CANCELLATION No 26 863 C (REVOCATION)

Stone Brewing GmbH, Im Marienpark 22, 12107 Berlin, Germany (applicant), represented by Osborne Clarke (Hamburg), Reeperbahn 1, 20359 Hamburg, Germany (professional representative)

a g a i n s t

Molson Coors Brewing Company (UK) Limited, 137 High Street, Burton Upon Trent, Staffordshire DE14 1JZ, United Kingdom (EUTM proprietor), represented by Groom Wilkes & Wright Llp, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative).

On 05/12/2019, 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 8 810 707 are revoked as from 21/08/2018 for some of the contested goods, namely:

Class 32: Lager.

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

Class 32: Beer and bitter beer.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 8 810 707 STONES (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely beer, bitter beer and lager in Class 32.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that the contested mark had not been used for a continuous period of five years in relation to all the goods for which it was registered and there were no proper reasons for non-use.

The EUTM proprietor submitted evidence as proof of use (listed and assessed below). It also referred to opposition No B 2 757 667 of 30/07/2018 where the evidence filed was deemed sufficient to prove the use of the contested mark STONES.

In reply, the applicant argued that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered in the relevant period. It contested each of the evidence provided by the EUTM proprietor. According to the applicant, a large amount of the evidence of use submitted is undated and, in some cases where the date is provided, it is merely written in handwriting or illegible. Moreover, it further argued that the beer market is a mass-market and therefore, a low volume of sale of mass consumption goods, as in the present case, is a decisive factor that claims for an insufficient use of the contested mark. The actual searches on the website of the EUTM proprietor conducted by the applicant did not reveal any use of the mark STONES.

In its final submission, the EUTM proprietor claimed that it has provided enough evidence to prove the use of the contested mark, and contested all the arguments of the applicant.

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 13/06/2010. The revocation request was filed on 21/08/2018. 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 21/08/2013 to 20/08/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 19/12/2018 the EUTM proprietor submitted evidence as proof of use. The evidence to be taken into account is the following:

• A witness statement dated 17/12/2018 signed by the brand manager at Molson Brewing Company (UK), along with several annexes. According to this affidavit, the mark STONES was used in the United Kingdom in respect of ‘bitter beer’ during the relevant period. A table showing the volume of STONES beer sold in each year of the relevant period is included in this statement. The annexes consist of:

• Invoices dating from the period 2013-2018, addressed to various customers in the United Kingdom. These invoices (except one) show the mark ‘Stones’ followed by indications regarding the kind of beer, namely bitter.

• Invoices dating from the period 2013-2018, addressed to the British supermarket retailer ASDA. These invoices show the mark ‘Stones’.

• Two screenshots of the websites www.groceries.asda.com and http://www.drinksdirect.co.uk/, dated 2017, showing the mark STONES affixed to cans of beer (i.e. bitter beer) offered for sale with prices in pounds sterling, as shown below:

.

• Four brochures with handwritten dates during 2012-2015 showing the mark STONES or STONES BITTER in relation to beer, as in the following example:

.

• A screenshot of a web page on which the trade mark STONES BITTER affixed to a full pint glass of beer is shown (i.e. ). According to the information provided by the EUTM proprietor, this screenshot shows the website of the Mercury Newspaper and dates from 2014.

• A printout from the website Facebook with a picture of beer glasses with the mark STONES.

• A printout from the newspaper www.thestar.co.uk, with pictures of a hockey team sponsored by STONES.

Preliminary remarks

As far as the witness statement is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that the items of evidence filed by the EUTM proprietor do not indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark 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

Most of the evidence is dated within the relevant period (e.g. the invoices).

The applicant argued that the dates of some of the documents (i.e. the brochures) were just handwritten. As explained above, since all the materials submitted must be assessed in conjunction with each other, it has to be taken into account that the documents with the handwritten dates are supported by other documents that are dated within the relevant period. Therefore, the evidence contains sufficient indications concerning the time of use.

Place of use

The abovementioned documents show that the place of use is the United Kingdom. This can be inferred from the language of the documents (English), the currency mentioned in the invoices and in same brochures (pounds sterling) and the addresses of the invoices’ recipients (in the United Kingdom). Therefore, the evidence relates to the relevant territory.

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 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.

In the present case, the EUTM proprietor submitted, inter alia, various invoices for the years 2013-2018, advertising materials and some screenshots showing the goods sold under the mark ‘STONES’. In particular, the invoices show that ‘STONES’ goods were sold with frequency and regularity during the whole period. The high amount of sales shown in the invoices directed at the the British supermarket retailer ASDA permit to conclude that the extent of use of the contested mark was enough.

Moreover, the invoices are corroborated by other materials, such as advertising materials and screenshots of websites showing cans of ‘STONES’ beer for sale with an indication of the price.

Therefore, taking into consideration all the above, it is concluded that this evidence is sufficient to demonstrate that the use of the trade mark at issue was not merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

As seen above, the evidence submitted by the EUTM proprietor to prove genuine use of its EUTM relates only to the United Kingdom. As mentioned above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not, and, according to the case-law, use in one Member State may be sufficient (28/06/2017, T-287/15, Real, EU:T:2017:443, § 59 and 09/11/2016, T-716/15, Representación del hierro del bocado, EU:T:2016:649, § 41–44).

In view of the above, the Cancellation Division considers that, taking into account the evidence in its entirety, it does reach the minimum level necessary to establish genuine use of the EUTM proprietor’s trade mark in the European Union.

Nature of use

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.

In the present case, the trade mark has been used to identify the commercial origin of the goods.

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 EUTM.

In the present case, the earlier trade mark is registered as the word mark STONES.

Even though some of the evidence points to the use of the word mark STONES, most of the evidence, such as the advertising materials and screenshots of websites, shows that the figurative mark and other figurative versions of the word mark STONES are used, sometimes together with the word BITTER.

The Cancellation Division considers that the mark as used does not alter the distinctive character of the mark in the form in which it was registered, because the stylisations of the word STONES are of a purely decorative nature and the addition of the word BITTER only describes the kind of product (i.e. a bitter beer).

In view of the above, the Cancellation Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1)(a) EUTMR.

Use in relation to the registered goods

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 beer, bitter beer and lager in Class 32. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation in respect of 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.

In the present case, the evidence (e.g. the advertising materials and the invoices) submitted by the EUTM proprietor demonstrates genuine use of the trade mark STONES for beer and bitter beer.

In its arguments, the EUTM proprietor referred to the Office’s decision in opposition No B 2 757 667. Firstly, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). In the present case, even if the marks and the goods are the same, the outcome cannot be entirely taken into account as the relevant period is different and the EUTM proprietor submitted additional evidence.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for lager in Class 32, for which it must, therefore, be revoked.

The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 21/08/2018.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Pierluigi M. VILLANI

Ana MUÑIZ RODRÍGUEZ

Richard BIANCHI

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.