CANCELLATION No 12 775 C (REVOCATION)

Essentra PLC, Avebury House, 201-249 Avebury Boulevard, Milton Keynes, Buckinghamshire, MK9 1AU, United Kingdom (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, London, EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Elitfönster AB, Brogårdsgatan 1, 574 38 Vetlanda, Sweden (EUTM proprietor), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 19/12/2019, the Cancellation Division takes the following

DECISION

1. The application for revocation is partially upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 9 370 909 are revoked as from 30/03/2016 for some of the contested goods and services, namely:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; 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, except for metal windows and frames, metal doors and frames, metal blinds, and metal fittings and accessories for these goods; ores; door panels of metal; door stops of metal; ironwork for doors; garage doors made of metal.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments (non-metallic); construction joinery, stained-glass windows; mosquito window screens, not of metal; door panels not of metal; garage doors, not of metal.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) 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; indoor blinds (furniture); indoor blinds for windows (furniture); curtain rollers; pulleys of plastic for blinds; woven timber blinds (furniture); vertical curtains of textile; curtain rings; curtain rods.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; blinds; curtains of textiles or plastic; curtain holders of textile material; net curtains; mosquito nets; door curtains.

Class 37: Building construction; repair; installation services; installation of windows and doors; repair and maintenance of windows and doors.

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

Class 6: Goods of common metal not included in other classes, namely, metal windows and frames, metal doors and frames, metal blinds, and metal fittings and accessories for these goods; windows of metal; metallic doors; outdoor blinds of metal; blinds, roller blinds and roller jalousies of metal; door handles of metal; door frames of metal; door fittings of metal; door bolts; window handles of metal; knobs of metal; window catches of metal; shutters of metal; metal window frames; window casement bolts; sash fasteners of metal for windows; fittings of metal for windows; bolts of metal for sash windows; ventilation windows of metal; entrances made of metal.

Class 19: Windows, not of metal, and window joinery, window glass, except glass for vehicle windows; window glass, for building; shutters, not of metal; window frames, not of metal; casement windows, not of metal; doors (not of metal); door frames, not of metal; door casing, not of metal; sun blinds, not of metal, not of textile, for use outdoors.

Class 20: Door handles, not of metal; window fittings, not of metal; door fittings, not of metal.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 370 909:

(figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; 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; windows of metal; metallic doors; outdoor blinds of metal; blinds, roller blinds and roller jalousies of metal; door handles of metal; door frames of metal; door fittings of metal; door bolts; door panels of metal; door stops of metal; window handles of metal; knobs of metal; window catches of metal; shutters of metal; metal window frames; window casement bolts; sash fasteners of metal for windows; fittings of metal for windows; bolts of metal for sash windows; ventilation windows of metal; ironwork for doors; garage doors and entrances made of metal.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments (non-metallic); construction joinery, windows, not of metal, and window joinery, window glass, except glass for vehicle windows; window glass, for building; shutters, not of metal; window frames, not of metal; stained-glass windows; mosquito window screens, not of metal; casement windows, not of metal; doors (not of metal); door frames, not of metal; door casing, not of metal; door panels, not of metal; sun blinds, not of metal, not of textile, for use outdoors; garage doors, not of metal.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) 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; indoor blinds (furniture); indoor blinds for windows (furniture); curtain rollers; pulleys of plastic for blinds; woven timber blinds (furniture); vertical curtains of textile; door handles, not of metal; window fittings, not of metal; door fittings, not of metal; window fittings, not of metal; curtain rings; curtain rods.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; blinds; curtains of textiles or plastic; curtain holders of textile material; net curtains; mosquito nets; door curtains.

Class 37: Building construction; repair; installation services; installation of windows and doors; repair and maintenance of windows and doors.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

In its initial submissions, the applicant limits itself to raising Article 58(1)(a) EUTMR.

In response to the evidence of use filed by the EUTM proprietor, the applicant makes more detailed submissions.

The applicant begins by stating that the EUTM consists of a single letter E on a circular background and the sign is therefore of limited distinctiveness. The colours of the registration are described as blue and white. These colours contribute to the overall distinctiveness of the mark and, consequently, any deviation from this colour combination alters the distinctive character of the mark.

The applicant remarks on the fact that on 12/09/2016 and 05/10/2016, it received hundreds of pages of evidence from the proprietor, but many pages were damaged and incomplete. On 09/12/2016, a further copy of the evidence was sent to the applicant, but it was also damaged and incomplete. The pages were not in the correct order or numbered. In order not to delay the proceedings further, the applicant has done its best to reassemble the evidence.

The applicant also requests a translation of the evidence as most of it is in Swedish. The request was accepted by the Office and the translated evidence will be listed below. The applicant nevertheless made the following observations of the evidence before translation:

• The evidence does not show use of the mark as registered but rather of a letter E in various colours on a black or white circular background, rather than on a blue circular background, or a colourless letter E on a white or black background, or a greyscale or faded colour E with no circular background. All of these versions alter the distinctive character of the mark.

• The evidence does not show use of the mark for all of the goods and services for which it is registered. The proprietor expressly mentions that it uses the mark for ‘windows, curtains, hinges, certain tools and screws, metals and painting colours’. So these are the only goods to consider. When considering the evidence in connection with these goods, it is deficient since the mark is not affixed to the goods, but rather appears only as a reference to the entity which is selling the goods. There are also issues regarding the extent, time and place of use of the mark.

On 21/03/2019, the applicant sent observations on the translated evidence submitted by the EUTM proprietor. The applicant begins by questioning how accurate or authentic the translations are and suggests that the translations should not be deemed admissible. Notwithstanding the applicant’s doubts about the validity of the translations, the applicant states that there is not a single piece of evidence which shows the mark in use on any of the products covered by the registration. There is no evidence of the mark being used on packaging. The applicant also reiterates all of the criticisms made in its previous round of observations.

The case for the EUTM proprietor

The EUTM proprietor begins by stating that its company, ‘Elitfönster AB’, is active in the field of ‘windows and window accessories’. Although windows are its main product, the mark is also used in connection with curtains, hinges, certain tools and screws, metals and painting colours.

Regarding use of the mark as registered, the proprietor states that the distinctiveness of its mark lies in the design of the letter ‘E’ rather than the colours used. This is relevant because the evidence shows use of the mark in various different colour combinations, including black and white, white and transparent, white and purple, and white and yellow.

The contested EUTM is used mainly in Sweden. The EUTM proprietor, trading under the name ‘Elitfönster AB’, is part of the ‘Inwido Group’, which is a subsidiary of ‘Inwido Sverige AB’. This is borne out by the affidavit filed as Appendix 10. It is for this reason that the invoices for Elitfönster products are issued and handled by Inwido Försäljning AB, which is another company in the Inwido Group. The invoices typically use letter codes in their itemisation in order to refer to Elitfönster products. In this regard, the price book from each relevant year can be used to interpret these codes.

In its second round of observations, the EUTM proprietor states that it has not been requested to file a translation of the evidence. Regarding the applicant’s criticisms that much of the evidence shows use of the mark in different colours, the proprietor replies that the various colour combinations used do not alter the distinctive character of the mark as registered. In any case, the evidence also shows use of the mark in dark blue and white. Contrary to the claims made by the applicant, the evidence does not have to show use of the mark affixed to the products. It is sufficient if a link can be established between the mark and the products, which is the case here.

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, 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 Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, 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 28/03/2011. The revocation request was filed on 30/03/2016. 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 30/03/2011 to 29/03/2016 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 12/09/2016 the EUTM proprietor submitted evidence as proof of use, much of which was in Swedish. On 10/07/2018, the Office informed the EUTM proprietor that in order give an informed ruling on the cancellation application, it required the proprietor to submit a translation into English of the essential parts of the evidence. Any documents which were not translated would not be taken into account, unless they were self-explanatory. On 14/11/2018, the EUTM proprietor submitted translations of a large part of the evidence, as indicated below. The applicant claims that the translations are not admissible because they do not come from official or certified sources. The Cancellation Division would like to point out that there is no requirement that the proprietor should have provided certified translations. The proprietor merely had to submit translations by whichever means it saw fit in order to enable the Office to give an informed ruling on the application. The Cancellation Division is satisfied that this has been done.

As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Appendix 1: Sales brochure ‘Retro fit 2012’, in Swedish, showing use of the EUTM in connection with windows. Black and white versions of the EUTM can be seen as follows at the foot of the pages:

An extract from the translation filed by the proprietor reads as follows:

‘Elf Window RetroFit is a renovation and service concept designed to help landlords and tenant-owner associations who want to switch to better and more energy efficient windows without changing the character of the houses. Elf window RetroFit instead improves it unique style and feel that every property has.’

• Appendix 2: Brochure ‘Spring campaign 2012’, in Swedish, showing the EUTM in connection with windows. Dated 30/01/2012 to 04/03/2012. Black and/or white versions of the EUTM can be seen as follows at the foot of the pages:

An extract from the translation filed by the proprietor reads as follows:

The spring is a classic time for window replacement! At Elitfönster we go at it hard by launching a nationwide spring campaign ranging from inspirational films shown on TV4 to concrete purchasing assistance in your store.

• Appendix 3: Campaign brochure ‘Autumn activities 2012’, for internal sales use and in Swedish, showing use of the EUTM in connection with windows Dated 17/09/2012 to 07/10/2012. Versions of the EUTM can be seen as follows at the foot of the pages:

An extract from the translation filed by the proprietor reads as follows:

July and August is the time of year when the most consumers are searching “windows” or similar words on Google. Thus, when autumn comes, our best sales period, many of your customers have already thoroughly prepared before visiting your store.

• Appendix 4: Commercial magazine and catalogue for windows, window glass, casement windows, doors, mosquito nets, curtains, blinds, window handles and door handles. Dated 2012. This version of the EUTM can be seen as follows at the foot of the pages:

This publication contains numerous photographs of windows, window frames and doors. The translation of the documents mentions the following goods:

Various types of glass used for windows (sun protection, sound-absorbing, self-cleaning etc.), accessories for windows (custom-made blinds, curtains, mosquito nets), wooden windows with an aluminium exterior, patio doors, glazing bars and frames, handles and fittings for windows and doors.

• Appendix 5: Sales brochure, ‘The Secure Package’, for windows, window handles, doors and door handles. Dated 16/09/2013 to 13/10/2013. This brochure contains the signs as follows at the top and foot of the pages:

• Appendix 6: Advertisement for windows, window glass and doors, dated 03/02/2014 to 09/03/2014.

• Appendix 7: Advertisement for windows and doors. Dated in 2014. An extract from the translation reads as follows:

Bet on Elit Window's Bestseller Elit Original - now we offer aluminum-clad exterior. An offer you will enjoy for many years!

• Appendix 8: Poster showing the sign in white and yellow, in connection with windows, window accessories and handles. Dated in 2015.

• Appendix 9: Poster showing the sign in white and purple in connection with window and window glass. Dated in 2015.

• Appendix 10: Affidavit from the Brand Manager at Inwido Försäljning AB, dated 12/09/2016, showing the close bonds between Elitfönster AB and the other companies in the Inwido Group, explaining the invoicing system. He explains that the invoicing of the EUTM proprietor’s products is handled by Inwido Försäljning AB. For this reason, all of the products sold under the ‘E’ trade mark contain ‘Inwido’ in the header, even though the invoices are for articles marketed under the EUTM proprietor’s trade mark.

• Appendices11-17: Price lists dating from 2011 to 2016. These documents show use of the EUTM in connection with windows, window frames, patio doors, window glass, fittings, blinds, glazing bars, plissé curtains, mosquito nets, pulldowns, curtains, painter colours, glaze, oilcloth, metal, hinges, tools and screws.

The trade mark appears on the cover of all of the price lists as follows:

The letter combinations used to identify products in the invoices are laid out in these documents as follows:

ADF = ‘Elite complete Alu’ – patio doors with aluminium frames

AFH = ‘Elite complete Alu’ – pivoting windows with aluminium frames.

AFK = ‘elite complete Alu’ – windows with aluminium frames

AFÖ = Upper edge hung casement windows with frames of wood or aluminium.

BPK = Fittings package, including handle, release knob lock and mounting kit.

ED = Single patio door.

ED2 = Pair of patio doors.

EFK = Fixed/stable window frames of wood

EFH = Pivoting windows with frames of wood

ETI = Casement window

FF7F = Fixed/stable window frames of wood or aluminium

FF8F = Fixed/stable window frame with slanting upper edge of wood or aluminium

FTU = Pivoting skylights

KISI = Child protection locks

MF = Casement windows

• Appendices 18-44: Invoices. A sample of five invoices are submitted for the years 2011 to 2015, and two for the year 2016. The invoices are mostly all made out to customers with addresses in Sweden. Although the header of the invoices reads ‘INWIDO Great Windows & Doors’, the EUTM proprietor’s name and address usually appears below. The goods covered by the invoices are mostly windows and window frames of wood and aluminium, patio doors and blinds.

• Appendices 45-49: Printouts from Elitfönster’s website and Google analytics.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period.

Most of the evidence is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The brochures, advertising, price lists and invoices show that the place of use is Sweden. This can be inferred from the language of the documents (Swedish), the currency mentioned in the invoices (SEK) and some addresses in different cities in Sweden. Therefore, the evidence relates to the relevant territory.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the form in which the contested trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the contested EUTM have the same distinctive character. First, the distinctive character of the contested EUTM must be clarified. Then, it must be considered whether or not the mark as used alters this distinctive character.

The EUTM is registered as follows:

The colours claimed by the proprietor are ‘blue and white’. The sign consists of a capital letter ‘E’ which is stylised to quite a degree, consisting of a combination of a thick white vertical line and three white triangles, placed together to form a letter ‘E’ on a dark blue background. This is not a standard capital letter.

The abundant evidence of use filed by the proprietor sometimes reproduces the mark in the exact colour combination shown above, but the mark frequently appears in black and white, as follows:

There are also some other examples of colour combinations such as:

For alterations in colour, the main question that needs to be addressed is whether the mark as used alters the distinctive character of the registered mark. Factors which can be taken into account when deciding this are, for example, whether the figurative elements coincide and determining what are the main distinctive elements. It is also useful to consider whether the colour or combination of colours has distinctive character and whether the colour is the main contributor to the overall distinctiveness of the sign.

The applicant argues that the colours used in the EUTM are significant since the distinctive character of the EUTM derives solely from this colour combination as the letter ‘E’ per se is devoid of distinctiveness.

The Cancellation Division does not share this view. The applicant seems to suggest that single letters cannot per se be registered. However, the practice of the Office when examining applications for single letters does not provide for blanket refusals of single letters without giving a factual assessment of why the letter per se is objectionable. But in the case at hand, the letter ‘E’ is stylised to such a degree that it is more than a simple depiction of a single letter. The distinctiveness of the sign clearly derives from its stylised depiction and not from the colours used, which are not particularly striking in any case. Therefore, the Cancellation Division does not agree that the combination of ‘blue and white’ is what bestows distinctiveness on the sign.

Turning to the sign as depicted in the evidence, it is clear that the letter ‘E’ in its particular stylised registered form is reproduced numerous times in the evidence in exactly the same way, that is to say consisting of a combination of a thick white vertical line and three white triangles, placed together to form a letter ‘E’. Even if not all of the examples in the evidence show a white letter on a blue background, in the vast majority of cases, the letter ‘E’ does appear in white against a black background. In still fewer cases, the same letter ‘E’ appears in a different colour against another contrasting background. But in all instances, the letter ‘E’ is stylised in exactly the same fashion as the registered EUTM.

Regarding the fact that the company name of the EUTM proprietor, ‘Elitfönster’, generally appears together with the letter ‘E’, the Cancellation Division also finds that this does not affect the distinctive character of the registered mark. It should be recalled that two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43).

Consequently, the Cancellation Division concludes that the evidence shows use of the mark in a way which does not alter its distinctive character.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The applicant complains that the EUTM rarely appears affixed to the products. In this regard, it should be recalled that since a trade mark has, inter alia, the function of operating as a link between the goods and services and the person responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (judgment of 12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38) A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use. In the case at hand, there is ample evidence of advertising, catalogues, price lists and screenshots which show that the EUTM is used in connection with goods such as windows to indicate the commercial origin of the goods.

Therefore, the Cancellation Division is satisfied that the EUTM has been used in accordance with its function, namely as a trade mark.

Extent of use

Concerning 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).

The assessment of genuine use entails 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 submitted by the EUTM proprietor in order to prove genuine use of the earlier EUTM relates almost exclusively to Sweden, albeit to many different places within Sweden. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

The Cancellation Division finds that the invoices filed demonstrate a significant volume and duration of use of the mark which offsets the fact that the mark appears to have only been used in Sweden. A sample of five invoices is submitted for the years 2011 to 2015, and two for the year 2016. The invoicing system used by the EUTM proprietor, involving the issuing of invoices via another company in the same group, has been explained above. While it is true that the EUTM itself does not usually appear in the itemisation of the invoices, as explained above in the summary of evidence, the EUTM proprietor uses a system of letter combinations to identify its products which can be linked to the detailed price books it has enclosed for each year. The front cover of the price books bears the EUTM and it is clear that all of the products listed under letter codes in the price book are products marketed under the EUTM. An example of a letter code which appears frequently in the invoices is the following:

AFK – windows with aluminium frames

Due to the confidentiality request made the proprietor, the exact amounts of sales demonstrated in the invoices cannot be mentioned, but they are consistently for very high amounts of Swedish Krona. Furthermore, the sales are made regularly throughout the relevant period. It should also be borne in mind that the proprietor is not obliged to prove all of the sales made throughout the relevant period and the invoices supplied are clearly a sample spread across the years.

Therefore, the Cancellation Division is satisfied that the EUTM proprietor has proved the extent of use of its mark.

Use in relation to the registered goods and services

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

The contested EUTM is registered for:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; 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; windows of metal; metallic doors; outdoor blinds of metal; blinds, roller blinds and roller jalousies of metal; door handles of metal; door frames of metal; door fittings of metal; door bolts; door panels of metal; door stops of metal; window handles of metal; knobs of metal; window catches of metal; shutters of metal; metal window frames; window casement bolts; sash fasteners of metal for windows; fittings of metal for windows; bolts of metal for sash windows; ventilation windows of metal; ironwork for doors; garage doors and entrances made of metal.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments (non-metallic); construction joinery, windows, not of metal, and window joinery, window glass, except glass for vehicle windows; window glass, for building; shutters, not of metal; window frames, not of metal; stained-glass windows; mosquito window screens, not of metal; casement windows, not of metal; doors (not of metal); door frames, not of metal; door casing, not of metal; door panels, not of metal; sun blinds, not of metal, not of textile, for use outdoors; garage doors, not of metal.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) 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; indoor blinds (furniture); indoor blinds for windows (furniture); curtain rollers; pulleys of plastic for blinds; woven timber blinds (furniture); vertical curtains of textile; door handles, not of metal; window fittings, not of metal; door fittings, not of metal; window fittings, not of metal; curtain rings; curtain rods.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; blinds; curtains of textiles or plastic; curtain holders of textile material; net curtains; mosquito nets; door curtains.

Class 37: Building construction; repair; installation services; installation of windows and doors; repair and maintenance of windows and doors.

However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation in respect of only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.

As a preliminary point, the evidence shows that the EUTM proprietor is a specialist company which produces a wide range of windows and window frames, both metallic and of wood, patio doors, blinds and shutters not of fabric and accessories for these goods, namely, fittings packages including handle, release knob lock and mounting kit.

On the basis of the catalogues, price books and invoices submitted, the evidence shows genuine use of the trade mark for the following specific goods from the specification as registered:

Class 6: Windows of metal; metallic doors; outdoor blinds of metal; blinds, roller blinds and roller jalousies of metal; door handles of metal; door frames of metal; door fittings of metal; door bolts; window handles of metal; knobs of metal; window catches of metal; shutters of metal; metal window frames; window casement bolts; sash fasteners of metal for windows; fittings of metal for windows; bolts of metal for sash windows; ventilation windows of metal; entrances made of metal.

Class 19: Windows, not of metal, and window joinery, window glass, except glass for vehicle windows; window glass, for building; shutters, not of metal; window frames, not of metal; casement windows, not of metal; doors (not of metal); door frames, not of metal; door casing, not of metal; sun blinds, not of metal, not of textile, for use outdoors.

Class 20: Door handles, not of metal; window fittings, not of metal; door fittings, not of metal.

As already mentioned, according to Article 58(2) EUTMR, where there are grounds for revocation for only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

The contested EUTM is registered for:

Class 6: Goods of common metal not included in other classes;

It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it. The evidence shows that the contested EUTM has been used for Windows of metal; metallic doors; outdoor blinds of metal; blinds, roller blinds and roller jalousies of metal; door handles of metal; door frames of metal; door fittings of metal; door bolts; door panels of metal; window handles of metal; knobs of metal; window catches of metal; shutters of metal; metal window frames; window casement bolts; sash fasteners of metal for windows; fittings of metal for windows; bolts of metal for sash windows; ventilation windows of metal; entrances made of metal. On the basis of the purpose of the goods used, the Cancellation Division finds that use has been proved for the subcategory:

Class 6: Goods of common metal not included in other classes, namely, metal windows and frames, metal doors and frames, metal blinds, and metal fittings and accessories for these goods.

Therefore, the Cancellation Division declares the EUTM to be revoked for the remaining goods and services for which it is registered.

Overall assessment

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).

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for:

Class 6: Goods of common metal not included in other classes, namely, metal windows and frames, metal doors and frames, metal blinds, and metal fittings and accessories for these goods; windows of metal; metallic doors; outdoor blinds of metal; blinds, roller blinds and roller jalousies of metal; door handles of metal; door frames of metal; door fittings of metal; door bolts; window handles of metal; knobs of metal; window catches of metal; shutters of metal; metal window frames; window casement bolts; sash fasteners of metal for windows; fittings of metal for windows; bolts of metal for sash windows; ventilation windows of metal; entrances made of metal.

Class 19: Windows, not of metal, and window joinery, window glass, except glass for vehicle windows; window glass, for building; shutters, not of metal; window frames, not of metal; casement windows, not of metal; doors (not of metal); door frames, not of metal; door casing, not of metal; sun blinds, not of metal, not of textile, for use outdoors.

Class 20: Door handles, not of metal; window fittings, not of metal; door fittings, not of metal.

for all of the relevant factors as described above.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods and services, for which it must, therefore, be revoked:

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; 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, except for metal windows and frames, metal doors and frames, metal blinds, and metal fittings and accessories for these goods; ores; door panels of metal; door stops of metal; ironwork for doors; garage doors made of metal.

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments (non-metallic); construction joinery, stained-glass windows; mosquito window screens, not of metal; door panels not of metal; garage doors, not of metal.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) 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; indoor blinds (furniture); indoor blinds for windows (furniture); curtain rollers; pulleys of plastic for blinds; woven timber blinds (furniture); vertical curtains of textile; curtain rings; curtain rods.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; blinds; curtains of textiles or plastic; curtain holders of textile material; net curtains; mosquito nets; door curtains.

Class 37: Building construction; repair; installation services; installation of windows and doors; repair and maintenance of windows and doors.

The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 30/03/2016.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Nicole CLARKE

Lucinda CARNEY

Rhys MORGAN

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.