CANCELLATION No 25082 C (REVOCATION)

Cabinet Flechner SCP, 22, avenue de Friedland, 75008 Paris, France (applicant)

a g a i n s t

Kookbox Surfboards, Inc., 400 Bleecker Street, Suite a3, New York, New York 10014, United States of America (EUTM proprietor), represented by Jacobacci & Partners, S.L.U., Calle Génova, 15 - 1°, 28004 Madrid, Spain (professional representative).

On 28/02/2019, 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 9 172 115 are revoked as from 13/07/2018 for all the contested goods, namely:

Class 9: Eyewear, sunglasses, spectacles, goggles for sports, parts, fittings and accessories in this class for sunglasses, spectacles and goggles for sports including frames and cases.

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

Class 9: Nautical apparatus and instruments; protective clothing for diving; wetsuits for diving; protective helmets for use in sports including surfing; life jackets, personal flotation devices, buoyancy jackets and buoyancy belts.

Class 25: Articles of clothing, including casual wear, beachwear, sportswear and surf wear; protective clothing for swimming, surfing and diving; wetsuits, wetsuit vests, wetsuit trousers and shorts; rash guards; bathing suits; rainwear and marine and wet weather gear; footwear and headgear.

Class 28: Sporting and gymnastic apparatus and equipment; boards for water sports including surfboards, boogie boards, body boards, kneeboards, wakeboards, sailboards, surf skis, water-skis, and kite boards; water-ski equipment; bags especially designed for surfboards, boogie boards, body boards, kneeboards, wakeboards, sailboards, surf skis, water-skis and kite boards; sporting accessories including fins, leg ropes and security leashes for sporting apparatus; swim fins; covers and protective bags for sporting apparatus including surfboards, body boards, kneeboards, wakeboards, sailboards, surf skis, water-skis and kite boards; wax for skis and surfboards.

4. The EUTM proprietor bears the costs, fixed at EUR 630.

REASONS

The applicant filed a request for revocation of European Union trade mark No 9 172 115 ’KOOKBOX’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 9: Eyewear, sunglasses, spectacles, goggles for sports, parts, fittings and accessories in this class for sunglasses, spectacles and goggles for sports including frames and cases.

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

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.

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 submitted on 13/07/2018 therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 19/07/2018, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit to submit evidence of use of the EUTM for the contested goods.

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

According to Article 19(1) EUTMDR, if the proprietor of the European Union trade mark does not submit 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.

Pursuant to Article 62(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.

Consequently, the EUTM proprietor’s rights must be partially revoked and deemed not to have had any effects as from 13/07/2018 for all the contested goods. The EUTM remains valid for all the uncontested goods.

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 costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a representative within the meaning of Article 120 EUTMR

and, therefore, did not incur representation costs.

The Cancellation Division

Raphaël MICHE

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

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 submitted in writing at the Office within two months of the date of notification of this decision. It must be submitted 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 submitted 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.