be used in the territory where they are protected. Therefore, 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).

As the Court held in its judgment (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 38), use of the mark in non-EU territories cannot be taken into account.

It is clear from the evidence provided by the proprietor that the sign ‘Coachella’ is used to designate a music and art festival held in California, in the USA, since 1999, the ‘Coachella festival’. This can be inferred from the witness statement and its exhibits, in particular the extracts from the proprietor’s website and the article from Wikipedia, corroborated by articles from independent sources mentioning the festival (exhibits 1 to 6).

The EUTM proprietor indicated that tickets sales were available from the European Union and that numerous EU consumers attend the festival every year, and provided as exhibit 8 a table containing data relating to sales of tickets to EU consumers for the 2017 and 2018 ‘Coachella festivals’. It therefore considered that use in the relevant territory was demonstrated. In support of this claim, it referred to a previous decision from the Office, namely Cancellation Division decision No 13 471 C dated 28/09/2018.

However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Moreover, in the case referred to by the proprietor, the Cancellation Division considered that genuine use of the contested trade mark was not demonstrated and cancelled the EUTM on the basis of other factors, namely extent of use. The Office must determine on a case-by-case basis whether the various indications and evidence can be combined for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered.

Articles 18(1) and 47(2) EUTMR state that if the contested mark is a European Union mark, it must be used ‘in the Union’. A use in respect of services is considered as taking place outside the EU territory if the services are provided outside the European Union in such a manner that the user of the service can only take advantage of it by visiting a place outside the relevant territory, for example in the case of domestic flights in the USA (14/05/2008, R 855/2007‑4, PAN AM, § 23, 24) or in the case of hotel and restaurant services in the USA, which can only be used by physically being in the hotel or restaurant in question (08/10/2009, R 240/2009‑4, THE CARLYLE, § 16, 19).

As referred to above, most of the evidence shows use to designate a music festival held every year in the United States. Use of the trade mark in relation to the organisation and production of a festival in the USA does not constitute proof of genuine use of the trade mark within the European Union, as these services are rendered outside the relevant territory. The fact that consumers from the EU could book tickets and attend the festival is irrelevant as the place of use of the trade mark remains the USA, regardless of the nationality or the geographical origin of the consumers.

Therefore, all the evidence regarding use of the sign for goods sold and services rendered outside the European Union territory cannot be taken into account and must be disregarded, namely evidence in relation to organisation of the festival in California in Class 41 and related services:

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, excluding such services provided on-line from a computer database or the Internet; performance arts and musical entertainment services; festival services, performance of dance, comedy, theatre, poetry and circus entertainment, including such services provided on-line from a computer database or the Internet; performance of music, excluding such services provided on-line from a computer database or the Internet; conducting artistic and musical events; musical concert entertainment; performance and production of music award ceremonies; production and performance of radio and television programmes; production or performance of sound recordings, image recordings, videos, films, concerts and shows; recording studio services; the production or co-production of entertainment events or concerts; recording and production services; entertainment; live music; provision of amusements; nightclubs; cultural and sporting activities; music and text publishing services; operation of entertainment venues; information, advice and consultancy in respect of all the aforesaid services.

Therefore, examination of evidence will continue in relation to the remaining goods and services.

Extent of use and use in relation to the registered goods and services

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.

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).

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, namely:

Class 9: Recordings of sound or images; films, records, compact discs, MP3 players, portable digital electronic devices, mini discs, laser discs, digital video discs (DVD), digital audio recordings, audio cassettes, video cassettes; magnetic tape; CD-ROM, interactive compact discs; magnetic data carriers, recording discs; computer games, video games, interactive games; digital music provided from the Internet; digital recordings of performing arts entertainment provided from the Internet; sound recordings and images downloadable from the Internet; parts and fittings for all the aforesaid goods.

Class 16: Printed matter, printed publications; periodical publications; books, booklets; promotional literature, brochures, event programmes, printed programmes; magazines, leaflets, flyers, tickets, passes, cards, calendars, pictures, posters, photographs; photograph albums; banners, diaries; catalogues; comic strips; guides; carrier bags; paper bags; pamphlets; news sheets; stationery, writing instruments; chalk; pens, pencils, crayons; erasers; rulers; pencil sharpeners; pen and pencil boxes and cases; pencil holders; ring binders; bookends; bookmarks; folders; notebooks; notepads; address books; autograph books; postcards; greetings cards; gift cards; drawings (graphic); stickers; transfers (decalcomanias); stencils.

Class 25: Clothing; headgear, caps, hats, bandannas; t-shirts, sweatshirts, sweatpants, sweaters, singlets, underwear, jeans, pullovers, bomber jackets, waterproof clothing, wind-cheaters, overcoats, shorts, jackets, fleece tops, jumpers, belts, polo shirts, dresses, swimwear, cardigans, coats, trousers, overalls, dance clothing, scarves; footwear, shoes, boots, trainers, sandals.

Class 35: Advertising; marketing and promotion of music artists; promotion and management of entertainment venues; promotion and management of performing arts entertainments and festivals; information, advice and consultancy in respect of all the aforesaid services.

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, including such services provided on-line from a computer database or the Internet; performance arts and musical entertainment services; festival services, performance of music, dance, comedy, theatre, poetry and circus entertainment, including such services provided on-line from a computer database or the Internet; conducting artistic and musical events; musical concert entertainment; performance and production of music award ceremonies; production and performance of radio and television programmes; production or performance of sound recordings, image recordings, videos, films, concerts and shows; recording studio services; the production or co-production of entertainment events or concerts; recording and production services; entertainment; live music; provision of amusements; nightclubs; cultural and sporting activities; music and text publishing services; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet; operation of entertainment venues; information, advice and consultancy in respect of all the aforesaid services.

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 (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The proprietor claimed use of the contested EUTM in relation to various merchandise (sweatshirts and T-shirts, hats, tote-bags, posters), music albums, clothing items, and broadcastings of the festival.

Goods in Classes 9, 16, and 25

Even considered overall, the documents provided are not sufficient to demonstrate genuine use of the sign in relation to these goods, in particular because the evidence does not show to what extent these specific goods/services have actually been sold to consumers.

The proprietor referred to use of the sign in relation to merchandise sold to promote the festival (exhibit 7: pictures of goods) and a T-shirt bearing the contested sign sold as an ‘add-on’ to tickets for the festival (exhibit 25). However, the evidence does not provide information on the extent of sale of such goods. The proprietor provided ticket orders for the festival (exhibit 9). However, this evidence only shows that tickets were sold to attend the festival but, without resorting to presumptions, the effective number of sales for the goods during the relevant period cannot be deduced from it. Likewise, copies of tickets orders relating to ‘add-on’ purchases (exhibit 26) does not prove which goods were sold as ‘add-on’ purchases. Pictures of the goods published on the proprietor’s social media pages or in articles (exhibits 23 and 24) do show existence of these goods but are not sufficient, as they do not provide any information on the number of products sold. Therefore, actual use of the sign in relation to merchandise goods has not been demonstrated.

Regarding the collaboration between the proprietor and H&M for clothing, footwear, and headgear items, the sales of goods are only shown by a table provided by the proprietor listing the number of items sold (exhibit 32) and articles mentioning the collection (exhibits 30 and 33). However, as the list of sales originates from the proprietor itself and it is not corroborated by any means of evidence from independent sources, such as invoices, it is insufficient to demonstrate actual sales of the goods and therefore to establish the extent of use in this respect. Extracts from H&M’s websites (exhibit 31) are irrelevant in this regard as they are not dated.

The proprietor claimed that the contested EUTM was used for albums. The evidence shows that the proprietor has a collaboration (and signed an agreement) with two artists to produce albums consisting of music from ‘Coachella’ festivals (exhibit 11). However, it did not provide any proof of actual sales of these albums to the relevant public by submitting orders or invoices issued to consumers. The mere existence of a website page listing albums is, of itself, not sufficient to prove genuine use. Even if it shows that products have been offered to the public, is does not provide information on the extent of use of the trade mark in relation to these goods.

As a consequence, the Cancellation Division considers that no use of the sign in relation to goods in Classes 9, 16 and 25 has been provided.

Services in Class 35

The evidence does not demonstrate any use of the sign in relation to the services in Class 35.

The proprietor claimed that it promoted the festival in the European Union via its social media (exhibit 22) and referred in particular to articles mentioning the festival (such as exhibit 10).

However, advertising one’s goods and services does not prove that advertising services are rendered to third parties. A service within the meaning of the Nice Classification refers to an independent service offered to third parties, which excludes ancillary services. They consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by advertising companies, not by the proprietor of the sign itself. Therefore, no use of the mark in relation to these services have been provided.

Services in Class 41

As detailed above, evidence in relation to services provided outside the relevant territory — the festival takes place in California — cannot be taken into account.

The proprietor also claimed use of the sign for music broadcasting on YouTube available in particular from the European Union (exhibits 13 to 17). The proprietor provided proof that it owns a channel in YouTube where videos of performances from the festival, live performances and interviews of the artists are available, and that it concluded an agreement with YouTube for live broadcasting of the festival. The articles indicate that over 43 million people worldwide watched the broadcasting of the festivals. According to YouTube statistics, between 7 and 10 % of viewers originate from the EU during the relevant period, that is, around 4 million persons per year.

Therefore, the Cancellation Division considers that the proprietor provided sufficient evidence of use in relation to part of the services in Class 41, namely organisation, production and conducting of performing arts entertainments and festivals, such services provided on-line from a computer database or the Internet; performance of music, such services provided on-line from a computer database or the Internet; musical and visual entertainment provided on-line from a computer database or the Internet; providing digital music from the Internet.

Time of use

The evidence related to the remaining services is dated within the relevant period, or refers to the relevant period.

Therefore, the evidence of use submitted by the EUTM proprietor contains sufficient indications concerning the time of use.

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 that the sign has been used in order to identify services to end consumers on the market allowing them to make a clear link between the services and the EUTM proprietor.

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

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 international registration.

The contested EUTM consists of the word mark ‘COACHELLA’. As it is a word mark, it is irrelevant that it is depicted in upper- or lower-case letters.

The evidence in relation to the remaining services demonstrates that the mark has been used as registered.

Overall assessment and conclusion

Although the proprietor is free to choose its means of proving the extent of use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to demonstrate the reality of the commercial use of the mark in the relevant territory, at least to an extent that is sufficient to dispel any possible belief that this use might be merely internal, sporadic or token.

An overall assessment of the evidence as detailed above does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for all the relevant goods and services (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for all the goods and services in Classes 9, 16, 25, 35 and part of the services in Class 41, for which it must, therefore, be revoked:

Class 9: Recordings of sound or images; films, records, compact discs, MP3 players, portable digital electronic devices, mini discs, laser discs, digital video discs (DVD), digital audio recordings, audio cassettes, video cassettes; magnetic tape; CD-ROM, interactive compact discs; magnetic data carriers, recording discs; computer games, video games, interactive games; digital music provided from the Internet; digital recordings of performing arts entertainment provided from the Internet; sound recordings and images downloadable from the Internet; parts and fittings for all the aforesaid goods.

Class 16: Printed matter, printed publications; periodical publications; books, booklets; promotional literature, brochures, event programmes, printed programmes; magazines, leaflets, flyers, tickets, passes, cards, calendars, pictures, posters, photographs; photograph albums; banners, diaries; catalogues; comic strips; guides; carrier bags; paper bags; pamphlets; news sheets; stationery, writing instruments; chalk; pens, pencils, crayons; erasers; rulers; pencil sharpeners; pen and pencil boxes and cases; pencil holders; ring binders; bookends; bookmarks; folders; notebooks; notepads; address books; autograph books; postcards; greetings cards; gift cards; drawings (graphic); stickers; transfers (decalcomanias); stencils.

Class 25: Clothing; headgear, caps, hats, bandannas; t-shirts, sweatshirts, sweatpants, sweaters, singlets, underwear, jeans, pullovers, bomber jackets, waterproof clothing, wind-cheaters, overcoats, shorts, jackets, fleece tops, jumpers, belts, polo shirts, dresses, swimwear, cardigans, coats, trousers, overalls, dance clothing, scarves; footwear, shoes, boots, trainers, sandals.

Class 35: Advertising; marketing and promotion of music artists; promotion and management of entertainment venues; promotion and management of performing arts entertainments and festivals; information, advice and consultancy in respect of all the aforesaid services.

Class 41: Organisation, production and conducting of performing arts entertainments and festivals, excluding such services provided on-line from a computer database or the Internet; performance arts and musical entertainment services; festival services, performance of dance, comedy, theatre, poetry and circus entertainment, including such services provided on-line from a computer database or the Internet; performance of music, excluding such services provided on-line from a computer database or the Internet; conducting artistic and musical events; musical concert entertainment; performance and production of music award ceremonies; production and performance of radio and television programmes; production or performance of sound recordings, image recordings, videos, films, concerts and shows; recording studio services; the production or co-production of entertainment events or concerts; recording and production services; entertainment; live music; provision of amusements; nightclubs; cultural and sporting activities; music and text publishing services; operation of entertainment venues; information, advice and consultancy in respect of all the aforesaid services.

The EUTM proprietor has proven genuine use for the remaining contested services in Class 41; 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 29/11/2018.

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 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

Frédérique SULPICE

Julie, Marie-Charlotte HAMEL

Ioana MOISESCU

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.