CANCELLATION No 33 964 C (REVOCATION)

P.S.C.C. 2012 Srl, Via del Maggiolino, 72, 00155 Roma, Italy (applicant), represented by Lexico SRL, Via Cacciatori delle Alpi 28, 06121 Perugia, Italy (professional representative)

a g a i n s t

Starwood Hotels & Resorts Worldwide, LLC, 10400 Fernwood Road, Dept. 955.23, 20817 Bethesda, Maryland, United States of America (EUTM proprietor), represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany (professional representative).

On 12/06/2020, 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 9 805 318 are revoked as from 18/03/2019 for some of the contested services, namely:

Class 35: Retail store services in the field of the hotel business, namely providing retail store services within a hotel and by means of electronic media of dentifrices, pharmaceutical preparations, magnetic data carriers, recording discs, precious stones, precious metals, musical instruments, printed matter, photographs, artists materials, stationery, goods made from leather, thinks and travelling bags, umbrellas, furniture, mirrors, picture frames; goods 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, household or kitchen utensils and containers; combs and sponges; brushes (except paint 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; padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials, yarns and threads, for textile use, textiles; table covers; lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile), games and playthings, gymnastic and sporting articles; decorations for Christmas trees, meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes; eggs, milk and milk products; edible oils and fats, coffee, tea, cacao, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments) spices; ice, agriculture, horticulture and forestry products and grains; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt, beers; mineral arid aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers), tobacco; smokers’ articles: matches.

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

Class 35: Retail store services in the field of the hotel business, namely providing retail store services within a hotel and by means of electronic media of perfumery, cosmetics, soaps, hair lotions, candles, jewellery, watches, stationary; bags; textile goods; bed covers; clothing, footwear, headgear.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 805 318 (figurative mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:

Class 35: Retail store services in the field of the hotel business, namely providing retail store services within a hotel and by means of electronic media of perfumery, cosmetics, soaps, hair lotions, dentifrices, candles, pharmaceutical preparations, magnetic data carriers, recording discs, jewellery, precious stones, precious metals, watches, musical instruments, printed matter, photographs, stationery, artists materials, stationery, goods made from leather, thinks and travelling bags, umbrellas, furniture, mirrors, picture frames; goods 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, household or kitchen utensils and containers; combs and sponges; brushes (except paint 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, yarns and threads, for textile use, textiles and textile goods; bed and table covers, clothing, footwear, headgear, lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile), games and playthings, gymnastic and sporting articles; decorations for Christmas trees, meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes; eggs, milk and milk products; edible oils and fats, coffee, tea, cacao, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments) spices; ice, agriculture, horticulture and forestry products and grains; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt, beers; mineral arid aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers), tobacco; smokers’ articles: matches.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claimed that the contested EUTM had not been put into use in the European Union in relation to the registered services and requested cancellation of the EUTM at the earliest date, namely 14/02/2012 (date of registration of the contested EUTM).

The EUTM proprietor replied submitting evidence and argued that the documents showed use of the sign ‘W’ in the EU during the relevant period at least for part of the services, namely for retail store services in the field of the hotel business, namely providing retail store services within a hotel and by means of electronic media of perfumery, cosmetics, soaps, hair lotions, dentifrices, candles, pharmaceutical preparations, jewellery, precious stones, precious metals, watches, printed matter, photographs, stationery, artists materials, stationery, goods made from leather, travelling bags, household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); articles for cleaning purposes; glassware, porcelain and earthenware, sacks and bags, textiles and textile goods; bed covers, clothing, footwear, headgear, mats and matting, wall hangings (non-textile), sporting articles; meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes; eggs, milk and milk products; edible oils and fats, coffee, tea, cacao, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments) spices; fresh fruits and vegetables; beers; mineral arid aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers).

The proprietor claimed to have operated four hotels in the European Union under the ‘W brand’ during the relevant period, namely in Barcelona (Spain – opened 01/10/2009), London (United Kingdom – opened 14/02/2011), Paris (France – opened 09/10/2015) Amsterdam (the Netherlands – opened 28/02/2012). This is corroborated by an independent third party (witness statement – exhibit 3) testifying to the fact that the ‘W Mark’ has been used throughout the relevant period at the proprietor’s EU hotels in connection with the retailing of various goods ‘including but not limited to: personal care products, candles, jewellery and watches, stationery, bags, wallets, artwork, homeware accessories, textiles and bedding, food and drinks products, clothing, footwear and headgear’.

The proprietor also stated that, although its core activities related to hotelier, temporary accommodation and conferencing services, it had also marketed and sold various goods under the ‘W brand’ and sold goods to EU consumers either via physical sales (made on-site at the hotels, and in a retail shop in Barcelona), or via an online retail shop on the websites europe.whotelsthestore.com or www.whotelsthestore.com.

The applicant argued that the evidence provided did not prove any genuine use of the trade mark ‘W’ in relation to retail store services for which it is registered. It notably considered that the exhibits referring to hotels branded ‘W’ were irrelevant and pointed out that the pictures of goods bearing the ‘W’ sign did not provide any relevant details about the use of the sign in relation to retail services. It merely showed that items were available in the hotel rooms. Likewise, the existence of a minibar in the hotel rooms was not proof of retail services. Moreover, evidence referring to the ‘W hotel’ in Barcelona was irrelevant as the hotel was opened after the relevant period.

In response to the applicant’s comments on the evidence, the proprietor argued that since trade marks cannot be used ‘on’ services, typically evidence of genuine use relating to services consists of advertising, invoices, websites, such as the evidence it had filed. Moreover, most of the evidence was dated within the relevant period, namely between 18/03/2014 and 17/03/2019, including the evidence in relation to purchases and sales in the hotel in Barcelona. The invoices showed sales of food and drink products within customer rooms, and were corroborated by the pictures of the goods. Moreover, some invoices were headed ‘W HOTELS THE STORE’. Finally, it argued that the applicant had not provided any reasoning as to why the trade mark should be declared invalid on an earlier date than the date of the filing of the revocation request.

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 14/02/2012. The revocation request was filed on 18/03/2019. 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 18/03/2014 to 17/03/2019 inclusive, for the contested services listed in the section ‘Reasons’ above.

On 29/07/2019 the EUTM proprietor submitted evidence as proof of use.

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. However, this does not apply to evidence which consists of information that is already available to the public on the EUTM proprietor’s website and/or in the mass media (including the internet).

The evidence to be taken into account is the following.

• Exhibit 1: extracts from the website www.mariott.co.uk presenting Marriott’s brands, among them the ‘W hotels’.

• Exhibit 2: extracts from the Marriott website and articles showing the opening of ‘W hotels’ in Barcelona (2009), London (2011), Paris (2012) and Amsterdam (2015).

• Exhibit 3: witness statement, dated 24/07/2019, from the Chief Executive Officer of UK Hospitality – one of the UK’s largest hospitality associations covering everything from bars, coffee shops, contract catering, hotels and nightclubs to visitor attractions and other leisure venues. According to this statement, the proprietor owns and operates hotels worldwide and exploits the mark ‘W’ in the UK (London), France (Paris), the Netherlands (Amsterdam) and Spain (Barcelona) in relation to, in particular, hotel, restaurant, and bar and lounge services. The statement further indicates that the mark is also used in relation to ‘the retailing of various products, including but not limited to: personal care products, candles, jewelry and watches, stationery, bags, wallets, artwork, homeware accessories, textiles and bedding, food and drinks products, clothing, footwear and headgear’.

The witness statement referred to exhibit KN1, which consists of printouts from the ‘W hotels’ website, showing their locations.

• Exhibit 4: printouts showing ‘W hotels The store’ in the ‘W hotel’ in Barcelona. Various goods are seen offered for sale (clothing, bags, perfumes, shoes, jewelry and watches, decorative items). The sign can be seen at the entrance of the shop.

• Exhibit 5: pictures of goods bearing the sign ‘W’, namely a cap, a box of chocolates and a speaker.

• Exhibit 6: invoices in relation to the ‘W Paris hotel’:

• invoice from ‘own design’ to the ‘W Paris Opera’ Hotel, dated 29/03/2018, for 12 jackets, 12 tee-shirts, 12 diamond jackets;

• invoice ‘pro forma’ from ‘W Paris Opera’ for ‘an event’ on 06/03/2018, listing flowers and candy floss;

• ‘devis’ (cost estimate) dated 12/02/2018, corresponding to the invoice from ‘own design’;

• order for ‘operating supplies’ dated 20/02/2018.

• Exhibit 7: some of these documents do not contain information on the source of the invoice; the others are invoices from the ‘W’ hotels in Amsterdam and Barcelona. The sign ‘W’ is depicted at the top of most of them as or . They are mainly dated 2018, although some are dated 2016 and 2017. They refer, inter alia, to charges for ‘room’, ‘minibar’ or ‘mix bar’.

• Exhibits 8 and 9: a price list of items available in ‘W mixbar’ namely beverages, snacks and others (intimacy kit, bike bell, hat and travel plug). Photographs of items bearing the sign ‘W’ (caps, bottle of water, sunglasses, shopping bag, clothing items, slippers) or bearing other marks (snacks and beverages, condoms, speakers).

• Exhibit 10: table showing, inter alia, ‘Mini Bar Revenue’ from 2012 to 2018 for the hotel ‘W Paris Opera’.

• Exhibits 11 and 12: screenshots from Instagram and Facebook pages for ‘W hotels’ showing goods for sale (clothing and footwear, a wallet, sunglasses, candies, glasses, perfumed candles, perfumes, jewellery), bar and restaurant services, a ‘W’ water bottle in a hotel room, welcome gifts (beverages and cosmetic goods), and a picture of the ‘W mixbar’. The posts are dated between 2015 and 2019.

• Exhibit 13: printouts from the Wayback Machine Web Archive for the website www.whotelsthestore.com dated 2014-2018. They show goods for sale, namely pillows, sheets, blankets, mattress toppers, duvets, pillowcases, duvet covers, candles, cosmetic items (body butter, body and facial wash, shampoo, conditioner, soap), robes, home perfume, towels, clothing items (scarf and beanie; tee shirt, tunics, dresses), hats; tote bag, earrings, pens, and sunglasses.

• Exhibit 14: invoices from ‘W HOTELS THE STORE’ for items sold to clients in Germany, the UK, Italy, the Netherlands, Austria, France, through the website europe.whotelsthestore.com. They are dated 2018-2019, and refer to robes, sheets, towels, pillows, a pen set, kimono robe, room spray (home perfume), and cosmetic goods.

• Exhibit 15: list of the items sold via the ‘W Amsterdam Hotel’ between 2015 and 2019, according to the proprietor (cosmetic goods, bathrobes, digestion aid supplements, super skin supplements, travel aids supplements, candles, present box, jewelry) and tables, dated 22/08/2018, indicating revenues in relation to ‘SPA’ goods and services. Neither the sign nor the name of the hotels appears on the documents (except for one ‘W candle’).

• Exhibit 16: purchase orders for ‘W Hotel in Barcelona’ for various goods (thermometers, condoms, candies, tampons, products for haircare and dental care, deodorants, etc.). They are dated 2018, and the sign appears on the top of the documents.

• Exhibit 17: table showing sales details allegedly from ‘W Barcelona hotel’. The table refers mainly to cosmetic goods and bathrobes and is dated 2013-2018. The purchases are associated with a room number. Neither the sign nor the name of the hotels appears on the documents.

Preliminary remarks

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the services for which the EUTM is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

As far as the witness statement (exhibit 3) is concerned, 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.

However, 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 (such as invoices) 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.

Assessment of genuine use — factors

Time and place of use

The evidence must show that the European Union trade mark has been genuinely used within the relevant period, that is, from 18/03/2014 to 17/03/2019, and in the relevant territory, namely in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

Considered overall, the evidence refers to use of the sign in hotels located in several EU Member States – namely in France, the Netherlands, Spain and the UK – as well as on websites available to EU consumers. This can be inferred notably from the printouts from the proprietor’s websites, where it presents its hotels (exhibit 2) and shops (exhibits 4 and 13), as well as from the addresses of the clients indicated in the invoices (exhibit 14).

Most of the evidence is dated within the relevant period. Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, some documents refer to the proprietor’s activities before the relevant period, namely to the opening of hotels in the EU since 2009. Even though this evidence is dated outside the relevant period, it confirms that the long-term, on-going use of the contested sign started before the relevant period.

Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time and place of use.

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.

It is clear from the evidence that the sign has been used in order to identify services to end consumers on the market allowing them to make a clear link between the services and the proprietor. The sign ‘W’ is used in the front of the shops in the proprietor’s hotels and as an indication of origin in the proprietor’s online shop to identify retail services, as well as on the invoices as detailed above.

Consequently, the evidence does show use of the sign as a trade mark.

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 international registration.

Most of the documents refer to the sign ‘W’, as registered, associated with additional verbal elements, such as ‘hotel’, ‘Amsterdam’ or ‘Barcelona’ as detailed above in the list of evidence. These additions are descriptive as they indicate the place where the services are rendered.

Although the use of the contested mark varies and in certain items of evidence takes a different form from that registered, this does not affect distinctive character as the additional elements are descriptive/non-distinctive (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 63).

Consequently, the Cancellation Division considers that evidence shows use of the contested EUTM in a form which does not alter its distinctive character.

Extent of use and use in relation to the registered services

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 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 (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42).

The condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods or services and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

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, namely:

Class 35: Retail store services in the field of the hotel business, namely providing retail store services within a hotel and by means of electronic media of perfumery, cosmetics, soaps, hair lotions, dentifrices, candles, pharmaceutical preparations, magnetic data carriers, recording discs, jewellery, precious stones, precious metals, watches, musical instruments, printed matter, photographs, stationery, artists materials, stationery, goods made from leather, thinks and travelling bags, umbrellas, furniture, mirrors, picture frames; goods 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, household or kitchen utensils and containers; combs and sponges; brushes (except paint 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, yarns and threads, for textile use, textiles and textile goods; bed and table covers, clothing, footwear, headgear, lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile), games and playthings, gymnastic and sporting articles; decorations for Christmas trees, meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes; eggs, milk and milk products; edible oils and fats, coffee, tea, cacao, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments) spices; ice, agriculture, horticulture and forestry products and grains; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt, beers; mineral arid aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers), tobacco; smokers’ articles: matches.

As a preliminary remarks, retail is commonly defined as the concept of ‘retail services’, which relates to three essential characteristics. First, the purpose of those services is the sale of goods to consumers. Secondly, they target consumers with a view to enabling them to conveniently view and purchase those goods. Thirdly, they are provided for the benefit of others (C‑155/18 P - C‑158/18 P, BURLINGTON, EU:C:2020:151, § 126). Therefore, the existence of goods bearing the sign ‘W’ does not, in itself, prove use of the sign in relation to retail services.

In the present case, the proprietor provided extracts from websites and invoices showing use of the sign regularly throughout the relevant period. In particular, extracts from the online store’s website show that goods were offered for sale to EU consumers during the relevant period. This is corroborated by the invoices from ‘W HOTELS THE STORE’, which refer to the same goods (exhibits 13 and 14), as well as by the pictures of the goods in the proprietor’s hotel shop in Barcelona (exhibit 4).

As mentioned before, genuine use does not require commercial success – just real exploitation on the market. Taking into account the evidence in its entirety, although the evidence submitted by the EUTM proprietor is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the contested trade mark. The volume of sales, in relation to the period and frequency of use, is not so low that it might be concluded the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 68).

However, the evidence shows use of the sign in relation to retail services (both in its shops and via its websites) for only part of the goods.

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.

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 applied by analogy).

The evidence (in particular the extracts from the proprietor’s online shop and the invoices, corroborated by the pictures of the goods available in the physical shop) shows that the contested EUTM was used in relation to the retail of goods, namely clothing items (scarf and beanie; tee shirt, tunics, dresses, bathrobes), bags, perfumes (personal and home fragrances), shoes, jewellery, watches, pillows, sheets, blankets, mattress toppers, duvets, pillowcases, duvet covers, candles, cosmetics items (body butter, body and facial wash, shampoo, conditioner, soap), towels, hats, tote bag, pens, and sunglasses.

Some of these goods or their synonyms are expressly listed in the list of the contested EUTM, namely perfumery, soaps, hair lotions, candles, jewellery, watches, bags.

The evidence also shows use of the signs for goods which are contained in broader categories, namely body butter, body and facial wash, shampoo, conditioner, pens, sheets, blankets, pillowcases, duvets covers, towels, bathrobes, scarf and beanie; tee shirt, tunics, dresses and hats. In application of the principles referred to above, the Cancellation Division considers that use has been shown for the complete categories of cosmetics, stationary, textile goods; bed covers; clothing, footwear, headgear.

Regarding the remaining retail services, even considered overall, the documents provided are not sufficient to demonstrate genuine use of the sign. It is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 33).

As regards retail services in relation to meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes; eggs, milk and milk products; edible oils and fats, coffee, tea, cacao, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments) spices; ice, agriculture, horticulture and forestry products and grains; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt, beers; mineral arid aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers) – which consist of foodstuff and beverages – the evidence does not demonstrate any use of the sign.

The proprietor referred to minibar products and pictures of bottles and goods bearing the sign ‘W’, placed in the rooms of its hotels, and claimed that this proved use for retail services in relation to foodstuff and beverages.

Hotel services may include the provision of food and drinks (via bar and/or restaurant services, or via the provision of minibar services in the room). However, the proprietor has not shown that these services were provided independently to third parties and to what extent. On the contrary, it is clear from the documents that the bottles for example are welcome gifts placed in the rooms for the clients. Likewise, minibar services are offered to clients staying in the hotel as an ancillary service to the hostelry service. A service within the meaning of the Nice Classification refers to an independent service offered to third parties, which excludes ancillary services. Therefore, there is no evidence of use of the sign in relation to retail services of the abovementioned goods.

As regards the remaining retail services in relation to dentifrices; pharmaceutical preparations; magnetic data carriers, recording discs, precious stones, precious metals, musical instruments, printed matter, photographs, artists materials; goods made from leather; thinks and travelling bags, umbrellas, furniture, mirrors, picture frames; goods 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, household or kitchen utensils and containers; combs and sponges; brushes (except paint 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, padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials, yarns and threads, for textile use, textiles; table covers; lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile), games and playthings, gymnastic and sporting articles; decorations for Christmas trees; tobacco; smokers’ articles: matches, the evidence does not demonstrate any use of the sign since either the goods are not mentioned at all, or the Cancellation Division cannot ascertain if they were actually sold by the proprietor under the contested EUTM.

Finally, some goods appearing in the invoices or the website extracts, such as pillows, or sunglasses, are neither expressly listed nor fall under any of the categories of goods for which the trade mark is registered. Therefore, they cannot constitute proof of genuine use of the contested mark.

The Cancellation Division therefore concludes that the extent of use was sufficiently proven, for part of the contested services.

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).

It was demonstrated that the EUTM had been used in relation to some of the contested services during the relevant period in the relevant territory to an extent sufficient to indicate that the use was genuine. Therefore, the Cancellation Division concludes that the evidence, as a whole, is sufficient to demonstrate that the contested mark was genuinely used during the relevant period in the relevant territory for the following services:

Class 35: Retail store services in the field of the hotel business, namely providing retail store services within a hotel and by means of electronic media of perfumery, cosmetics, soaps, hair lotions, candles, jewellery, watches, stationary; bags; textile goods; bed covers; clothing, footwear, headgear.

Conclusion

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

Class 35: Retail store services in the field of the hotel business, namely providing retail store services within a hotel and by means of electronic media of dentifrices, pharmaceutical preparations, magnetic data carriers, recording discs, precious stones, precious metals, musical instruments, printed matter, photographs, artists materials, stationery, goods made from leather, thinks and travelling bags, umbrellas, furniture, mirrors, picture frames; goods 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, household or kitchen utensils and containers; combs and sponges; brushes (except paint 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; padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials, yarns and threads, for textile use, textiles; table covers; lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile), games and playthings, gymnastic and sporting articles; decorations for Christmas trees, meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes; eggs, milk and milk products; edible oils and fats, coffee, tea, cacao, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments) spices; ice, agriculture, horticulture and forestry products and grains; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt, beers; mineral arid aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers), tobacco; smokers’ articles: matches.

The EUTM proprietor has proven genuine use for the remaining contested services; 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 18/03/2019.

An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown sufficient legal interest nor provided any arguments to justify it, as also pointed out by the proprietor.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Boyana NAYDENOVA

Julie, Marie-Charlotte HAMEL

Michaela SIMANDLOVA

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.