CANCELLATION DIVISION



CANCELLATION No 47 777 C (REVOCATION)


Asociación Federación Internacional de Fisicoculturismo y Fitness, Calle Dublín, 39. Nave 1, 28232 Las Rozas de Madrid, Spain (applicant), represented by Balder IP LAW, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)


a g a i n s t


IFBB PRO Membership, Inc., 140 East Main Street, 3rd Floor, Carnegie Pennsylvania 15106, United States of America (EUTM proprietor), represented by Kilburn & Strode LLP, Laapersveld 75, 1213 VB Hilversum, Netherlands (professional representative).

On 16/06/2021, 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 7 237 514 are revoked in their entirety as from 10/12/2020.


3. The EUTM proprietor bears the costs, fixed at EUR 1 080.



REASONS


The applicant filed a request for revocation of European Union trade mark No 7 237 514 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:



Class 5:

Dietary, nutritional, mineral, herbal and vitamin supplements; dietary drink mix for use as a meal replacement; dietary supplements in the forms of effervescent drink mixes, tablets, lozenges, pills, liquids, and powdered drink mixes; meal replacement bars, drinks, drink mixes, powders, and shakes; dietary supplements in the form of ready-to-eat nutritional food bars; topical analgesics; topical preparations containing nutritional, mineral, herbal and vitamin supplements and analgesic; muscle relaxants and soaks, topical medicated preparations, and adhesive patches containing dietary supplement preparations; adhesive patches containing topical analgesics; topical first aid gels.


Class 10:

Articles for exercising the body [for medical purposes]; body training apparatus [therapeutic]; compresses for supporting the body; body-fat monitors, pulse rate monitors, muscle massagers, muscle stimulators, paraffin baths for medical or therapeutic use, heating pads, heat packs, cooling pads, cooling packs, magnetic bracelets for medical purposes; orthopedic walkers; walkers for use by mobility-impaired individuals; therapeutic support aids and coverings for medical purposes, namely bandages, wraps, braces, compression socks, compression stockings, orthopedic foot pads, arch supports; and orthopedic footwear; orthopedic braces and supports; orthopedic braces, belts, bandages and supports; support bandages; braces, belts, supports and bandages for elbows, wrists, knees and hocks; supports for general medical use; orthopedic articles, namely, orthopedic footwear, joint implants, soles, leg bandages, leg and joint supports; plastic braces for application to the human body for use in supporting and bracing injured or damaged joints; therapeutic and mobility braces and aids; massage balls; heart monitors; body fat gauges.


Class 18:

Articles of leather and imitation leather; all-purpose sport, athletic bags, beach bags, book bags, backpacks, shoulder bags, handbags, waist packs, tote bags, purses, clutches, evening handbags, coin and change purses, cosmetic bags sold empty, vanity cases sold empty, toiletry and grooming cases sold empty, attaché cases, briefcases, briefcase type portfolios, luggage, travel bags, suitcases, travel jewelry cases sold empty, garment bags for travel, and travelers' shoe bags; wallets; leather key chains; umbrellas; key cases; business and credit card cases; leather bags and pouches; canes and walking sticks; training bags.


Class 25:

Clothing and apparel; activewear, casualwear, sportswear, and leisurewear for men, women, children, namely, tops, bottoms, shirts, pants, headwear, footwear, belts, hats, caps, sweatshirts, sweatpants, shorts, briefs, socks, coats, jackets, shoes, sneakers, robes, warm-up suits, training suits, jogging suits, jogging shorts, gloves, bandanas, T-shirts, skirts, jeans, sweaters, vests, swimwear, cardigans, underwear, sports bras, boots, sport jackets, overcoats, sandals, wrist bands, head bands, and athletic uniforms.


Class 28:

Commercial grade and home gym equipment; athletic equipment; body building, physical fitness, cardio and exercise equipment; aerobic steps, aerobic slides and riders, stationary bikes, treadmills, rowing machines, stepping machines, stationary recumbent exercise bicycles, strength training machines, weight lifting machines, chest weights, chest expanders, weight lifting benches, slant boards, bench accessories, bicycle trainers, dumbbell sets, fitness weighted balls, weight plates, barbells, dumbbells, bar bell pads, dumbbell handles; sports equipment; bars, barbells, barbell neck protectors, dumbbell bars, hand grippers, head straps, exercise benches, exercise tables, exercise platforms, exercise gliders, spring exercisers, grip developers, medicine balls, head guards, punching bags, expansion cables and straps, workout and weightlifting gloves, workout and weightlifting belts, torso tightener machines, exercise wheels, manually-operated exercise equipment in the nature of stretchable bands; pilates and yoga balance walking balls, door knob rope exercisers, body exercisers with door anchors, twist boards; stretch and aerobic bands; skip/jump ropes, jump ropes with calorie counters, stretch bands, stretch expanders, lifting straps, ankle weights, wrist weights, leg weights, free weights, adjustable ankle/wrist weights with removable plates, ankle and wrist wraps, weight lifting belts, rowing action exercisers; hand-held and portable exercise equipment, chinning bars, pushup stands, sit up bars, reading racks, lifting stands, portable abdominal trainers, portable thigh trainers, tension bars, running weights, dumbbell trees, squeeze balls, stair stepping and climbing machines; ski simulation exercise machines; toys, games and playthings; sporting goods.


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



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.


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 18/03/2011.The revocation request was submitted on 10/12/2020. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.


On 09/02/2021, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of two months to submit evidence of use of the EUTM for all the goods for which it is registered. This time limit expired on 14/04/2021.


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


According to Article 19(1) EUTMDR, if the proprietor of the European Union trade mark does not submit 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 for which it is registered nor any indications of proper reasons for non-use.


Pursuant to Article 62(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.


Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 10/12/2020.



COSTS


According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) 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



Maria José LÓPEZ BASSETS

Graziella MEDDE

Arkadiusz GORNY



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 submitted in writing at the Office within two months of the date of notification of this decision. It must be submitted 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 submitted 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.


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