CANCELLATION No 11560 C (REVOCATION)

Trademarkers LLC, 1455 Ocean Drive, Suite 602, Miami Beach, 33139 Florida, United States of America (applicant), represented by Richard Kummer, Bischof-von-Henle-Straβe 2, 93051 Regensburg, Germany (professional representative)

a g a i n s t

Sicam beheer b.v., Land van kleef 9, 5175 BT Loon op zand, Netherlands (EUTM proprietor).

On 05/05/2016, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 5 990 213 are revoked in their entirety as from 19/08/2015.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark No 5 990 213 Freezone (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

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

Class 16 Paper, cardboard and goods made from these materials, not included in other classes; bookbinding material; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

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

Class 25 Clothing, footwear, headgear.

Class 35 Retailing of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, fire extinguishers, precious metals and their alloys and goods made from the aforesaid materials or coated therewith, jewellery, costume jewellery, precious stones, horological and chronometrical instruments, paper, cardboard and goods made from the aforesaid materials, printed publications, bookbinding material, photographs, stationery, adhesives for stationery or household use, artist's materials, paint brushers, instructional and teaching material (except apparatus), plastic materials for packaging, printing blocks, leather and imitation leather and goods made of these materials, hides, bags and suitcases, trunks and travelling bags, umbrellas, parasols and walking sticks, whips and saddlery, clothing, footwear, headgear; business mediation in the sale of these goods via electronic means, e-commerce.

The applicant invoked Article 51(1)(a) EUTMR.

GROUNDS FOR THE DECISION

According to Article 51(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.

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 16/12/2008. The revocation request was filed on 19/08/2015. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 31/08/2015, the Office notified the applicant the deficiency regarding the lack of signature in the application form and gave it two months to remedy this deficiency. On 07/09/2015, the applicant appointed a representative. However on 10/09/2015, the Office notified the applicant the deficiency regarding the lack of information on the economic links between Trademarkers LLC and American Franchise Marketing Limited and on the lack of a General Authorisation in favour of the appointed representative, and gave it two months to remedy these deficiencies.

On 22/10/2015, the deficiencies were remedied by the applicant.

On 03/11/2015, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the goods and services for which it is registered.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.

According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not proven sufficient legal interest in support of its request.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 19/08/2015.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Alina SCHOLZ

María INFANTE SECO DE HERRERA

Begoña URIARTE VALIENTE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.