CANCELLATION No 18 884 C (REVOCATION)

Polaris Sports Limited, 18-19 College Green, Dublin, Dublin 2, Ireland (applicant), represented by Morais Leitão, Galvão Teles, Soares Da Silva & Associados - Sociedade de advogados. Rl, Rua Castilho,165, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

Gourmet and Premium Brands, SL, C/Guillem de Castro, 19-1ª, 46007 Valencia, Spain (EUTM proprietor)

On 05/07/2019, 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 9 449 323 are revoked in their entirety as from 28/12/2017.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 449 323 ‘CR7’ (the EUTM). The request is directed against all the goods covered by the EUTM, namely

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronomatic instruments.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for the preparation of beverages.

Class 33: Alcoholic drinks (except beer).

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

I SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that within a continuous period of five years the EUTM ‘CR7’ has not been put to genuine use in the European Union in connection with the goods in respect of which it is registered, and there are no proper reasons for such non-use.

The EUTM proprietor contests the admissibility of the application for revocation and relies on Article 63(3) EUTMR (res judicata) since the revocation action relates to the same subject matter and cause of action, involving the same parties. The dispute was adjudicated on its merits by the Office with a final decision in cancellation case No 7191.

The EUTM proprietor claims further, that Mr. Cristiano Ronaldo dos Santos Aveiro and his lawyers and representatives sketched out a strategy of harassment and destabilization, making use of any possible means so as to prevent the marketing and trading of products under the EUTM ‘CR7’. Such action equals bad faith. If instead of attacking the proprietor of a valid trade mark Mr. Cristiano Ronaldo dos Santos Aveiro would have asked for the transfer of the EUTM, the dispute between the parties could have ended with an agreement.

In relation to the use of the EUTM, the proprietor explains that the sign was not used in relation to goods in Class 14. It has been, however used for sparkling wine (since 2011), red wine with Rioja labelling (since 2016) and energy drinks (since 2017). Despite some obstacles to the use of the EUTM caused by the applicant (filing an invalidity request against the EUTM) the EUTM has been used for goods in Classes 32 and 33. In support of its arguments the EUTM proprietor submitted evidence (listed further in the decision).

In its observations in reply the applicant submits comments in relation to each of the documents presented by the EUTM proprietor and assesses their relevance for proving the factors time, place, extend and nature of use of the contested EUTM. Overall, the applicant considers that the EUTM has not been used in a consistent and genuine manner and should, therefore, be cancelled. The applicant also rejects the EUTM proprietor’s claims regarding the applicability of Article 63(3) EUTMR and that the application for revocation was filed in bad faith. In support of its arguments the applicant submitted evidence (Exhibits 1-14).

In particular, the applicant explains that the company Up & Walk, S.L. which is displayed on the bottles of wine and the energy drinks as the manufacturer, tried to register a CR7 trade mark in Spain. Registration was refused because of the evident association with Mr. Cristiano Ronaldo. Moreover, the attempts on behalf of the applicant to contact the company Up & Walk, S.L. and other entities allegedly involved in the use of the contested EUTM were not successful. The applicant points also out that the ownership of the EUTM changed several times during the relevant period.

Finally, the applicant claims that the EUTM proprietor’s real intent is actually revealed in the EUTM proprietor’s own observations, where it says that should Mr. Cristiano Ronaldo have asked for the transfer of the EUTM the situation could have ended with an agreement. The applicant describes this behaviour of the EUTM proprietor as a squatting attempt - one of dozens of similar proposals by trade mark squatters in other jurisdictions which register ‘CR7’ trade marks without any real intention of using them on the market but instead hoping to sell them to Mr. Cristiano Ronaldo for large sums of money.

In its final observations the EUTM proprietor addresses mainly the applicant’s arguments regarding bad faith and res judicata (Article 63(3) EUTMR). The EUTM proprietor also insists that there were proper reasons for non-use. It was not possible to market the products before 25/02/2014 because there were invalidity proceedings pending against the EUTM. Based on the above the EUTM proprietor concludes that the 5-years grace period has not lapsed.

In relation to the genuine use of the contested EUTM the proprietor argues that the evidence is to be assessed in its entirety. Based on its observations the EUTM proprietor requests the Office to reject the application for revocation.

II PRELIMINARY REMARKS – RES JUDICATA (ARTICLE 63(3) EUTMR); BAD FAITH ON BEHALF OF THE APPLICANT; REASONS FOR NON-USE.

1. Res judicata (Article 63(3) EUTMR)

The EUTM proprietor claims that the application for revocation is inadmissible since Article 63(3) EUTMR applies and refers to the decision of the Cancellation Division No 7191 of 19/11/2013 between Cristiano Ronaldo dos Santos Aveiro (applicant) and Marques de Estivella, S.L. (EUTM proprietor).

Pursuant to Article 63(3) EUTMR an application for revocation or for declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits either by the Office or by an EUTM court as referred to in Article 123 EUTMR, and the decision of the Office or that court on that application has acquired the authority of a final decision.

It is obvious that the parties to the previous proceedings referred to by the EUTM proprietor and the parties of the current proceedings are different. Moreover, the proceedings identified with No 7191 are based on Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and (5) EUTMR and Article 60(2)(a) EUTMR (in their version at the time of initiating the proceedings). In other words, these are grounds for declaration of invalidity of the contested EUTM. The current proceedings are based on Article 58(1)(a) EUTMR (revocation). Therefore, the two cases do not relate to the same cause of action.

Bearing in mind the above, the provision of Article 63(3) EUTMR does not apply and the argument of the EUTM proprietor regarding the inadmissibility of the application is rejected.

2. Bad faith on behalf of the applicant

The EUTM proprietor claims that the filing of the application is part of a strategy of the applicant of harassment and destabilization with the aim of preventing the exploitation of the EUTM which implies bad faith on behalf of the applicant.

The Cancellation Division notes that examining bad faith on behalf of the applicant is not subject to the current proceedings on the ground of Article 58(1)(a) EUTMR.

Article 63(1)(a) EUTMR grants all natural and legal persons the right to file an application for revocation on the basis of Article 58 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision. In that regard, Article 63(1)(a) EUTMR regulates the issue exhaustively and does not leave any scope to take account of possible bad faith on the part of the applicant for a revocation action.

In the context of cancellation proceedings based on Article 58(1)(a) EUTMR, the Office is required to assess whether, within a continuous period of five years the contested trade mark has been put to genuine use in the Union, without the motives and earlier conduct of the revocation applicant affecting the scope of the task.

Bearing in mind the above, the argument of the EUTM proprietor that the application was filed in bad faith and should, therefore, be rejected, is set aside.

3. Reasons for non-use

The EUTM proprietor argues that there are proper reasons for non-use until 25/02/2014 when the invalidity proceedings No 7191 against the EUTM have been closed and therefore, the 5-years grace period has not lapsed at the time of filing of the revocation action (28/12/2017).

Proper reasons for non-use are only those outside the sphere and influence of the EUTM proprietor, circumstances arising independently of the will of the owner of the trade mark that constitute an obstacle to the use of the EUTM, for instance national authorisation requirements or import restrictions.

A pending cancellation action against the EUTM does not exempt the EUTM proprietor from the obligation to use its trade mark in the course of trade. It is up to the EUTM proprietor to conduct an adequate risk assessment of its chances to prevail in such proceedings and to draw the appropriate conclusions from this evaluation before registering an EUTM. This is particularly true in the current case, where it was not difficult to foresee coming opposition, cancellation and other proceedings. As established by the applicant, the moniker ‘CR7’ has became a popular reference (nickname) to the football player Cristiano Ronaldo, when he was playing for Manchester United with No 7 (2003-2009). The first ‘CR7’ trade mark applied by Mr. Cristiano Ronaldo was filed in 2008 (Exhibit 3, Exhibit 7).

Indeed, persons who, as trade mark proprietors, are threatened with proceedings or an interim injunction if they start using it, must consider the prospects of the action against them succeeding and can either capitulate (not start using the trade mark) or defend themselves against the complaint. They cannot claim that they must be protected by the fact that, until a cancellation decision becomes final, uncertainty is to be recognised as a proper reason for non-use.

Therefore, the argument of the EUTM proprietor that there are proper reasons for non-use and that because of that the 5-years grace period for the use of the EUTM has not yet lapsed, is set aside.

III 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 03/06/2011. The revocation request was filed on 28/12/2017. 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 28/12/2012 to 27/12/2017 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 05/06/2018 the EUTM proprietor submitted evidence as proof of use. The EUTM proprietor submitted an index with attachments with assigned numbers (from 1 to 75). Since the attachments themselves are not numbered the Cancellation Division will list the documents by matching their content to the number and description given by the EUTM proprietor in the index.

The evidence to be taken into account is the following:

Documents 1-4, 14 Five invoices, issued by the company ‘ALFA CENTAURO, S.L.’ showing the sign ‘CR7’ in the upper right corner of the invoice. The invoices are directed to clients in the region of Valencia (Spain), namely Paiporta, Rafelbuñol, Benisano, Catarroja, Betera. Two of the invoices are dated outside of the relevant period and two are dated within the relevant period. All the invoices are for the sale of sparkling wine identified as ‘CR7 GOLD’. The three invoices dated within the relevant period are for the sale of 114 bottles for the total amount of EUR 8 820 (VAT excluded).

Documents 5-6 Documents in Spanish that can be identified as a trade mark licence agreement (dated 01/07/2015) and a termination agreement (dated 17/09/2015) between the company ‘ALFA CENTAURO, S.L.’ (licensor) and the company ‘La despensa del gourmet Bizkaia, S.L.’ (licensee) with regard to the contested EUTM.

Document 7 A document that can be identified as a trade mark licence agreement dated 23/01/2016 between ‘ALFA CENTAURO, S.L.’ (licensor) and UP&WALK, S.L. (licensee) with regard to the contested EUTM.

Document 8 An invoice dated 23/01/2016 related to a payment of a licence fee to the amount of EUR 6 500 (VAT excluded).

Document 9 A cease and desist letter dated 06/04/2016 issued by a Portuguese law office acting on behalf of Mr. Cristiano Ronaldo to UP & WALK, S.L. explaining that the moniker ‘CR7’ is associated worldwide with the famous football player Mr. Cristiano Ronaldo and its use on wine bottles without the consent of the football player is damaging his rights and interests and may even constitute felony which is punishable under Spanish law. It is requested that UP & WALK immediately ceases and desists from promoting and selling the wine labelled ‘CR7’ and to remove and destroy the labels.

Document 10 An invoice dated 31/10/2016 issued by the company Dismark Products SL to Up & Walk S.L. for forty boxes of energy drinks for the total price of EUR 634,04.

Document 13 A document in Spanish identified by the EUTM proprietor as a public deed with license agreement with Up & Walk.

Documents 15, 17 Order confirmation E-mails dated 02/12/2016 and 28/12/2016 for the purchase of seven bottles of wine identified with ‘CR7’ for the total price of EUR 143,55.

Document 16 A printout from the webpage www.claretandhugh.info that has no relation to any of the products covered by the EUTM and does not display the EUTM.

Document 18 A printout of what looks like a Facebook page post dated 31/01/2016 showing wine bottles labelled with the sign ‘CR7’. The article has been liked 23 times, received one comment and was shared nine times.

Document 19 An invoice dated 09/02/2017 issued by Bodegas Tobía, S.L. to Up & Walk, S.L. for the sale of among others 948 bottles of CR7 wine for the total amount of EUR 4 218,60.

Document 20 A document in Spanish identified by the EUTM proprietor as ‘Impuesto Sociedades Alfa’. On its face the document looks like a standard tax form.

Document 21 An E-mail in Spanish dated 31/08/2017. According to the EUTM proprietor it concerns the termination of the licence agreement with Up & Walk.

Document 22 A fax in Spanish dated 08/11/2017 from Balder IP to Alfa Centauro S.L.

Document 23 An affidavit signed by the manager of Alfa Centauro, S.L. regarding sales of wine and sparkling wine labelled with the sign CR7 GOLD. According to the document some 900 bottles of sparkling wine have been sold from 2011 to 2016 and some 1 500 bottles of wine in the period 2016-2017.

Document 24 A document in Spanish identified by the EUTM proprietor as a Licence agreement between Up & Walk, S.L. and Branding & Logistic Services, S.L.

Document 25 A document in Spanish identified by the EUTM proprietor as a distribution contract dated 14/03/2017 between Up & Walk, S.L. and G-MED COMERCIO POR GROSSO DE MEDICAMENTOS, LDA, registered in Funchal, Madeira.

Document 26 An undated document that looks like a presentation leaflet for an energy drink bearing the sign ‘CR7’.

Documents 27-56 Invoices, issued by the company Branding & Logistics Services for the sales of CR7 energy drinks, all dated 2018.

Document 57 An invoice issued by the company Branding & Logistics services on 04/04/2017 to a company with a registered seat in Funchal, Madeira (Portugal) for the sale of 3 600 boxes of CR7 energy drinks for the price of EUR 34 300.80. The invoice states that the transport from Austria to Porto is included.

Document 58 A letter issued by the company Dismark Products SL. on 31/05/2018 (in Spanish).

Documents 59-65 Undated pictures showing energy drink cans labelled ‘CR7 HIGH ENERGY DRINK’ and sparkling wine bottle labelled CR7. On one of the pictures ‘CR7 HIGH ENERGY DRINKS’ are photographed on a shelve next to other energy drinks, allegedly in a supermarket called EROSKI. It is to be noted that the label identifying the other energy drinks is in Spanish (BEBIDA ENERGETICA), while the one identifying the ‘CR7’ energy drinks is in English (HIGH ENERGY DRINK). The size of the label identifying the ‘CR7’ products is smaller.

Documents 66, 67 List with Google search results for the period 01/01/2016 – 30/06/2016 for the term ‘cr7 vino’. The search found 7 results in total matching the search term. Two of them refer to an amazon webpage for the sale of CR7 labelled wines, three refer to the website www.cr7wine.com, one to the website http://bodegastobia and one to the Facebook page of Lar Arraiz. Another list with Google search results for the term ‘cr7 wine rioja’ showing links to the website www.cr7wine.com and to an amazon webpage for the sale of CR7 labelled wines.

Document 68 A document in Portuguese that looks like a confirmation for a bank transfer. It can be inferred that the goods/services for which the payment is made are referred to as ‘BRANDING (LO P17/1-1)’. The payment is performed by the company ‘G-MED,COM.GROSSO MEDICAMENTOS,UNIP,LDA’ to the company ‘BRANDING & LOGISTIC SERVICES’.

Document 69 A document identified by the EUTM proprietor as ‘Budget’. The document is dated 16/01/2017 and is issued by the company Branding & Logistics services to Patxi Villegas in Trapaga. The document refers to 150.000 units of CR7 energy drink, however the price is not indicated. The amount of EUR 29.727,36 refers to a container Guinea Conacry.

Document 70 An undated printout from amazon.es showing a bottle of red wine labelled ‘CR7’. It can be inferred from the printout that the product is not available for sale. The manufacturer of the product is Bodegas Vicedo.

Document 71 A document that looks like a printout from an (online) shop catalogue called ‘BOUROA’ displaying among others a bottle of red wine labelled ‘CR7’. According to the copyright notice the document can be dated 2018.

Document 72 Licence agreement dated 04/10/2017 between the EUTM proprietor and Mr. Eduardo Gonzalez Arias and Mr. Francisco Javier Lamberto Zapata.

Document 73, 74 An undated printout from the website www.cr7wine.com showing the sign CR7Cerveza next to a pint of beer. An undated printout from the same website showing CR7 labelled wine and an energy drink can.

Document 75 A letter to Gourmet and Premium brands SL from Branding and Logistic Services SL made in Trapagaran (Spain) on 31/05/2018.

Even though the way in which the documents were organised and presented by the EUTM proprietor does not necessarily facilitate a logical and smooth analysis of the evidence it can be divided in three major groups: (i) evidence relating to the use of the EUTM in relation to wine (including sparkling wine) such as documents 1-4, 14, 15, 17, 18, 19, 23, 66, 67, 70 and 71; (ii) evidence relating to the use of the EUTM in relation to energy drinks such as documents 10, 26, 27-56, 57, 59-65; and (iii) other, basically irrelevant for the purposes of the current examination evidence such as documents 9, 16 and 20.

Assessment of genuine use – factors

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 the goods specified in the section ‘REASONS’ above.

There is absolutely no or manifestly insufficient (Document 73 showing a pint of beer) evidence submitted in relation to the use of the EUTM in relation to the goods in Class 14 (a fact also admitted by the EUTM proprietor itself) as well as in relation to the following goods in Class 32 beers; mineral and aerated waters; fruit drinks and fruit juices; syrups and other preparations for the preparation of beverages.

Therefore, the contested EUTM is to be revoked at this stage of the examination in relation to the goods mentioned above.

The examination proceeds in relation to the following goods:

Class 32: Other non-alcoholic drinks.

Class 33: Alcoholic drinks (except beer).

As stated above the evidence relates to two types of goods which are covered by the above broad categories, namely: (i) energy drinks (belonging to the broad category of other non-alcoholic drinks in Class 32; and (ii) wines (including sparkling wines) belonging to the broad category of alcoholic drinks (except beer) in Class 33.

The Cancellation Division will separately asses the relevant genuine use factors in relation to these goods.

The factors time, place, extent and nature of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indications of all these factors to prove genuine use. There is no discussion between the parties regarding the nature of use of the EUTM as a trade mark. The applicant disputes the use of the EUTM in the form as registered. The Cancellation Division does not find it necessary to opine on this issue. Instead it will concentrate on the time, place and extent of use of the contested EUTM.

1. Assessment of genuine use in relation to the goods in Class 33

Time of use

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

Some of the documents submitted in relation to the use of the EUTM for wine and sparkling wine are either undated (Documents 70, 74) or dated outside of the relevant period (Documents 1, 2). The remaining documents are dated within the relevant period. The Cancellation Division finds that there are some indications for the time of use of the EUTM within the relevant period.

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 invoices indicate that the place of use is Spain. This can be inferred from the language of the invoices (Spanish) and the addresses indicated therein. Apart from the fact that there are absolutely no indications for the use of the EUTM in relation to wines outside Spain, the Cancellation Division notes that the invoices are addressed to recipients in small towns/villages in the region of Valencia such as Benisano, Catarroja, Betera and the region of Biscay such as Gaidakao (Documents 3, 4, 14 and 19). Documents 15, 17, 66 and 67, 70, 71 and 74 (Online purchase confirmations, Google search results, printouts from amazon.es, online shop catalogue Bouroa and the site www.cr7wine.com) give no indication as to the place of use. Even if the TLD extension .es stays for Spain it does not mean that the site has been visited from users/buyers from Spain and if yes, how many hits the site has get. Document No 18 indicates a restaurant in Bilbao as the venue where a presentation of ‘CR7’ wines took place.

All in all, the Cancellation Division finds that the evidence related to the place of use is insufficient to demonstrate genuine use in the entire European Union.

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).

In order to prove the extent of use in relation to the goods in Class 33 the EUTM proprietor submitted among others an affidavit (Document 23).

Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. This is also the case in the current proceedings since the affidavit is signed by the manager of the company that used to own the EUTM.

Nevertheless, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

The Cancellation Division finds it appropriate to point out that even the numbers indicated in the affidavit are extremely low (900 bottles of sparkling wine in the period 2011 - 2016 and some 1 500 bottles of wine in the period 2016-2017) bearing in mind the huge wine market in Spain, let alone in the European Union.

The sales evidenced by the various documents do not support the data provided in the affidavit. Overall, the demonstrated sales of wines (including sparkling wines) amount to approximately EUR 10 000, which is far from the amounts indicated in the affidavit and in any case extremely low bearing in mind the characteristics of the goods (mass consumption goods) on the corresponding wine market in the European Union and in particular in Spain, which is a very big, saturated and competitive market.

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.

It has already been established that the territorial scope of the use of the EUTM is also very limited and it does not compensate the low extent of use.

Overall, the extent of use of the EUTM is not sufficiently proven.

Taking into consideration the above and recalling that the requirements for proof of use are cumulative and the proprietor failed to sufficiently prove the place and extent of use, the Cancellation Division concludes that the evidence furnished by the EUTM proprietor is insufficient to prove that the contested trade mark has been genuinely used in relation to the goods in Class 33.

Therefore, the EUTM has to be revoked also as far as the goods in Class 33 are concerned.

2. Assessment of genuine use in relation to the goods in Class 32

Time of use

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

Most of the evidence relating to the goods in Class 32 is dated outside of the relevant period (Documents 27-56) or is undated (Documents 26, 59-65, 74).

Evidence referring to use made outside the relevant time frame is in general immaterial, unless it constitutes conclusive indirect proof that the mark must have also been put to genuine use during the relevant period.

The picture revealed by these documents is that the EUTM proprietor started its commercial activity in Spain from zero – sending small quantities/samples to various recipients. Nothing suggests that commercial relationships/commercial activity existed in Spain before 2018 with the same or other companies. It is also difficult to link such activity to the attempt of the EUTM proprietor to commercialise the ‘CR7’ energy drinks in Funchal (see below). Therefore, the Cancellation Division does not find the evidence submitted outside of the relevant period to be conclusive indirect proof that the EUTM must have been put to genuine use also in the relevant period.

The documents dated within the relevant period are documents 10, 57, 68 and 69.

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 evidence dated within the relevant period refers to possible use of the EUTM in relation to energy drinks in Funchal. Funchal is the capital of the Portuguese island of Madeira in the Atlantic ocean, inhabited by close to 100 000 people. As compared to the significantly bigger geographic market of the European Union, covering 500 million people and taking into account also the particulars of the product market – the dense and saturated market for energy drinks, Funchal can in no way be considered a market significant enough to justify genuine use of the EUTM, if the latter was only used there.

Even though there are indications for the sale of energy drinks bearing the EUTM also to clients in Spain this is also not sufficient for the Cancellation Division to accept that the use in the European Union was genuine as far as the factor place is concerned since the evidence for the sales in Spain in its majority is dated outside of the relevant period and/or is insignificant in terms of its extent as will be evidenced in the following section.

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 extent of use demonstrated by the EUTM proprietor is extremely limited both in terms of territory (as established above) and generated turnovers. All the invoices dated within the relevant period amount to several hundred Euros. It has to be noted also that these numbers relate to turnovers and not to profits. The profit (if any) is expected to be significantly lower. Even if the examination of the proof of use is not a question of verifying the commercial success of the trade mark owner, doubts about the economic viability of the use of the mark, as in the present case, may still be an indication of a purely symbolic use.

The low volume of sales of the EUTM and the very limited territorial use of the brand are also not offset by particularly high advertising expenditure or particularly extensive promotional activities. Creating a website and printing the EUTM on few T-Shirts and promoting the goods labelled with the EUTM at a single local supermarket in Spain are not so large to compensate for the extremely low sales volume and territorial scope.

Although the purpose of the proof of use is not to assess the commercial success of an undertaking or to examine its economic strategy, it is not possible for every economic activity that remains so low to be sufficient to demonstrate the serious use of an EU trade mark.

It should be borne in mind that an EU trade mark affords protection throughout the Union and, therefore, in the case of an EU trade mark, it may be justified to impose higher requirements on the economic level of genuine use rather than to a national trade mark. This is particularly the case where, as in the present case, the use of the customer base is very limited. While it is not excluded that, under certain conditions, the use of an EU trade mark in a Member State or in a part of it is sufficient for the presumption of genuine use, there is, in principle, a right to expect that an EU trade mark may be used in a territory greater than that of a single Member State in order to qualify as a genuine use for such use (19/12/2012, Case C-149/11, Onel vOnel, EU:C:2012:816, paragraph 50). The reason for this is that an EU trade mark grants protection in a wider area than a national trade mark. If, as in the present case, a trade mark is used to a very limited extent and still territorially very limited to that extent, in the absence of strong alternative evidence, only a symbolic use of the trademark can be assumed, for the sole purpose of safeguarding the rights conferred by it. However, according to case law, such use is not sufficient for genuine use.

Overall, and taken in its entirety the submitted evidence of use is not sufficient to dispel the doubts about the seriousness of the use of the contested EUTM for energy drinks.

Conclusion

When considering the seriousness of the use of an earlier trade mark, it must be borne in mind that it cannot be demonstrated by means of probability assumptions or presumptions, but must be based on specific and objective circumstances which demonstrate the actual and sufficient use of the trade mark on the market in question (12/12/2002, T-39/01, Hiwatch, EU:T:2002:316, paragraph 47; 23/09/2009, T-409/07, acopat, EU:T:2009:354, § 36; 16/05/2013, T-530/10, Wolfgang Amadeus Mozart Premium, EU:T:2013:250, § 31).

The picture revealed by the assessment of the evidence does not allow the Cancellation Division to conclude that the EUTM has been genuinely used with the intention of creating an outlet for the goods without resorting to probability assumptions or presumptions. To the contrary – the impression is created that the use is merely token and probably aimed at other purposes but not at genuine exploitation of the EUTM.

It follows from the above analysis that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 28/12/2017.

IV 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 representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Martin LENZ

Plamen IVANOV

Elena NICOLAS GOMEZ

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.