CANCELLATION No 17 827 C (REVOCATION)
RR, SGPS, SA, Edifício Amarílis, Avenida V3, 8500-346 Portimao, Portugal (applicant), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Renaissance Hotel Holdings, Inc., 10400 Fernwood Road, Bethesda, Maryland 20817, United States of America (EUTM proprietor), represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany (professional representative).
On 04/06/2019, the Cancellation Division takes the following
1. The application for revocation is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
On 24/11/2017, the applicant filed a request for revocation of European Union trade mark registration No 8 799 504 (figurative mark) (the EUTM). The request is directed against part of the services covered by the EUTM, namely:
Class 43 Restaurant, catering, bar and cocktail lounge services, resort lodging services; provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
Initially the application for revocation was filed against all the services of the contested EUTM namely:
Class 36: Real estate services, namely listing, leasing, management, operation, rental and brokerage of apartments and condominiums; real estate financing.
Class 41: Health and fitness club services, namely providing instruction and consultation in the field of physical exercise; rental of exercise equipment; providing fitness and exercise facilities; golf club, golf course and golf instruction services; education; providing of training, entertainment, sporting and cultural activities; education and entertainment; arranging conferences; organization of exhibitions for cultural or educational purposes; providing facilities for recreation activities; providing facilities and services for swimming pools and water sports; providing tennis facilities; rental of tennis courts; tennis instruction; providing hotel guests with educational and entertainment information about local attractions and points of interest, and distribution of materials in connection therewith; night clubs; casino services; event planning and management services.
Class 43: Hotel services, restaurant, catering, bar and cocktail lounge services, resort lodging services; provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions; and reservation services for hotel accommodations for others.
The applicant argued that to the best of its knowledge the EUTM proprietor did not use the contested mark for the registered services and, therefore, its rights are subject to revocation pursuant Article 58(1)(a) EUTMR.
The EUTM proprietor filed evidence of use which will be listed and assessed further in the decision.
The applicant criticised the evidence and stated that it does not prove the use of the mark for the following services for which the mark was registered: restaurant, catering, bar and cocktail lounge services; resort lodging services; provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions in Class 43. It further stated that consequently, a partial revocation of the trade mark for the aforementioned services must be declared.
The proprietor commented that the evidence proves the use of the mark for all the services and that following the applicant’s reply it is understood that the scope of the original application has been narrowed and the Cancellation Division will now only consider the application for revocation in relation to the limited range of services set out in the cancellation applicant’s submissions.
Preliminary remark on the scope of the revocation request
When commenting on the evidence of use sent by the EUTM proprietor, the applicant stated that they don’t show use for some services as mentioned above. This declaration was interpreted by the proprietor in the sense that the applicant narrowed the scope of its revocation request and that this targets only the abovementioned services. The Cancellation Division notified the applicant on 17/04/2019 requesting clarifications on this matter and informing it that in the absence of any reply it will interpret the applicant’s letter as a restriction of the extent of the revocation action only to the mentioned services.
Since the applicant did not reply within the time limit set by the Office (i.e. by 22/05/2019), the extent of the revocation is hereby limited to the following services: restaurant, catering, bar and cocktail lounge services; resort lodging services; provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions in Class 43.
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 02/09/2010. The revocation request was filed on 24/11/2017. 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 24/11/2012 to 23/11/2017 inclusive, for the contested services listed in the section ‘Reasons’ above.
On 06/04/2018 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 accepts this request insofar it relates to part of the evidence (specifically the financial and other sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already available to the public, either on the website of the EUTM proprietor and/or in the mass media (including the internet).
The evidence filed on 06/04/2018 encloses a witness statement of Bao Giang Val Bauduin, vice president of Renaissance Hotel Holdings, Inc. and exhibits as follows:
Yearly revenue figures for individual Renaissance hotels in the EU for the period 2012-2017;
Relevant pages taken from the proprietor’s annual reports for the years 2012 to 2016. They refer in general to the properties of the Marriot International, Inc. and the achievements of the respective company during these years and give details about the accommodations belonging to this company worldwide, some of them being Renaissance Hotels (36 in Europe in 2016) of which 2 leased hotels in Germany;
Sample TripAdvisor Certificates of Excellence issued in 2012, 2013 and 2014 for RENAISSANCE Tuscany IL Ciocco Resort & Spa in Italy and printouts taken from the TripAdvisor website between 2012 to 2017 showing details of the following hotels belonging to the EUTM proprietor: Renaissance Brussels Hotel (Belgium) first review dated 04/08/2003, Renaissance Paris Republique Hotel (France) first review dated 06/05/2016, Renaissance Dusseldorf Hotel (Germany) first review dated 16/04/2004, Renaissance Tuscany || Ciocco Resort & Spa (Italy) first review dated 10/05/2011 and Renaissance London Heathrow (UK) first review dated 01/12/2015;
Details of a ‘Golden EGGIE award’ certificate, a ‘EUROPE Customer Satisfaction Excellence’ award and ‘EUROPE Staff Service Excellence’ award, all received by RENAISSANCE Tuscany II Ciocco Resort & Spa (Italy) in 2012; the mark does not appear
and 6. Printouts taken from the proprietor’s various EU dedicated Instagram, Facebook pages of hotels in Germany, Austria, Belgium, France, Italy, Spain and the UK. The proprietor claims that the Instagram pages show details of the and event promotions, health clubs, Yoga and Zumba classes and references to the brand being used in hotels, marketing Rbrand in third party newspaper articles. The Instagram posts indicate the use of the sign for various occasions or events, third party news articles, fundraisers, food and beverages as well as eyewear between 2012 and 2017;The mark appears as follows: