CANCELLATION No 14033 C (REVOCATION)

Unilever N.V., Weena 455, 3013 AL, Rotterdam, The Netherlands (applicant), represented by Borenius Attorneys LTD, Eteläesplanadi 2, 00130 Helsinki, Finland (professional representative)

a g a i n s t

V. Mane Fils, 620, route de Grasse, 06620 Le Bar-sur-Loup, France (EUTM proprietor), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665, Asnières-sur-Seine, France (professional representative).

On 30/07/2018, 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 8 883 621 are revoked as from 15/11/2016 for all the contested goods, namely:

Class 3: Perfumery, perfumes, perfume compounds, essential oils, odorous substances and fragrances included in class 3, cosmetics, dentifrices.

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

Class 1: Chemicals used in the scent industry, the food industry, the cosmetics industry and the perfumery industry and in tobacco; chemical substances for preserving foodstuffs; aromas for tobacco products and for oral and dental preparations.

Class 30: Aromatic preparations for food, from natural or synthetic sources, flavourings, other than essential oils, aromatic preparations for food, aromatic substances for food, aromas for food, confectionery, chewing gum and beverages.

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

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

On 15/11/2016, the applicant filed a request for revocation of European Union trade mark registration No 8 883 621 ‘POWERCAPS’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the registered goods in Class 3: perfumery, perfumes, perfume compounds, essential oils, odorous substances and fragrances included in class 3, cosmetics, dentifrices.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested EUTM has become subject to revocation since it has been valid for over five years and it has not been put to genuine use for the registered goods in Class 3.

On 27/04/2017, the EUTM proprietor submitted written observations and evidence of use (three annexes, which will be listed and analysed in the following section of the decision). It provides an explanation of the items filed as proof of use, stating in the main that ‘POWERCAPS’ products are used as encapsulated flavours for oral care and confectionery and concludes that the documents filed demonstrate genuine use for the registered goods in Class 3. On 28/04/2017 (one day after the expiry of the time limit set for the submission of the proof of use), the proprietor submitted additional evidence, which will also be listed and analysed further below.

In its observations in reply of 12/07/2017, the applicant shows that the evidence is not sufficient to prove the genuine use of the contested EUTM since it does not relate to the contested goods in Class 3, but to goods which belong to Classes 1 and 30. In addition, the applicant further contends that in any case the sales volumes are merely symbolic ‘in the light of the Proprietor’s yearly sales and size of the European market’ and the EUTM has to be revoked for all the contested goods.

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 and 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 Rule 40(5) Commission Regulation (EC) No 2868/95 in conjunction with Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), 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 28/06/2010. The revocation request was filed on 15/11/2016. 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 15/11/2011 to 14/11/2016 inclusive, for all the contested goods (see listing in the ‘Reasons’ section above).

On 27/04/2017 and on 28/04/2017 the EUTM proprietor submitted evidence as proof of use.

The Cancellation Division notes that the evidence was provided in a structured manner and will refer to the documents submitted by using the original inventory numbers used in the EUTM proprietor’s observations and on the documents themselves. Furthermore, it is noted that 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 in the public domain (for example on the website of the EUTM proprietor).

The evidence to be taken into account is the following:

Annex 1: Selection of invoices issued by the EUTM proprietor’s company and addressed to one Italian based company. The documents are dated between January 2014 and November 2015, relate to the sale of, inter alia, goods identified as ‘Aroma POWERCAPS CELLO Menthol Blue’ and specify, among other things, the quantity (in kg), the unitary price and the total amounts (in EUR).

Annex 2: A table (internal document) containing the sales volumes for the years 2012 to 2016 for goods described as ‘Menthol POWERCAPS CELLO’ White or Blue, ‘Menthol POWERCAPS’, ‘POWERCAPS CELLO Menthol Blue’ and ‘Menthol Cool POWERCAPS CELLOBREAK’ and specifying the quantity and the name of the client.

Annex 3: Copies of two brochures dated in 2017 and providing information on the proprietor’s company (inter alia, the annual turnover for 2015 and 2016) and its products. The evidence features the following ‘POWERCAPS’ products: ‘POWERCAPS CELLO’ (encapsulated flavours for oral care) and ‘POWERCAPS Solu’, ‘POWERCAPS Hard’, ‘POWERCAPS Milli’ and ‘POWERCAPS Crunchy’ (the foregoing as encapsulated flavours for sugar confectionery and for chewing gums).

Further selection of invoices (filed on 28/04/2017), issued by the proprietor’s company and addressed to companies located in Slovakia, Germany, Spain and Italy. The documents are dated between February 2013 and February 2016, relate to the sale of, inter alia, goods identified as ‘Aroma Menthol POWERCAPS CELLO White’ or ‘Aroma Menthol POWERCAPS CELLO Blue’, except for one invoice dated in February 2016 where the goods are described as ‘Aroma Menthol POWERCAPS CELLOBREAK BLUE’.

Preliminary remark on the additional evidence filed on 28/04/2017

Even though, according to Rule 40(5) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), 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 some relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional. Therefore, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division decides to take into account the additional evidence submitted on 28/04/2017.

Assessment of genuine use – factors

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).

At this point, the Cancellation Division considers it appropriate to focus the assessment of the evidence on the criteria of nature of use (use in relation to the registered goods) and extent of use; in its opinion, the evidence submitted by the EUTM proprietor is insufficient to prove that these requirements have been met in the present case.

Concerning the nature of use, in the context of Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), the expression ‘nature of use’ includes, inter alia, evidence of the use of the sign for the goods and/or services for which it is registered.

As regards 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).

Genuine use requires actual presence of the goods or services on the market to the customers so that the mark can exercise its essential function, which is to identify the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent purchase (judgment of 12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 37).

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).

The contested EUTM is registered in Class 3 for perfumery, perfumes, perfume compounds, essential oils, odorous substances and fragrances included in class 3, cosmetics, dentifrices.

The invoices show that during the relevant period the proprietor solely marketed in several EU Member States under the EUTM, goods described as ‘Aroma Menthol POWERCAPS CELLO White’ or ‘Aroma Menthol POWERCAPS CELLO Blue’.

The only information on file in respect of the nature of the goods at issue can be found in the brochures in Annex 3, which show that ‘POWERCAPS CELLO’ refers to encapsulated flavours for oral care. The goods are described as spherical and free flowing liquid flavour particles with a true shell made of gelatin or hydrocolloids.

Whereas, in general, classification does not serve more than administrative purposes, it is relevant, in order to assess the nature of the use, to establish whether the goods for which a mark has been used fall under the general indications for which that mark is registered or under another general indication of that same class, but which is not covered by the specification or if they belong in fact to a different class (for which the mark is not registered or which is not subject to the revocation proceedings).

In the case at hand as it can be deduced from a corroborated interpretation of the invoices (which show that the goods are sold in kg, hence destined for the industry - manufacturers of finished products) and the information in the brochures (as mentioned above), the goods concerned are in fact ingredients (liquid flavours) for oral care finished goods.

Depending on their nature and/or intended applications, flavours/flavourings/aromas can belong to several classes. For example, they are properly classified in Class 1 if they are chemical products, in Class 3 if they are essential oils or in Class 30 if they are flavourings for food, other than essential oils.

Admittedly, the EUTM includes among the contested goods in Class 3, also essential oils (the only general indication which covers flavours/flavourings/aromatics in this class). Nevertheless, the fact remains that the proprietor did not make available any information and evidence which could serve to demonstrate with the required degree of certainty that the goods sold as ‘POWERCAPS CELLO’ can be qualified as essential oils (concentrated hydrophobic liquids containing volatile aroma compounds from plants) and consequently that the contested EUTM has been genuinely used for them.

It is also worth noting that (as is apparent from the brochures in Annex 3), in addition to encapsulated flavours for dental care, ‘POWERCAPS’ can also designate encapsulated flavours for sugar confectionery and for chewing gums (‘POWERCAPS Solu’, ‘POWERCAPS Hard’, ‘POWERCAPS Milli’ and ‘POWERCAPS Crunchy’).

As already mentioned, the general indication of essential oils in Class 3 includes aromatics and flavourings (for beverages and for cakes). However, there is absolutely no evidence on file that flavours for sugar confectionery and for chewing gums would be in fact essential oils. Moreover, the proprietor also failed to provide any information and evidence on the extent of use in relation to such goods, which could serve to determine that the contested EUTM has been indeed commercially active for the relevant period in relation to these goods and that use was such as to create or preserve an outlet for the products concerned.

Against this background, and bearing in mind that the Cancellation Division can only base its findings on the overall assessment of the documents before it and cannot reach a finding of genuine use by resorting to probabilities and presumptions (see (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43), it must be concluded that the mark was not genuinely used during the relevant period for the relevant goods.

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

The factors of time, place, extent and nature of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as at least nature of use and/or extent of use have not been established, it is not necessary to enter into the other requisites.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested goods. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested goods, namely:

Class 3: Perfumery, perfumes, perfume compounds, essential oils, odorous substances and fragrances included in class 3, cosmetics, dentifrices.

The EUTM remains on the register for all the uncontested goods.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 15/11/2016.

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 Rule 94(7)(d)(iv) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), 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

Ioana MOISESCU

Oana-Alina STURZA

Liliya YORDANOVA

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.