CANCELLATION No 11 503 C (REVOCATION)

Trademarkers LLC, 246 West Broadway New York, New York 10013, United States of America (applicant) represented by Richard Kummer, Bischof-von-Henle-Straße 2, 93051, Regensburg, Germany (professional representative)

a g a i n s t

Amaryllis Knight, 18 Wedderburn Road, Ground Floor Flat, London, NW3 5QG, United Kingdom (EUTM proprietor).

On 04/08/2021, 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 8 888 505 are revoked in their entirety as from 14/08/2015.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark No 8 888 505 ‘Zenith’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 12: Vehicles; apparatus for locomotion by land, air or water; brake cables [parts of motorcycles]; brake calipers [parts of motorcycles]; brake pedals [parts of motorcycles]; brake rotors [parts of motorcycles]; clutch cables [parts of motorcycles]; covers for motorcycle saddles; fork bearings and races [parts of motorcycles]; fork dust boots [parts of motorcycles]; fork seals [parts of motorcycles]; chains for driving motorcycles; front dash panels [parts of motorcycles]; front spacers [parts of motorcycles]; handle bar control levers [parts of motorcycles]; handle bar dampers [parts of motorcycles]; handle bar grips [parts of motorcycles]; handle bars [parts of motorcycles]; handlebars for vehicles, in particular for bicycles or motorcycles; headlight mounts [parts of motorcycles]; hubs for vehicle wheels (motorcycles); kickstands for motorcycles; motorcycle kickstands; motorcycle saddlebags; motorcycles; motorcycle sidecars; motorcycles and structural parts therefor; motorcycles for motocross; pneumatic tyres and inner tubes for motorcycles; saddle covers for bicycles or motorcycles; saddles for motorcycles; shift levers [parts of motorcycles]; sprockets for motorcycle drives; panniers for motorcycles; stands for motorcycles; saddles for bicycles, cycles or motorcycles; structural parts for motorcycles; tyres for motorcycles; wheels for motorcycles; twist grips for motorcycles; children's safety seats for vehicles; engines for land vehicles; gas tanks for land vehicles; gears for vehicles; inner tubes [for two-wheeled motor vehicles or bicycles]; mirrors for vehicles; petrol caps for vehicles; motorcycles.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; articles made from imitation leather; bags made of leather; bands of leather; articles made from leather; bags [envelopes, pouches]of leather, for packaging; belts made of leather; boxes made of leather; briefcases [leather goods]; briefcases [leatherware]; briefcases made of leather; cases, of leather or leatherboard; casings, of leather, for springs; chin straps, of leather; chamois leather, other than for cleaning purposes; containers, namely travelling sets [leatherware]; coverings (furniture -) of leather; credit card holders made of imitation leather; credit card holders made of leather; envelopes, of leather, for packaging; figurines made from leather; furniture (leather trimmings for -); furniture coverings of leather; furniture coverings of leather or imitations of leather; handbags made of imitations leather; handbags made of leather; harness made from imitation leather; harness made from leather; hat boxes of leather; helmet cases of leather [other than specifically adapted to contain]; imitation leather; key cases [leatherware]; key cases made of leather; key cases made principally of imitation leather; imitation leather articles; key cases (leather goods); key cases made principally of leather; key holders made of leather; laces (leather -); leads made of leather; leashes (leather -); leather; leather (imitation -); leather [unworked or semi-worked]; leather and imitations of leather, and goods made of these materials and not included in other classes; leather bags for merchandise packaging [envelopes, pouches]; leather bags, suitcases and wallets; leather belts [shoulder]; leather bound covers for albums; leather boxes; leather briefcases; leather cases; leather cases for keys; leather cloth; leather cords; leather credit card cases; leather envelopes for packaging; leather fittings for furniture; leather for furniture; leather for shoes; leather goods; leather handbags; leather pouches; leather purses; leather shoulder belts; leather straps; leather thread; leather travelling suitcases; leather trimmings for furniture; leather twist; luggage labels [tags]of leather or imitation leather; luggage tags [leatherware]; moleskin (imitation of leather); moleskin [imitation leather]; pouches of leather; purses [leatherware]; saddlery of leather; pouches, of leather, for packaging; sheets of imitation leather for use in manufacture; stirrup leathers; straps (leather -); synthetic leather; studs of leather; tool bags of leather, empty; travelling bags [leatherware]; travelling sets [leatherware]; valves of leather.

Class 25: Clothing, footwear, headgear; articles of athletic clothing; articles of casual clothing; articles of childrens' clothing; articles of clothing; articles of clothing for babies; articles of clothing for boys; articles of clothing for children; articles of clothing for climbing; articles of clothing for casual wear; articles of clothing for cycling; articles of clothing for horse-riding [other than riding hats]; articles of clothing for hunting; articles of clothing for men; articles of clothing for mountaineering; articles of clothing for nightwear; articles of clothing for sportswear; articles of clothing for women; articles of clothing made from denim cotton; articles of clothing made from denim material; articles of clothing made from imitation suede; articles of clothing made from textile materials; articles of clothing made from knitted fabrics; articles of clothing made from textiles; articles of clothing made from wool; articles of clothing made from woven fabrics; articles of clothing made of cut-pieced fleece; articles of clothing made of hides; articles of clothing made of imitation leather; articles of clothing made of knitted materials; articles of clothing made of leather; articles of clothing of leather; articles of frame-knitted clothing; articles of industrial clothing [other than for protection against injury]; articles of knitted clothing; articles of ladies clothing; articles of leather clothing; articles of leather clothing [other than protection against accident or injury]; articles of knitted clothing for leisurewear; articles of outer clothing; articles of outer clothing for casual wear; articles of outer clothing for girls; articles of outer clothing for men; articles of outer clothing for sports wear; articles of outer clothing for women; articles of outer clothing made of wool; articles of outer-clothing; articles of protective clothing for use in adverse weather conditions; articles of protective clothing [other than for prevention of accident or injury]; articles of rainproof clothing; articles of ready made clothing; articles of sports clothing; articles of underclothing; articles of thermal clothing; articles of underclothing for men; articles of underclothing for women; articles of waterproof clothing; articles of weatherproof clothing; belts (being articles of clothing); belts (money -) [clothing]; belts [clothing]; belts for clothing; body warmers [clothing]; belts of leather (clothing); boys' clothing; braces for clothing [suspenders]; cashmere articles of clothing; casual clothing; chaps (clothing); clothing; clothing belts; clothing for children; clothing for equestrian use; clothing for jogging; clothing for men; clothing made from knitted materials; clothing of fur; clothing of imitations of leather; clothing of leather; clothing, footwear and headgear skateboarding; clothing, footwear, headgear; complete articles of clothing; complete articles of outerclothing; complete articles of rainproof clothing; denim clothing; cyclists' clothing; footwear and clothing; gentlemens' articles of clothing; gloves [clothing]; gloves[clothing]; handwarmers [clothing]; headbands [clothing]; headwear [clothing]for cyclists; insulated outerclothing [other than for protection against accident or injury]; interlinings for clothing; jackets (stuff -) [clothing]; jackets being sports clothing; jersey clothing; jerseys [clothing]; kerchiefs [clothing]; jump suits [clothing]; knitted articles of clothing; knitted clothing; ladies' outerclothing; leather (clothing of -); leather belts [clothing]; leisure clothing; lightweight clothing; linen articles of clothing; linings (ready-made- ) [parts of clothing]; liners (wind-resistant- ) for clothing; liners (water vapour permeable- ) for clothing; mens' articles of clothing; moisture vapour permeable clothing; motorcyclists' clothing [other than for protection against accident or injury]; motorcyclists' clothing of leather; neckwear [clothing]; one piece coverall clothing; outerclothing; outerclothing [other than for protection against accident or injury]; outerclothing for men; outerclothing for girls; outerclothing for women; protective clothing for surfing; protective clothing for swimming; protective clothing [wet suits]for use by surfers; ready-to-wear clothing; roll necks [clothing]; shorts being outer clothing; shoulder wraps [clothing]; silk articles of clothing; sleeveless articles of clothing; slips [clothing]; sports bags shaped to contain clothing used in athletics; stuff jackets [clothing]; thermal clothing; three piece suits [clothing]; three piece suits [clothing]with blouses; ties[clothing]; tops [articles of clothing]; underclothing (anti-sweat- ); underclothing for women; visors [clothing]; waistbands [clothing]; water-resistant clothing; weatherproof clothing; womens' outerclothing; woollen outerclothing; wraps [clothing]; wristbands [clothing]; woven clothing; hooded sweatshirts; nightshirts; riding sweatshirts; sweatshirts; baseball hats; fur hats; hatmaking visors; hats; rain hats; rainhats; small hats; sun hats; top hats; visors [hatmaking]; woolly hats; cashmere gloves; gloves; gloves [clothing]; gloves as clothing; gloves including those made of skin, hide or fur; motorcycle gloves; riding gloves; safety gloves [other than for protection against accident or injury]; vinyl gloves; water repellent gloves for use by motor cyclists; woollen gloves; cotton shirts; dress shirts; formal shirts; denim shirts; hooded sweatshirts; knit shirts; jumpers [shirt fronts]; knitted shirts; ladies' shirts; long sleeve exercise shirts; open-necked shirts; mens' shirts; polo shirts; printed t-shirts; shirts; shirts and short-sleeved shirts; short-sleeved or long-sleeved t-shirts; t-shirts; tee-shirts; sweatshirts; boots for motorcycling; fittings of metal for shoes and boots; horse-riding boots; hunting boots; ladies' boots; motorcyclist boots; non-slipping devices for boots; overboots; rain boots; riding boots; articles of leather clothing [other than protection against accident or injury]; belts made of leather; braces of leather; japanese style sandals of leather; leather coats; leather garments; leather jackets; leather headwear; leather shoes; leather pants; leather jumpers; leather waistcoats; leather slippers; motorcyclists' clothing of leather; soles made of leather [other than orthopaedic]; suits made of leather; trousers of leather.

The applicant invoked Article 51(1)(a) EUTMR.

GROUNDS FOR THE DECISION

According to Article 51(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.

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 02/08/2010. The revocation request was filed on 14/08/2015. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 08/12/2015, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the goods for which it is registered.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.

According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the goods for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not proven sufficient legal interest in support of its request.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 14/08/2015.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Frédérique SULPICE

Milda CERNIAUSKAITE

Ioana MOISESCU

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.