CANCELLATION No 31 801 C (REVOCATION)

Beijing Xiaoju Technology Co., Ltd., No. 2, North Section, 5F, Building 1, No. 9 Shangdi East Road, Beijing, People’s Republic of China (applicant), represented by Arnold & Siedsma, Rembrandt Tower, 28th Floor, Amstelplein 1, 1096 HA Amsterdam, Netherlands (professional representative)

a g a i n s t

3D Fashion IP B.V., Celsiusstraat 2, 1704 RW Heerhugowaard, Netherlands (EUTM proprietor), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 04/08/2021, 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 6 929 418 are revoked as from 16/01/2019 for some of the contested goods and services, namely:

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

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

Class 25: Footwear.

Class 35: Advertising; business management; business administration; office functions; business mediation in the purchase, sale, import and export of precious metals and their alloys and goods of precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols, walking sticks, whips, harness and saddlery, clothing, footwear and headgear, business consultancy relating to the purchase and sale of goods; business organisation and business economics consultancy and planning, and other such business assistance with regard to the running of retail companies specialising in clothing and with regard to the marketing of the goods of the aforesaid companies; advertising, sales promotion and publicity for retail businesses specialising in clothing; office functions within the framework of drawing up and concluding franchise agreements.

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

Class 14: Jewellery.

Class 18: Goods made of leather and imitations of leather and not included in other classes, namely bags.

Class 25: Clothing, headgear.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 6 929 418 ‘DIDI PRETTY DIFFERENT’ (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 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; business mediation in the purchase, sale, import and export of precious metals and their alloys and goods of precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols, walking sticks, whips, harness and saddlery, clothing, footwear and headgear, business consultancy relating to the purchase and sale of goods; business organisation and business economics consultancy and planning, and other such business assistance with regard to the running of retail companies specialising in clothing and with regard to the marketing of the goods of the aforesaid companies; advertising, sales promotion and publicity for retail businesses specialising in clothing; office functions within the framework of drawing up and concluding franchise agreements.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 16/01/2019 claiming that the EUTM proprietor has not put the European Union trade mark to genuine use for a continuous period of five years in relation to all the goods and services for which it is registered.

The EUTM proprietor filed observations and evidence of use (Annexes 1 to 16, listed below). The EUTM proprietor states that the cancellation action is filed in reaction to a pending lawsuit against the applicant. It provides an overview of the case-law on genuine use and then proceeds to give a detailed explanation and an analysis of the pieces of evidence filed. It states that the evidence filed is a mere selection of all the material that is available and that it shows undeniably that the trade mark has been used for the relevant goods and services in the relevant timeframe. According to the proprietor, this has also been confirmed by the in-use verification search done by the applicant itself. The EUTM proprietor argues that the evidence submitted sufficiently shows the place, time, extent and nature of use for all the goods and services and it is clear that ‘DIDI’ and ‘DIDI PRETTY DIFFERENT’ are a well-known fashion brand in the Netherlands and are also used beyond the Netherlands (Belgium, Germany and Poland).

In its observations in reply, the applicant argues that no genuine use is proven for (most of the registered goods and services of) the contested registration. The applicant analyses the list of goods and services as per the evidence of use filed by the EUTM proprietor. It argues that some of the evidence refers only to ‘DIDI’ and should not be taken into account. The applicant concludes that the documents only show use for a small part of the goods and services covered by the registration. In particular, according to the applicant: as regards Class 14, some of the documents show use of the mark on ‘jewellery’ and no materials were filed showing use on any of the remaining goods; as regards Class 18, no evidence was filed showing use on any of the goods, although some of the documents show use for ‘handbags’, these goods are not covered by the registration; as regards Class 25, the documents show use on clothing and headgear, but no materials were filed showing use of the mark on footwear; as regards Class 35, the documents show use for retail services of jewellery, clothing and headgear, but the materials do not show use for any of the remaining services in Class 35. Then, the applicant proceeds to analyse in detail and comment on each of the individual items of evidence filed. It argues, for example, that the report filed as Annex 1 shows use of the mark, but only on some of the goods/services and that the presence on markets outside the Netherlands is rather insignificant. According to the applicant, a large presence in one small Member State of the European Union, like the Netherlands, is obviously not sufficient to qualify as genuine use of an EUTM registration. In addition, the applicant expresses criticism, such as in relation to the low amount of the invoices, the low number of advertisement mailings sent out to customers in Germany and Belgium, the outdoor marketing campaigns and market research referring to the Netherlands only. The applicant analyses the factors of place, time, extent and nature of use and concludes that the EUTM proprietor has a limited presence on the Dutch market with a small part of the goods/services of the contested registration. The applicant argues that the evidence does not sufficiently show use in the EU, as it only concerns the Netherlands and shows very small presence on the Belgian and German markets. Nevertheless, according to the applicant, even if it is found that the contested mark was put to genuine use in the EU, this use only refers to very few goods/services. The applicant requests that the Office should uphold the cancellation action.

The EUTM proprietor submitted observations in reply. It claims that the combination of all the relevant factors in all the items of evidence, in an overall assessment, indicates genuine use of the contested mark. In addition, the EUTM proprietor argues that DIDI is the brand and PRETTY DIFFERENT is its slogan and that it is using both distinctive elements almost always in combination in almost every clothing tag. The EUTM proprietor addresses the criticisms raised by the applicant and argues, in the main, that the evidence contains sufficient indications that the registered goods and services were actually offered or sold to clients in the EU and/or that they were advertised/promoted publicly and outwardly and to a sufficient extent. As to the goods and services, the EUTM proprietor argues that the evidence demonstrates use in relation to: all the goods and services in Classes 25 and 35, in relation to precious stones, precious metals and jewellery in Class 14 and for leather products and travelling bags in Class 18. In conclusion, the EUTM proprietor states that the documents submitted sufficiently demonstrate the place, time, extent and nature of use in relation to all the goods and services. According to the EUTM proprietor, the evidence makes it very clear that ‘DIDI’ and ‘DIDI PRETTY DIFFERENT’ are a well-known fashion brand in the Netherlands, with its own position in that market and beyond it (as it also has customers in Belgium, Germany and Poland).

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 01/04/2009. The revocation request was filed on 16/01/2019. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 16/01/2014 to 15/01/2019 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 16/05/2019 the EUTM proprietor submitted evidence as proof of use.

The evidence consists of the following:

• Annex 1: (59 pages) Use verification search report titled ‘Investigation report DIDI’ dated 17/12/2018, carried out by an independent in-use investigator. The report consists of the following chapters: conclusion, investigation, internet investigation and 25 enclosures and is in relation to ascertaining the use of ‘DIDI’ trade marks in the past five years, including ‘DIDI PRETTY DIFFERENT’ and . The EUTM proprietor explains that the client for this search was the applicant and that the search has been filed by the applicant in a pending court action in the Netherlands. In this search, the use of various ‘DIDI’ trade marks of the EUTM proprietor was investigated and the conclusion confirms use in Benelux (in the Netherlands and Belgium), Germany and Poland.

• Annex 2: Set of sample invoices dated throughout 2017, 2018 up to January 2019 itemising the sale of various goods (e.g. coats, jeans, tops, pants, blouses, leggings, etc.) to different clients all over the Netherlands. The EUTM proprietor provides an explanation of the structure and coding behind the invoices.

• Annex 3: Set of sample invoices dated throughout 2017, 2018 up to January 2019 itemising the sale of goods to different clients in various parts of Germany. The EUTM proprietor provides an explanation of the structure and coding behind the invoices.

• Annex 4: Set of sample invoices dated throughout 2017 and 2018 itemising the sale of goods to different clients in various parts of Belgium. The EUTM proprietor provides an explanation of the structure and coding behind the invoices.

• Annex 5: Information about the EUTM proprietor’s ‘DIDI’ member club ‘DIDIMemberclub’. The annex shows print screens with the number of members of the ‘DIDI’ club at the end of January 2019 in the following countries: the Netherlands (199.331 members, responsible for 576.055 purchases), Belgium (5.163 members who made 8.198 purchases) and Germany (2.593 members who made 3.231 purchases) and the total number of members (208.792).

• Annex 6: Brochures/magazines in relation to the Netherlands and Belgium, invitations for customer days and invoices for postal services dated in the period 2014 - 2018. The brochures and advertising magazines show a wide variety of goods available for sale for women and girls (e.g. all kinds of clothing items, including gloves and belts, hats, shawls, bracelets/necklaces, bags, etc.) and the following sign can be seen, amongst others, on nearly each page. In addition, the invoice dated 2015 issued by PostNL (the NL postal service) for services for the period 01/05/2015 to 31/05/2015 shows, inter alia, that there were 10.340 Belgian recipients of the print mailing (the advertising magazine), as well as 368.754 Dutch and 4.049 German recipients of the same magazine. The invoice of 2016 issued by PostNL (the NL postal service) for services for the period 01/05/2016 to 31/05/2016 shows, inter alia, that there are 3.845 mailings to German recipients of an invitation for customer days in 2016 and 361.933 mailings to recipients of the 2016 ‘Didi’ lookbook May.

• Annex 7: ‘DIDI’ advertising e-newsletters showing, inter alia, the following sign, and analytics thereof (amount of recipients and effectiveness). It can be seen that the total number of subscribers of the newsletters in January 2019 are around 300.000 (268.821 Dutch subscribers, 23.618 Belgian and 6.875 German subscribers) and that there is a growth of 3.000 subscribers per week.

• Annex 8: Annual reports of the EUTM proprietor’s company for 2015, 2016 and 2017. It can be seen, for example, that the turnover in 2017 was more than 47 million EUR.

• Annex 9: Market research titled DIDI in the market for women’s fashion including the questionnaire and an explanation of the research methodology. The market research was conducted in May 2017 by GFK, a well-known Dutch research company.

The EUTM proprietor points out that page 15 of the research is particularly relevant: the question is “How known is DIDI in relation to competitors?” and the result in the column titled ‘Knowledge/reputation amongst women 15 years and older’ shows that on average 80% of the general public knows the trade mark ‘DIDI’. When you see the target public (females from 30 to 39 years), this amount is 85%. As a comparison, the proprietor points out that the result for the reputation of H&M (which, according to the proprietor, is one of the most well-known clothing brands in the market) in the search for this target group is 93% (only 8% higher). According to the EUTM proprietor, this proves that ‘DIDI’ is a well-known trade mark in the Netherlands. In addition, the sign appears on each page of the search and it is mentioned as part of a question on page 22.

As mentioned, the annex also includes information on the search methodology, number of respondents (4.600 Dutch women in the age of 15 years and older) as well as the questionnaire with list of questions.

• Annex 10: Outdoor billboard campaign carried out in November 2017 throughout the Netherlands by JCDecaux. Invoice of 12/12/2017 issued by JCDecaux in relation to the ‘DIDI’ national campaign. The annex includes photos of the billboards showing, inter alia, and the invoice mentions that the campaign was nationwide and advertising took place in the periods between 21/11/2017 to 04/12/2017 and 22/11/2017 to 28/11/2017.

• Annex 11: Examples of products, namely photographs of clothing, belts, bags and jewellery, as well as photographs of tags and labels, and a detailed Stylebook Fall/Winter 2016, showing, inter alia, ‘DIDI pretty different’. For example, the following signs can be seen, amongst others: , , , , etc.

• Annex 12: Extracts from the EUTM proprietor’s company websites for Netherlands and Germany obtained through the Wayback machine showing, inter alia, ‘DIDI pretty different’. The extracts show, inter alia, images of various goods for sale and refer to the period 2015 – 2019.

• Annex 13: Photographs of shops interior and storefronts; a map showing the locations of 84 ‘DIDI’ shops in the Netherlands; printout from ‘Wehkamp.nl’, a third-party website showing the availability of ‘DIDI’ online shop on it. The sign ‘DIDI pretty different’ is present on nearly all pages.

• Annex 14: Articles in the media and/or in the internet in relation to ‘DIDI’ dated in 2017, 2018 and 2019. Amongst the Dutch magazines are, for example:

- Linda (Dutch magazine with an average of 1.222.000 views);

- Fashion United (popular fashion blog);

- Jan (Dutch magazine with an average of 228.000 views);

- Vriendin and others.

• Annex 15: Advertisements of ‘DIDI’, including ‘DIDI pretty different’, in magazines, for example in:

- Libelle (Dutch magazine with an average of 1.800.000 views).

- Linda and others.

• Annex 16: Social media presence, in particular extracts of DIDI’s accounts in:

- Facebook;

- Pinterest;

- Instagram.

Preliminary remarks

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The evidence shows use by other companies, such as DIDI Fashion B.V. The fact that the EUTM proprietor submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). In addition, the EUTM proprietor confirmed this and specified that the company 3D Fashion IP B.V. is the company that holds the intellectual property and the companies 3D Fashion B.V. and DIDI Fashion B.V.

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by those other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods and services for which the EUTM is 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.

Assessment of genuine use – factors

Time of use

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

The evidence falls within, or can safely be attributed to refer to use within the relevant period of time. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

The applicant argues that although the majority of the documents refer to the relevant time frame, several documents, e.g. Annex 11, are undated and should be excluded from the assessment. The Cancellation Division, however notes that it is only part of Annex 11, that is not dated, namely the close-up pictures of items of goods (clothing, belts, bags and jewellery), as well as labels and tags. The remaining part of Annex 11, consisting of a detailed Stylebook, clearly indicates ‘Fall/Winter 2016’ on its cover and belongs to the relevant time period. As to the undated pictures, their intended purpose is to serve as an additional aid showing how the mark appears on the goods. It should be reminded that a piecemeal approach to the evidence is not appropriate and the evidence should be viewed in its entirety. Therefore, bearing in mind the nature of this item of evidence, as well the ample availability of other items of evidence corroborating its veracity and reliability, as well as the fact that all the remaining evidence is dated within the relevant period, it is considered that this argument of the applicant is not particularly relevant or well-founded. Even if this part of Annex 11 is disregarded, for which, as explained above, the Cancellation Division does not see any reason, the majority and a sufficient amount of the documents are dated within the relevant period of time. As for the few occasions in which only ‘DIDI’ is shown, these items of evidence will not be taken into account.

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).

According to the applicant, a large presence in one small Member State of the European Union, like the Netherlands, is not sufficient to qualify as genuine use of an EUTM registration.

According to case-law and following ‘Leno Merken’ case (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 44), Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the Union. As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule cannot be laid down (§ 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (§ 58). Use of an EUTM in the UK (15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57) or even in London and its immediate surroundings may be geographically sufficient (30/01/2015, T-278/13, now, EU:T:2015:57).

In the present case, the evidence, such as the use verification search report (Annex 1), the invoices (Annexes 2, 3, 4), the loyalty membership club information (Annex 5), the advertisements and campaigns thereof (Annexes, 6, 7, 10), the market search (Annex 9), the information about shops (Annex 13), etc. shows that the place of use is at least three different Member States, namely the Netherlands, Germany and Belgium, and possibly in a fourth country, namely Poland. This can be inferred from the language of the documents, the currency mentioned and the addresses all over the territories of at least three different countries. Consequently, taking into account the relevant circumstances of the case, the characteristics of the market and the scale and territorial extent (large geographical areas in several Member States), it is considered that the evidence is sufficient to satisfy the European requirements or standards for genuine use. 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.

In the present case, the evidence shows that the contested EUTM was used as a trade mark. The evidence filed by the EUTM proprietor shows a link between some of the registered goods in question and the use of the mark and that the EUTM was used in accordance with its essential function, which is to guarantee the commercial origin of the goods for which it is registered.

Nature of use: use of the mark as registered

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

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

In the present case, the registered mark is the word mark ‘DIDI PRETTY DIFFERENT’. The evidence shows uses such as , , , , , . The Cancellation Division considers that all these are uses of the mark as registered or in a form essentially the same as that registered. This is because the inherently distinctive word elements ‘DIDI PRETTY DIFFERENT’ are clearly legible and prominently shown, written in fairly standard fonts. The addition of some figurative elements, such as colours, italicised font resembling handwriting or the positioning of the words on two levels, is not particularly striking, as these are normally perceived as decorative elements that appear commonly on advertisements, labels and tags and do not divert the attention from the verbal elements.

Therefore, although the use of the contested mark varies at times, this does not affect its distinctive character. Consequently the evidence gives sufficient indications of the use of the mark as registered or of a variation thereof, in a form which does not alter its distinctive character and, therefore, constitutes use of the contested EUTM under Article 18 EUTMR.

Extent of use

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

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

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

The Cancellation Division is of the opinion that for part of the contested goods for which the EUTM is registered, the evidence (the invoices, the independent market research and in-use verification search report, the advertising material, the detailed catalogues, online and physical stores information, etc.), gives sufficient information regarding the extent of use of the mark. The evidence shows that the EUTM proprietor has offered, advertised and sold its goods uninterruptedly throughout the whole relevant period, to different consumers in at least three different Member States of the EU.

The applicant argues that there are very few invoices altogether and, in addition, they only show the sale of clothing and there is no information as to the exact extent of use in relation to other goods, such as jewellery and bags. Furthermore, the applicant argues that there is a low number of advertisement mailings sent out to customers in Germany and Belgium, as compared to those in the Netherlands.

In this regard, the Cancellation Division notes that the invoices provided by the EUTM proprietor are just examples. This was emphasized by the proprietor itself and is, moreover, obvious from the invoices themselves, which have a non-consecutive numbering and can be regarded just as a sample of sales, and not as the total amount of actual sales of goods bearing that mark. Furthermore, the invoices refer to three different countries (Netherlands, Germany and Belgium). Therefore, even though the quantity of goods evidenced in the invoices on file is not particularly high, it must be recalled that the EUTM proprietor is not under the obligation to submit detailed financial information, since the obligation incumbent to produce evidence of genuine use of a trade mark is not designed to monitor the commercial strategy of an undertaking (08/07/2004, T-334/01, ‘Hipoviton’, EU:T:2004:223) or its financial success.

In relation to the lack of direct sales documents in relation to some of the goods, such as bags and jewellery, there are sufficient indications in the evidence that these goods were advertised and offered for sale regularly via different sales and advertising channels (such as online shops, physical shops, detailed catalogues, e-newsletters, print media advertisements, social media presence, regular mail, etc.). The goods were promoted and offered throughout the whole period and in at least three different countries. Use of the mark need not be quantitatively significant for it to be deemed genuine. 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.). The evidence shows that the EUTM proprietor has used the mark publicly and outwardly; it offered, promoted and/or sold the relevant goods uninterruptedly throughout the relevant period and in the territory of several Member States.

Consequently, the Cancellation Division is of the opinion that the evidence, in its entirety and in combination thereof, gives sufficient information regarding the extent of use of the mark. Taking into account the documents submitted, including from independent sources, as well as the fact that the EUTM proprietor has offered, promoted and/or sold its goods regularly and continuously, in several Member States and to different consumers, it is concluded that the evidence contains clear and consistent indications that the volume of the exploitation of the mark is far from being merely token.

Consequently, taking into account the evidence in its entirety and based on an overall assessment, the Cancellation Division considers that the evidence gives sufficient information regarding the extent of use of the mark for part of the contested goods/services (see next section).

Use in relation to the registered goods and services

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

The contested EUTM is registered for various goods and services in Classes 14, 18, 25 and 35. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the contested goods and services.

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

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

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

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

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

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

Use for the goods in Class 25

The contested EUTM is registered for, inter alia, clothing; headgear. It is clear that these categories of goods are sufficiently broad for several subcategories to be identified within them. However, the evidence shows use of the mark in relation to a wide variety of items of clothing and headgear, such as coats, jeans, tops, pants, blouses, leggings, hats, bonnets, gloves, shawls, scarves, belts, etc. Therefore, bearing in mind the broad spectrum of goods for which the mark is used, it is considered that the evidence shows use of clothing; headgear.

The EUTM proprietor did not submit any evidence of use or any proper reasons for non-use in relation to the remaining goods in this class, namely footwear.

Use for the goods in Class 14

The EUTM is registered for the following goods in this class: 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.

The evidence shows that EUTM proprietor advertised and offered for sale the trade mark in relation to a broad spectrum of jewellery items, in particular, rings, necklaces, brooches, bracelets, neck chains, etc. As mentioned above, although there are no invoices in relation to these goods, the remaining evidence on file demonstrates that these goods were advertised and promoted regularly as part of the proprietor’s goods. These goods can be seen in the detailed catalogues, brochures and advertising magazines, in print media advertisements and look books. Although the term jewellery is fairly broad, account is taken of the fact that the evidence shows use for various goods. The EUTM proprietor is not expected to prove use in relation to all conceivable variations of the goods concerned by the registration. This is also in order to respect the legitimate interest of the proprietor in being able in the future to extend its range of goods, as reflected in the above-cited Aladin judgement. Therefore, the Cancellation Division finds that sufficient evidence was filed to prove the use of the EUTM for jewellery.

The EUTM proprietor argued that the evidence shows use also in relation to precious stones, precious metals, as the jewellery for which use is shown is made of precious stones and precious metals. However, the Cancellation Division does not concur with this. Firstly, the jewellery items offered by the EUTM proprietor are not explicitly advertised as items that contain, or are made of precious stones, precious metals. This is also reflected by their price range. Secondly and more importantly, the fact that jewellery may be made of precious stones or precious metals does not mean that the mark is used in relation to those goods as well. There is no single item of evidence showing that precious stones or precious metals were designated with the contested trade mark and/or that the EUTM proprietor is also offering such goods.

Consequently, it is considered that the EUTM proprietor did not submit any evidence of use or proper reasons for non-use of the contested trade mark in relation to precious stones, precious metals. No evidence of use was filed either in relation to any of the remaining goods in this class.

Use for the goods in Class 18

The registered goods in this class are Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery. The applicant argues that although some of the documents show use for handbags, these goods are not covered by the registration. According to the applicant these products cannot be classified as ‘trunks’ or ‘travelling bags’ and as such it must be concluded that no documents were filed showing use of the mark for any of the goods in Class 18. In support of its arguments, the applicant refers to a document published in EUIPO’s portal, at https://euipo.europa.eu/ohimportal/en/news/-/action/view/3061397. It argues that this document contains a non-exhaustive list of examples of terms considered not to be covered by the literal meaning of the class headings and the term ‘handbags’, along with goods such as ‘purses’, ‘schoolbags’ and ‘shopping bags’, are cited therein.

The Cancellation Division, however, does not share the applicant’s views. Indeed, the mentioned document lists terms such as ‘handbags’, ‘purses’, ‘schoolbags’ and ‘shopping bags’. Nevertheless, the very title of the document and the beginning of the document clearly start with/mention the following:

Examples of terms either clearly not covered, or not clearly covered by the literal meaning of the respective class headings for the purposes of declarations under Article 28(8) EUTMR.

This list is a non-exhaustive list containing examples of terms considered to be either clearly not covered, or not clearly covered by the literal meaning of the respective class headings. The list is purely for the guidance of trade mark owners wishing to submit declarations for the purposes of Article 28(8) EUTMR. In the event of a discrepancy between the different language versions of the list, the English version prevails. Pursuant to Article 8 of Communication 1/2016 of the Executive Director concerning the implementation of Article 28(8) EUTMR, the Office will not object to the inclusion of terms not clearly covered by the literal meaning of the class headings in the specification. There may be other terms for which there is reasonable doubt as to whether or not they are covered by the literal meaning of the class heading.

The acceptance of declarations for terms not clearly covered by the literal meaning is without prejudice to Office practice in the comparison of goods and services in future opposition or cancellation proceedings.

Applicants are reminded of the limitations of the effects of the declaration, contained in Article 28(8) second paragraph, last sentence and 28(9) EUTMR.

Therefore, the mentioned document does not demonstrate that the class heading titles of Class 18 do not cover goods, such as handbags, purses, schoolbags and/or shopping bags.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), although the term goods made of leather and imitations of leather does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are, it covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.

Therefore, the applicant’s arguments are not well-founded.

In the present case, the evidence shows use of the mark in relation to several different types of bags, such as handbags, purses, pouch bags, shoulder bags, shopper bags, backpacks, which are made of different materials, in particular textile, suede or imitation leather. Bags belong to the following registered broad category: goods made of leather and imitations of leather and not included in other classes. This category of goods is sufficiently broad for several subcategories to be identified within it. As mentioned, the evidence shows that the contested EUTM has been used for different types of bags. Consequently, the Cancellation Division finds that the use for the goods handbags, purses, pouch bags, shoulder bags, shopper bags, backpacks, constitutes use for the subcategory bags, which falls under the mentioned broad category. Although the category bags also includes other types of goods that the proprietor does not offer, account is taken of the fact that the EUTM proprietor is not expected to prove use in relation to all conceivable variations of the goods concerned. This is also in order to respect the legitimate interest of the proprietor in being able in the future to extend its range of goods, in line with the above-cited Aladin judgement.

In relation to registered goods trunks and travelling bags, although the latter also includes bags, the EUTM proprietor did not submit any evidence of use for travelling bags (bags for carrying things when travelling) or for trunks (large packing cases or boxes that clasp shut, used as luggage or for storage). Therefore, it is considered that no use was demonstrated for these goods. The EUTM proprietor did not submit any evidence of use in relation to any of the remaining goods in this class either.

In summary, it is considered that the evidence shows use for goods made of leather and imitations of leather and not included in other classes, namely bags. No evidence of use, or proper reasons for non-use, of the contested trade mark in relation to any of the remaining goods in this class was filed.

Use for the services in Class 35

In the present case, examining the evidence submitted by the EUTM proprietor, the Cancellation Division finds that it does not show use of the contested mark as an indicator of the commercial origin of any of the registered services.

According to the EUTM proprietor, use has been attested for all services in this class. It argues that several shops have been operated by franchise partners and that a large webshop is operated by Wehkamp. The EUTM proprietor argues that it has obligations to promote the mark and that it delivers consultancy services how to brand and market the trade mark, especially to franchise partners. It claims that, for example, there are guidelines and rules how to use and market the trade mark, how to design the shops, etc. In this respect, according to the proprietor there is use for all services in Class 35.

The Cancellation Division, notes, however, that there is no conclusive evidence on file clearly demonstrating that the EUTM proprietor was providing any of the contested services to third parties under the contested mark. The EUTM proprietor did not file any evidence either in relation to its claimed franchise activity, partners or obligations thereof. The evidence merely shows, for example Annexes 1 and 13, that the EUTM proprietor operates its own retail shops that are designated with the contested sign and sell its ‘DIDI’ branded goods and that its goods are also available for sale in an online shop operated by ‘Wehkamp.nl’, a third-party website. However, there are no documents on file proving that the proprietor rendered services such as advertising, business management, business administration, business mediation in the sale/purchase/ import/export of goods, business organization and business economics consultancy, business assistance with regard to the running of retail companies, etc. to third parties under the mark. The mentioned services are normally rendered by specialist companies such as advertising agencies, business mediators in commercial affairs, business consultants, which study their client’s needs and provide those clients with tools and expertise to enable them to carry out their business or provide businesses with the necessary support to acquire, develop and expand their market share.

Therefore, in the lack of evidence to the contrary, it is considered that the EUTM proprietor did not demonstrate use or any proper reasons for non-use in relation to any of the registered services in this class.

Overall assessment and conclusion

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

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors time, place, extent and nature of use for some of the contested goods in Classes 14, 18 and 25 for which the mark is currently registered, namely:

Class 14: Jewellery.

Class 18: Goods made of leather and imitations of leather and not included in other classes, namely bags.

Class 25: Clothing, headgear.

Therefore, the EU trade mark registration remains registered for the abovementioned contested goods and the application for revocation is not successful in this respect.

However, the evidence submitted is insufficient to prove genuine use of the contested EUTM in relation to the remaining contested goods and services, for which it must, therefore, be revoked, namely the following:

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

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

Class 25: Footwear.

Class 35: Advertising; business management; business administration; office functions; business mediation in the purchase, sale, import and export of precious metals and their alloys and goods of precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols, walking sticks, whips, harness and saddlery, clothing, footwear and headgear, business consultancy relating to the purchase and sale of goods; business organisation and business economics consultancy and planning, and other such business assistance with regard to the running of retail companies specialising in clothing and with regard to the marketing of the goods of the aforesaid companies; advertising, sales promotion and publicity for retail businesses specialising in clothing; office functions within the framework of drawing up and concluding franchise agreements.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 16/01/2019.

COSTS

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

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

The Cancellation Division

Oana-Alina STURZA

Liliya YORDANOVA

Michaela SIMANDLOVA

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.