CANCELLATION No 14 848 C (REVOCATION)

Apptio, Inc., 11100 NE 8th Street Suite 600, Bellevue Washington 98004, United States of America (applicant), represented by Jeffrey Parker And Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative)

a g a i n s t

Comarch S.A., AL. Jana Pawla II 39 a, 31-864 Krakow, Poland (EUTM proprietor), represented by Daniel Kurdubski, Al. Jana Pawła II 39a, 31 864 Krakow, Poland (professional representative).

On 20/11/2018, 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 8 847 311 are revoked in their entirety as from 21/04/2017.

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 registration No 8 847 311 ‘ALTUM’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Electronic data carriers of all kinds included in class 9, including magnetic and optical data carriers, magnetic cards, magnetic tapes, magnetic tapes for computers, recording discs, floppy discs, magnetic discs, optical discs, compact discs, including audio and video discs, CD-ROMs, CD-Rs, CD-RWs, DVDs, DVD-Rs, DVD+Rs, DVD-RWs, Blue Rays, HD DVDs, calculating discs; computer memories; record data carriers in the form of computer memories; data stored on or in electronic, magnetic and/or optical media; pre-recorded compact discs; computers, including portable computers and other data processing equipment; computer hardware and accessories; computer peripheral devices; monitors, including monitors for use with computers:; computer keyboards; computer pointing devices, including computer mice; printers for use with computers; disks drives for computers; modems; scanners; magnetic tape units for computers; data transmission apparatus; coaxial cables; cables for computer and telecommunications networks; telephones; subassemblies, components; telephone exchanges; computer software; electronic publications; publication of electronic books and journals, course books, reports, analyses, teaching material, scientific journals, folders, advertising material, summaries and articles.

Class 35: Auditing, including audits on the use of computer systems and related resources and the information needs of others; cost analysis services; cost management; market analysis; business information; business research, efficiency experts; consultancy, including professional business consultancy regarding setting up, organizing, conducting and management of business activities and business management and organisation assistance; collection, compilation, systemisation, sorting and transcription of information and other materials and elements into computer databases and other data sets; processing, retrieval and reprocessing of information and other materials and elements in computer databases and other data sets; Computer and informatics resources management; computer file management; data search in computer and informatics resources, computer files and computer databases, including copying of electronic data carriers; verbal, audio, audiovisual and multimedia advertising for transmission via television, radio, the Internet, computer networks and other means of communication; advertising and marketing services; renting of advertising space, including virtual advertising space; website positioning; retail and wholesale, including via computer networks, Internet shops, mail order, catalogues, in retail shops and wholesale outlets, of computers and computer equipment, printed publications, including magazines, text books, electronic publications, computer programs, pre-recorded magnetic, optical and electronic data carriers.

Class 42: Computer systems analysis; consultancy in the field of computer hardware and software; installation, maintenance and updating of computer software; implementation of computer software, computer and information systems; arranging and conducting of innovation and implementation processes relating to computer programs and computer systems; computer systems and software design; multimedia presentation design; computer programming services; conversion of data or documents from physical to electronic media; rental of computer software, computer rental; duplication of computer programs; creating and maintaining websites and portals for others; webpage management; computer network management; promotion, optimisation and positioning of webpages; hosting, design, creation and maintenance of customer service systems accessible via the Internet and by means of computer networks; database services accessible via the Internet and by means of computer networks; recovery of computer data; graphic design; graphic design.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that EUTM has not been put to genuine use for a continuous period of five years.

The EUTM proprietor submits evidence to prove the use of the EUTM which will be listed in detail below in the section entitled ‘Grounds for the decision’. The EUTM proprietor argues that, although the evidence only shows use of the sign COMARCH ERP ALTUM or COMARCH ALTUM that this does not alter the distinctive character of the sign as COMARCH is the company name of the EUTM proprietor, and ERP is a widely recognised designation used in relation to management of business processes. It claims that the EUTM has been used in relation to some of the goods and services for which it is registered and provides a description of the evidence. In its observations the EUTM proprietor provides turnover figures for the years 2011-2015 which it claims range from around PLN 2,320,465 (EUR 500,000) to PLN 6,448,598 (EUR 1.5 million). Therefore, it claims that the evidence is sufficient to prove the factors of place, time, extent and nature of use of the EUTM.

The applicant in reply puts forward that the EUTM proprietor only seems to be using the mark for ‘Enterprise Resource Planning (ERP) Solutions’ which corresponds to the registered goods: computer software designed to estimate resource requirements and has not used the mark for any other goods and services. The applicant also argues that the use of the sign COMARCH ERP ALTUM and COMARCH ALTUM does not show use of the sign as registered.

In its rejoinder, the EUTM proprietor contests the applicant’s arguments. The EUTM proprietor insists that the evidence shows use of the sign as registered and quotes case law to back up its arguments in this respect. It also contests the applicant’s arguments in relation to the goods and services for which use has been shown and insists that it has shown use of both goods and services. The EUTM proprietor insists that the evidence submitted is sufficient to prove the use of the EUTM and submits an additional piece of evidence, consisting of an annual report.

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 29/11/2010. The revocation request was filed on 21/04/2017. 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 21/04/2012 to 20/04/2017 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 05/06/2017, within the given time limit, the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Item 1 – Information about ALTUM from the EUTM proprietor’s website. The website states that Comarch ERP Altum is a ERP solution.

• Item 2 – A printout from the EUTM proprietor’s website which states that the product Comarch ALTUM was distinguished in 2011 by the Institute of Economics of the Polish Academy of Sciences and Scientific Network MSN for its innovation.

• Item 3 – 16 exemplary invoices issued between 2011 and 2015 to clients in Poland. All of the names and addresses are blacked out so that only the city is left. Moreover, all of the prices and total sales figures are also blackened out.

• Item 4 – An advertisement for COMARCH ALTUM placed in a Polish newspaper ‘Rzeczpospolita’ which the EUTM proprietor claims is one of the most popular newspapers in Poland and which is dated 31/05/2011.

• Item 5 – 5 print screens taken from the partners websites of the conferences organized by Comarch (the EUTM proprietor) for its partners to present the agenda of the conferences organized for the years 2012-2015 in Poland.

• Item 6 – 2 undated photos which the EUTM proprietor states are from the conferences organized by Comarch (the EUTM proprietor) for its partners which it states were in Poland in 2012 and 2015.

• Item 7 – 3 print screens from websites of the Comarch’s partners, who offer and sell products branded with the designation ALTUM.

• Item 8 –Extracts from a print screen (identified as Item 8.1) taken from website: https://web.archive.org/web/20140829191959/http://www.comarch.pl/erp/comarch-altum/referencje/ and of document (identified as Item 8.2) which is available on this website which refer to products branded with trade mark Comarch ERP ALTUM.

On 12/03/2018, that is after the relevant time period, the EUTM proprietor submitted further evidence to prove the use of the EUTM which consists of the following:

• Item 9 – Annual report for Comarch dated 2016.

Preliminary remarks

Additional evidence

On 12/03/2018, that is, after the expiry of the time limit, the EUTM proprietor submitted further evidence.

Article 82 EUTMDR expressly states that Article 19 EUTMDR does not apply to requests for proof of use made before 01/10/2017. Therefore, Regulation (EC) No 2868/95 has to be applied to the present case.

Even though, according to Rule 40(5) Regulation (EC) No 2868/95, the EUTM proprietor has to submit proof of use within a time limit set by the Cancellation Division, this cannot be interpreted as preventing additional evidence from being taken into account where new factors emerge (12/12/2007, T‑86/05, Corpo livre, EU:T:2007:379, § 50). The Office has to exercise the discretion conferred on it by Article 95(2) EUTMR (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the EUTM proprietor or IR holder has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

In this regard, the Cancellation Division considers that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The fact that the applicant disputed the initial evidence submitted by the EUTM proprietor, in particular in relation to the time of use of the sign, justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

After careful consideration of this additional evidence, the Cancellation Division considers that it mainly clarifies, corroborates and compensates the evidence and information given in the previous submissions, following the criticism of the applicant, and their acceptance does not change the outcome in the present proceedings. Therefore, the Cancellation Division does not consider it necessary to reopen the present proceedings to allow another round of observations to comment on these particular documents as this evidence does not change the outcome of the proceedings. For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division therefore decides to take into account the additional evidence submitted on 12/03/2018.

Assessment of genuine use – factors

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).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

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 only evidence of sales of goods under the sign, namely, the invoices, submitted by the EUTM proprietor in order to prove genuine use of the EUTM relate exclusively to Poland. Moreover, the names and addresses of the customers have been blackened out, leaving only the city. Therefore, it cannot be determined whether these invoices were sent to different companies in the same city (for the invoices issued in the same city) or to different customers. Either way, this evidence only relates to Poland. As stated 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.

The items 1, 2 and 8 contain extracts from the EUTM proprietor’s website and do not show any actual sales to customers, moreover, no evidence has been submitted in relation to the traffic on the website or if anyone has viewed or bought anything from the website. Items 5 and 6 contain the photos and index from the conference between the EUTM proprietor and its partners, however, at best this only shows an internal use but also does not show any concrete sales to third parties. Moreover, the agenda is undated (although it does contain the year in the webpage address), but there is no further evidence submitted to show who attended these conferences, their place of origin or any other details. The advertisement in item 4 is dated before the relevant time period. Moreover, although the EUTM proprietor has claimed that the newspaper is one of the most important in Poland, it has not provided any proof in this respect or data concerning distribution figures of the paper etc. Either way, it is prior to the relevant period so it does not provide any information about the extent of use in the relevant period.

In its final submissions the EUTM proprietor submitted a copy of its 2016 Annual report. However, this report covers all of the activities of the EUTM proprietor and does not break down figures in relation to the goods and/or services sold under the contested EUTM. The evidence submitted shows that the EUTM proprietor has a number of different marks and products, so without further information it is impossible to determine what information from this annual report refers to sales under the contested EUTM and which are for different products/services and brands of the EUTM proprietor.

Finally, in relation to the invoices themselves, the EUTM proprietor has also blackened out the amount charged for each good and the overall amount billed. It is possible to see that the invoices were billed for different goods like ‘Comarch ALTUM package user unnamed’ or ‘Comarch ALTUM package contractor desktop’ etc. However, even in this regard, out of the 16 invoices submitted, 4 of the invoices are dated outside the relevant period so they cannot be taken into consideration, therefore, there are only 12 invoices submitted which relate to the relevant period and they only show 81 units of goods sold, and even so it is not entirely clear what exact type of goods they are, although it would appear that they are some specific type of business management software. Many of the invoices are for the sale of only one good each. However, without any indication of the price of the items it is impossible to know whether these sales are sufficient to show extent. In the observations the EUTM proprietor stated that it had sold between approximately EUR 500,000 to EUR 1.5 million for each year of the relevant period. However, it did not provide any independent evidence to support the alleged turnover figures, or any information as to whether the goods are very expensive or relatively cheap, and the Annual report for 2016, as mentioned above, does not break down the figures to show the exact earnings under this contested mark and the invoices do not provide actual figures. Moreover, as previously mentioned it cannot be determined whether many of the invoices billed to the same city were billed to only one client or multiple clients.

Therefore, the evidence does not provide any clear information as to actual turnover figures or quantities sold, the price of these goods, the size of the market, examples of public and outward marketing during the relevant period, or any other type of concrete evidence that would prove sufficient indications as to the extent of use of the contested EUTM. The burden of proof is not particularly high but the Cancellation Division must rely on the evidence submitted by the EUTM proprietor and cannot take decisions based on suppositions or unproved statements. Therefore, the EUTM proprietor has failed to sufficiently prove the factor of extent of use of the contested EUTM.

Overall assessment

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 not been sufficiently demonstrated for the relevant factor of extent of use. As the factors of use are cumulative, the failure to prove the extent of use means that the Cancellation Division will not undertake a detailed examination of the evidence in relation to the remaining factors of use, as such an examination will not alter the outcome of the present decision.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 21/04/2017.

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 representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Oana-Alina STURZA

Nicole CLARKE

Irina SOTIROVA

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.