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

DECISION

1. The application for revocation is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

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:

1. Yearly revenue figures for individual Renaissance hotels in the EU for the period 2012-2017;

2. 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;

3. 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;

4. 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

5. 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:

7. Printouts taken from the proprietor’s various EU dedicated Twitter pages: Renaissance Brussels (Belgium), Renaissance Tuscany (Italy), RenaissanceBarcFira (Spain) and Renaissance Heathrow (UK);

8. Printouts from the Wayback Machine website archive (www.web.archive.org) which show the homepage of the dedicated websites for RENAISSANCE hotels in Belgium, France, Germany, Ireland, Italy, the Netherlands, Spain and UK and extracts taken from dedicated websites of the proprietor’s hotels in Belgium, France, Germany, the Netherlands and Spain to show the amenities and services offered, which includes the Concierge desk, Virtual Concierge and Limousine services. These services offer the arrangement of transportation for travellers and passengers by car or limousine, the arranging of tours and cruises for customers as well as bookings for restaurants, museums and theatre visits, all through the proprietor’s concierge service who advise customers with their travel guide knowledge;

9. Third party news articles that make reference to the RENAISSANCE brand. The articles were published between 2012 and 2017 in the media in Germany, France, the Netherlands, Italy, Spain and the UK;

10. Various press releases and online articles regarding the hotel Renaissance Tuscany II Ciocco Resort & Spa which were published between January 2013 and September 2013;

11. Printouts taken from various third party bookings and travel information sites such as Easytobook.com, Gordon Research Conference HotelPlanner.com, Hotelopia.com, H-rez.com, lonelyplanet.com, venere.com, traveleurope.it, hotelchannel.com, etc. These printouts, all obtained during 2013, show reviews and details of services provided at the Renaissance Tuscany II Ciocco Resort & Spa, Renaissance Naples Hotel Mediterraneo;

12. Promotional leaflets produced for the proprietor’s Renaissance Tuscany II Ciocco Resort & Spa Italy between 2012 and 2013;

13. Sample invoices from the proprietor’s Renaissance Tuscany II Ciocco Resort & Spa and Renaissance Naples Hotel Mediterraneo in Italy which are dated 31/12/2012, 30/11/2013, 01/10/2013, 05/10/2013, 03/02/2014, 27/04/2017, 10/03/2015, 01/09/2016 and 19/11/2017. The invoices show Rewards points and are issued for accommodation services (bed and breakfast), restaurant services at Le Salette restaurant and La Veranda restaurant. The Invoices in this Exhibit display the mark as in exhibit 12 or as ;

14. A group booking agreement between Renaissance Aix En Provence hotel (France) and a third party. It agrees to a negotiated room rate service during the 2015 season for the other party’s employees, including a free breakfast buffet and WIFI and a tariff proposal made by the said hotel to a different third party which includes a full day meeting event at the hotel at a discounted rate providing a committee room for 10 hours, welcome coffee with pastries, parking for the full day at a discounted rate and a lunch package at the Le Comptoir du Clos restaurant. Samples of management and license and royalty agreements between affiliates of the proprietor’s company, which are also subsidiaries of Marriott, and third-party hotel owners from UK, the Netherlands and France. It is claimed that affiliates of the proprietor’s company provide hotel management services to third-party hotel owners which are named and license the rights to the Renaissance marks to these third party hotel owners. The proprietor further claims that the agreements were in force during the relevant period;

15. Advertisement flyers displaying the mark which were used to promote the proprietor’s Halloween events in 2014 and 2013 and 2012 and the RLife event in January 2015 at the in Renaissance Tuscany II Ciocco Resort & Spa (Italy) and the 2012 Christmas Holiday Season at the Renaissance Brussels hotel (Belgium). Enclosed are also individual flyers of the RLife events of the Brussels Befana party between 2013 to 2017, the Sprint Fiesta event in 2013, the Pentoiaccia party between 2014 and 2017 at the Renaissance Tuscany II Ciocco Resort & Spa (Italy), the Fashion & Live in 2014 at the Renaissance Aix En Provence hotel (France), the ‘Business Unusual Cocktail’ Experience at the Duesseldorf Renaissance (Germany) in 2016 and the ‘Fair Get Together’ at the Duesseldorf Renaissance (Germany) in 2016;

16. Advertisements relating to the proprietor’s Renaissance Hotels Global Day of Discovery initiative an annual event first launched in 2012 showing rafting activities, different cooking lessons, honey extraction demonstrations;

17. ‘Development Guide’ brochure and printouts from the Wayback Machine website archive (www.web.archive.org) which show the business development website of Renaissance hotels from 2015 to 2017;

18. Two vouchers, one issued in 2013 and the second in 2015 relating to the Renaissance Naples Hotel (Italy) showing the use of the mark as ;

19. 2013 to 2017 editions of the proprietor’s Renaissance Tuscany II Ciocco Resort & Spa catalogues showing different offers including accommodation, cooking classes, wine tasting, wine show classes, beauty spa gateway, music festivals;

20. St. Pancras Renaissance hotel brochure (UK);

21. Printouts between 2015 to 2017 from the Wayback Machine website archive (www.web.archive.org) which show the ‘Navigator’ concierge service offered in each of the Renaissance hotels;

22. Promotional brochures and catalogues used to offer the wedding and spa services available at Renaissance Tuscany II Ciocco Resort & Spa;

23. Promotional brochures used to advertise the meeting centre and rooms at the Renaissance Tuscany II Ciocco Resort & Spa (Italy) in 2016 and 2017. Enclosed with this Exhibit are brochures titled ‘Meeting & Event Menu Kit’ from the Tuscany II Ciocco Resort & Spa (Italy) and the ‘Beverage Packages Banquets’ promotional material from the Renaissance Aix En Provence hotel (France) which detail the availability of food and drink services at meetings;

24. Printouts from the Mahogany website (a UK based creative design and marketing company that assist with a Europe-wide marketing campaign to increase trade for the proprietor’s live music events and festivals held at its various hotels in the EU) along with screenshots taken from the various videos provided relating to the marketing campaign;

25. A Witness Statement and Exhibit provided by Kate Nicholls, Chief Executive Officer of the Association of Licensed Multiple Retails (the “ALMR”) since 2014, previously (from 2010-2014) Strategic Affairs Director at ALMR and before that having various private sector roles in the UK Hospitality industry from 1993. Ms Nicholls attests the fact that “the marks” (amongst which the contested mark is included) have all been used within the relevant period (2012-2017) at three hotels associated with the company in the UK, ‘Renaissance London Heathrow Hotel’, ‘St Pancras Renaissance Hotel London’ and ‘Renaissance Manchester City Centre Hotel’. Attached there is Exhibit KN1, consisting of a printout taken from the website of Marriott International Inc. and detailing the 175 current locations worldwide of hotels or properties under the Renaissance Hotel Brand, 24 of them in Europe;

26. A Witness Statement provided by Claire Moule, General Manager of the Renaissance Hotel in Manchester, United Kingdom, attesting to the fact that the mark has been genuinely used throughout the relevant period of 2012 to 2017 to which some pictures depicting the mark associated with the word Renaissance are attached.

As already mentioned above, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods and/or services.

These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the EUTM proprietor is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (judgment of 17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).

In respect of the time and the place of use, the evidence must show that the contested EUTM has been genuinely used in the relevant period (i.e. from 24/11/2012 to 23/11/2017 inclusive) and in the relevant territory (EU).

Most of the evidence is dated within the relevant time frame. It is true that, a small part of the evidence is either undated or dated outside the relevant period. However, this does not mean that such documents should simply be ‘disregarded’. Admittedly, evidence referring to use outside the relevant period is generally disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). This applies to the case at hand, where, as already mentioned, the vast majority of the evidence is dated within the relevant period and the documents dated outside merely evidence the long standing use of the mark.

Therefore, it is considered that the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Furthermore, the evidence filed shows that the mark is used together with the denomination ‘Renaissance Hotel’ in several member states such as Germany, France, the Netherlands, Italy, Spain and United Kingdom. Therefore, it is considered that the evidence relates to the relevant territory.

Finally, concerning the 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). Furthermore, 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 therefore 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 evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and services and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

It is reminded that the obligation to produce evidence of genuine use of a trade mark is not designed to monitor the commercial success or to review the economic strategy of an undertaking. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49).

The Cancellation Division is of the opinion that for part of the services for which the mark is registered the evidence, in particular the invoices and annual reports, corroborated by awards, printouts from websites, brochures, articles, social media printouts etc., gives sufficient information regarding the extent of use of the mark, the commercial volume, the duration and the frequency of use.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, evidence of the use of the mark as registered and evidence of its use for the services for which it is registered.

Use as a trade mark and use of the mark as registered

Nature of use requires, inter alia, that the contested EUTM 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.

Furthermore, ‘nature of use’ in the context of Article 10(3) EUTMDR 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 EUTM.

The evidence shows that the mark is used in the vast majority of the cases as registered or followed by ‘HOTEL’ or/and the geographical location of the respective establishment (descriptive terms that identify the proprietor’s services and their geographical origin).

It is also considered that, in the context of the evidence as a whole, the documents submitted do show that the contested EUTM was used in such a way as to establish a clear link between the services and the EUTM proprietor and in a form which does not alter its distinctive character.

Use in relation to the registered services

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

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 only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45 and 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 23).

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 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 has stated 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 sub-categories (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 46 and 51; 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § § 24; 16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 57).

[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).

It is reminded that, as detailed above, after the restriction of the scope of the revocation request by the applicant, the services targeted by the revocation action are: 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.

The core business of the proprietor and the main activity for which the mark was used is in the field of hospitality services and, in particular, hotel accommodation services (not contested anymore) and resort lodging services. The proprietor filed a small number of invoices for the provided services which were, however, supported by other documents such as annual reports or the reviews and prizes from travel sites and that give sufficient information regarding the extent of use of the mark for the respective services.

Furthermore, the evidence shows that the mark was used also in connection with restaurant, provision of general purpose facilities for meetings, conferences and exhibitions; provision of banquet and social function facilities for special occasions, services that were provided in the respective RENAISSANCE hotels, resorts and spas and were offered also in packages alongside the accommodation services.

As regards the restaurant services in particular, the Cancellation Division notes that there are some restaurants located in some particular Renaissance Hotels that bear different names like Le Salette restaurant and La Veranda restaurant. Nevertheless, various Renaissance hotels offer restaurant, bar and cocktail lounge services that are provided under the Renaissance name. Furthermore, it has to be taken into account that the EUTM proprietor has a legitimate interest to expand in the future the range of its services to other types of related services complementing those that it already offers and this is particularly the case in this business activity. In fact, it is quite common that hotel services offer various other services that closely relate to the main business activity hotel services, such as catering, bar and cocktail lounge services.

For the abovementioned reasons it is justified in the Cancellation Division opinion to consider that the genuine use of the mark is proven for all the contested services.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Janja FELC

Ioana MOISESCU

Julie, Marie-Charlotte HAMEL

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.