CANCELLATION No 11743 C (REVOCATION)

Dewan Fazlul Hoque Chowdhury, 85 Toothill Road, Loughborough, Leics, LE11 1PN, United Kingdom (applicant), represented by GROOM WILKES & WRIGHT LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shilington, Hitchin, Hertforshire SG5 3PF, United Kingdom (professional representative)

a g a i n s t

Stefano Merlo, Via Marco Polo, 11, 20124 Milano, Italy and Damiano Galimberti, Piazzale Carlo Maciachini, 11, 20159 Milano, Italy (CTM proprietors), represented by METROCONSULT GENOVA S.R.L., Via Palestro, 5/2, 16122 Genova, Italy (professional representative).

On 14/01/2016, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The CTM proprietors’ rights in respect of Community trade mark No 8 932 519 are revoked in their entirety as from 03/09/2015.

3. The CTM proprietors bear the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of Community trade mark No 8 932 519 (figurative mark) (the CTM). The request is directed against all the goods and services covered by the CTM, namely:

Class  3:	Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class  5:	Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetical substances for medical use, foodstuffs for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class  41:	Education; providing of training; entertainment; sporting and cultural activities.
Class  42:	Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class  43:	Providing of food and drink; temporary accommodation.
Class  44:	Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

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

GROUNDS FOR THE DECISION

According to Article 51(1)(a) CTMR, the rights of the proprietor of the Community 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 Community 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 CTM 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 CTM proprietor who must prove genuine use within the European Union or submit proper reasons for non‑use.

In the present case the CTM was registered on 24/08/2010. The revocation request was filed on 03/09/2015. Therefore, the CTM had been registered for more than five years at the date of the filing of the request.

On 10/09/2015, the Cancellation Division duly notified the CTM proprietors of the application for revocation and gave them time limit of three months to submit evidence of use of the CTM for all the goods and services for which it is registered.

The CTM proprietors 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) CTMIR, if the proprietor of the Community trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the Community trade mark will be revoked.

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

Pursuant to Article 55(1) CTMR, the CTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the CTMR, to the extent that the proprietor’s rights have been revoked.

Consequently, the CTM proprietors’ rights must be revoked in their entirety and deemed not to have had any effects as from 03/09/2015.

COSTS

According to Article 85(1) CTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the CTM proprietors are the losing party, they 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) CTMIR, 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

Rhys MORGAN

Arkadiusz GÓRNY

Justyna GBYL

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Article 2(30) CTMFR).