CANCELLATION No 12 811 C (REVOCATION)

American Franchise Marketing Limited, 3^rd Floor, 207 Regent Street, W1B 3HH London, United Kingdom (applicant)

a g a i n s t

Richter + Frenzel GmbH + CO. KG, Leitenäcker Weg 6, Würzburg, Germany (EUTM proprietor), represented by SKW Schwarz Rechtsanwälte, Wittelsbacherplatz 1, 80333 München, Germany (professional representative).

On 13/10/2016, 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 9 232 513 are revoked in their entirety as from 12/04/2016.

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

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 232 513 ‘RFS’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; paint-stripping preparations; lacquer-removing preparations; Oils for cleaning purposes; rust removing preparations; sandpaper; grinding preparations; abrasive paper; turpentine, for degreasing; soaps.

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 6: Common metals and their alloys;building materials of metal and/or cast iron; transportable buildings of metal; materials of metal for railway tracks; sleeves of metal; metal welding rods; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; valves of metal (other than parts of machines); gutters of metal; roofing material of metal; rolled lead; pipes of lead;soldering tin and soldering wire;drainage pipes of ductile cast iron; support equipment of metal for wall-mounted sanitary installations;weather protection and ventilation grilles of metal;jalousies of metal, lamellae being parts for jalousies of metal; tanks of metal;fire dampers of metal in the form of fire-protection doors; fastenings of metal; tool chests of metal (empty).

Class 7: Valves for machine parts; blowing machines; blowing machines for the compression, exhaustion and transport of gases; dust removing installations for cleaning purposes; aerocondensers;pumps, heating pumps, circulation pumps and service water pumps;large aerators; regulators (parts of machines); machine-operated installation tools; tools (parts of machines); drilling machines;mufflers being fitted goods for motors and engines.

Class 8: Axes; bits (parts of hand tools); drills; bits (hand tools); crowbars; breast drills;jimmy bars, broad axes; hammer sharpeners; caulking irons; drills; pin punches; irons (non-electric handtools); pallet knives; hammers (hand tools); pen knives; tweezers; files; milling cutters (hand tools); taps [hand tools];thread-cutting couplings (hand tools); hand tools (hand-operated); levers; hand-operated lifting-jacks; planes; plane irons; ladles (hand tools); graving tools (hand tools); trowels; nail nippers; nail punches; riveters (hand tools);guns, hand-operated, for the extrusion of mastics; guns (hand tools); tube cutters (hand tools); tube cutting instruments; saw blades (parts of hand tools); bow saws; saws (hand tools);saw holders; shovels (hand tools); mallets [hand instruments]; masons' hammers; wrenches; screwdrivers; vices;screw clamps; spatulas [hand tools]; wire stretchers (hand tools); spades;pickaxes; pliers.

Class 11: Fittings for water and gas pipes;apparatus for lighting, heating, steam-generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; hydrants;door air curtain installations (air conditioning); fans (air-conditioning); Dehumidifying apparatus; filters for air conditioning; air-cooling apparatus and ventilation and air-conditioning equipment; air-purifying apparatus and machines; humidifiers for central heating radiators;apparatus for the production of cooling water, namely air-cooled chillers; ventilation controls; separators for ventilation equipment; heat pumps; heat regenerators; heat accumulators; heat exchangers; hot water and heating installations; water heaters; bath and shower tubs;basins and sinks;water-flushing installations and flushing tanks; toilets, portable;single-lever mixers (sanitary fittings);double-handled fittings for sanitary installations; solar collectors [heating]; solar furnaces;low-water pressure switches and heating distributors being parts for sanitary installations; radiator valves;radiator fittings, screw fittings being parts for apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes;fitted connecting and blind plugs, bleed plugs and valves for radiators; heating elements; fittings for oil and gas boilers; sauna bath installations and stoves (heating apparatus); solaria; apparatus for water treatment;electric hot water and heating installations;hot water and heating apparatus; gas water equipment;boilers being parts for heating and sanitary installations for oil, gas and other solid and liquid fuels;heating boilers, heating apparatus, radiators; individual gas heating apparatus; gas heating boilers; oil and gas blowing burners;radiators of cast iron or steel;tubular radiators; convectors;expansion tanks and valves being fitted parts for heating and sanitary installations;drains and siphons being fitted parts for heating, steam generating, refrigerating, ventilating, drying and water supply apparatus, sanitary installations and waste water installations;porcelain and ceramic sanitary articles; lavatory seats.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, included in class 14; jewellery, precious stones; horological and chronometric instruments.

Class 16: Stationery; office requisites (other than furniture); photographs; Paper, cardboard and goods made from these materials, included class 16; printed matter; stationery; paint brushes; adhesives for stationery or household purposes;adhesive tapes, other than for medical purposes, for stationery or household purposes; instructional and teaching material (except apparatus); printers' type and printing blocks;paper and/or plastic materials for packaging, included in class 16; filter materials, included in class 16.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and included in class 17; plastics in extruded form for use in manufacture; packing, stopping and insulating materials, flexible pipes, not of metal; sleeves, not of metal; soldering threads of plastic;aluminium self-adhesive tapes (insulating materials);junctions, not of metal, for pipes.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes;trunks and travelling bags, rucksacks, waist packs, bags and suitcases, included in class 18; tool bags of leather (empty); umbrellas, parasols and walking sticks; saddlery.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; non-metal gutters; roofing (being non-metallic materials for covering roofs); skirting boards, not of metal; jalousies, not of metal;lamellae being parts for jalousies, not of metal.

Class 20: Furniture, in particular bathroom furniture and mirrored cabinets, dressing tables, bases for basins and sinks, mirrors, picture frames;valves, not of metal, other than parts of machines;goods (included in class 20) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics;glass panels (furniture and sanitary furniture);tanks, included in class 20; non-metal tool boxes.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith), in particular toilet paper holders, towel holders and soap dispensers; combs and sponges;brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware; porcelain and earthenware, included in class 21.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (so far as included in class 22); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 25: Clothing, in particular work clothing; shoes; headgear.

Class 35: Advertising; business management services; business administration; office functions;Retail and wholesale services, including via the Internet, in relation to chemicals, artificial resins, plastics, manures, fire extinguishing compositions, tempering and soldering preparations, tanning substances, adhesives used in industry, paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins, metals in foil and powder form, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, paint stripping preparations, varnish-removing preparations, oils for cleaning purposes, rust removers, sandpaper, abrasive preparations, abrasive paper, turpentine, for degreasing, soaps, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels and illuminants, candles and wicks, common metals and their alloys, building materials and/or cast iron, transportable buildings, materials for railway tracks, couplings, cable and wires, ironmongery and small items of metal hardware, pipes and tubes of metal, safes, goods of common metal, ores, sliding valves or valves, gutters, roofing, rolled lead, pipes of lead, soldering tin and solder wire, drainage pipes of ductile cast iron, support equipment of metal for wall-mounted sanitary installations, weather protection and ventilation grilles, jalousies, lamellae being parts for jalousies, tanks, fire dampers of metal in the form of fire-protection doors, fasteners of metal, tool chests (empty), valves for machine parts, blowing engines, blowing machines for the compression, exhaustion and transport of gases, dust removing installations for cleaning purposes, aerocondensers, pumps, heating pumps, circulation pumps and service water pumps, controllers (parts for machines), machine-operated installation tools, tools (parts for machines), drilling machines, mufflers being fitted goods for motors and engines, axes, drill bits (parts for hand tools), drills, drill bits (hand tools), cutter bars, crank shafts (hand tools), jimmy bars, broad axes, hammer sharpeners, caulking irons, drills, pin punches, irons (hand tools, non-electric), palette knives, hammers (hand tools), penknives, tweezers, files, milling cutters (hand tools), taps (hand tools), thread-cutting couplings (hand tools), hand tools (hand-operated), levers, jacks (hand-operated), planes, plane irons, trowels (tools), graving tools (hand tools), trowels, clippers, nail punches, riveters (hand tools), guns, hand-operated, for the extrusion of mastics, guns (hand tools), pipe cutters (hand tools), tube cutting instruments, saw blades (parts for hand tools), bow saws, saws (hand tools), saw holders, shovels (hand tools), mallets (hand tools), mauls (hand tools), masons' hammers, screw keys, screwdrivers, vices, screw clamps, spatulas (hand tools), wire stretchers (hand tools), spades (hand tools), pickaxes, pliers, fittings for water and gas pipelines, apparatus for lighting, heating, steam generating, cooking, refrigerating, ventilating, drying, water supply and sanitary purposes, hydrants, door air curtain installations (air conditioning), fans (air conditioning), dehumidifying apparatus, air filters (air conditioning), air cooling apparatus and ventilating and air conditioning apparatus, air purifying apparatus and machines, humidifiers for central heating radiators, apparatus for the production of cooling water, ventilation controls, separators for ventilation equipment, heat regenerators, heat accumulators, heat exchangers, hot water and heating installations, water heaters, bath tubs and shower trays, sinks and basins, toilet cisterns and flushing tanks, toilets, portable, single-lever mixers (sanitary fittings), double-handled fittings for sanitary installations, solar collectors (heating), solar furnaces, large aerators, low-water pressure switches and heating distributors being parts for sanitary installations, radiator valves, radiator fittings, screw fittings being parts for apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, fitted connecting and blind plugs, bleed plugs and valves for radiators, heating elements, fittings for oil and gas boilers, sauna installations and furnaces, solariums, water treatment apparatus, electric hot water and heating installations, hot water and heating apparatus, gas-water equipment, boilers being parts for heating and sanitary installations for oil, gas and other solid and liquid fuels, heating boilers, heating apparatus, radiators, individual gas heating apparatus, gas heating boilers, oil and gas blower burners, radiators of cast iron or steel, tubular radiators, convectors, expansion tanks and valves being fitted parts for heating and sanitary installations, drains and siphons being fitted parts for heating, steam generating, refrigerating, ventilating, drying and water supply apparatus, sanitary installations and waste water installations, porcelain and ceramic sanitary articles, toilet seats, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, stationery, office requisites, photographs, paper, cardboard (cardboard) and goods made of these materials, printed matter, paper, cardboard and goods made from these materials, printed matter, stationery, paint brushes, adhesives for stationery or household purposes, instructional and teaching material, printers' type, printing blocks, plastic and/or paper materials for packaging, filter materials, rubber, gutta-percha, gum, asbestos, mica and goods made from these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, tubes, aluminium self-adhesive tapes (insulating material), adhesive tapes, other than for medical purposes, for stationery or household purposes, screw fittings for pipes, leather and imitations of leather, and goods made of these materials, trunks and travelling bags, rucksacks, waist packs, bags and suitcases, toolbags of leather, umbrellas, parasols and walking sticks, saddlery, rigid pipes, not of metal, for building, asphalt, pitch and bitumen, skirting boards (not of metal), furniture, in particular bathroom furniture and mirrored cabinets, dressing tables, bases for basins and sinks, mirrors, picture frames, valves not of metal (other than being parts of machines), goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for these materials or of plastics, glass panels (furniture and sanitary furniture), tanks, toolboxes, household or kitchen utensils and containers (not of precious metal or coated therewith), in particular toilet paper holders, towel holders and soap dispensers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials, clothing, in particular work clothing, shoes, headgear.

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 22/12/2010. The revocation request was filed on 12/04/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 26/04/2016, 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 and services 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 and services 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.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 12/04/2016.

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) EUTMIR 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. In the present case the applicant did not appoint a representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Alina SCHOLZ

María INFANTE SECO DE HERRERA

Frédérique SULPICE

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 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.

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.