DECISION

of the Second Board of Appeal

of 18 May 2021

In case R 1666/2020-2

Starwood Hotels & Resorts Worldwide, LLC
10400 Fernwood Road, Dept. 955.23 Bethesda Maryland 20817 United States of America	EUTM Proprietor / Appellant

represented by D YOUNG & CO LLP, Rosental 4, 80331 Munich, Germany

v

P.S.C.C. 2012 Srl
Via del Maggiolino, 72 00155 Roma Italy	Cancellation Applicant / Defendant

represented by LEXICO SRL, Via Cacciatori delle Alpi 28, 06121 Perugia, Italy

APPEAL relating to Cancellation Proceedings No 33 964 C (European Union trade mark registration No 9 805 318)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), C. Negro (Rapporteur) and S. Martin (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 11 March 2011, Starwood Hotels & Resorts Worldwide, Inc., now Starwood Hotels & Resorts Worldwide, LLC (‘the EUTM proprietor’) sought to register the figurative mark

for the following list of services (after amendments):

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, meet, fish, poultry and game; meet 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. (emphasis added)

2. The application was published on 7 November 2011 and the mark was registered on 14 February 2012. The renewal of the registration was entered in the EUTM Register on 17 February 2021.

3. On 18 March 2019, P.S.C.C. 2012 Srl (‘the cancellation applicant’) filed an application for a declaration of revocation of the registered mark for all the above services.

4. The grounds of the application for a declaration of revocation were those laid down in Article 58(1)(a) EUTMR, concerning a trade mark not put to genuine use for a continuous five-year period.

5. By decision of 12 June 2020 (‘the contested decision’), the Cancellation Division partially upheld the declaration of revocation and the EUTM registration was revoked 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 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 (nontextile), 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 registration was allowed to remain registered for the remaining services of the registration, 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 (sic); bags; textile goods; bed covers; clothing, footwear, headgear.

Each party was ordered to bear its own costs. The Cancellation Division gave, in particular, the following grounds for its decision:

• 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 March 2014 to 17 March 2019 inclusive.

• The EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, thus, the evidence will only be described in the most general terms without divulging any such data. 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’.

• 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.

• Time and place of use: The evidence refers to use of the sign in hotels located 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 EUTM 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. Although, some documents refer to the EUTM proprietor’s activities before the relevant period, namely to the opening of hotels in the EU since 2009, 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: 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 EUTM proprietor. The sign ‘W’ is used in the front of the shops in the EUTM proprietor’s hotels and as an indication of origin in the EUTM proprietor’s online shop to identify retail services, as well as on invoices. Consequently, the evidence shows use of the sign as a trade mark.

• Nature of use: use of the mark as registered: Most of the documents refer to the sign ‘W’, as registered, associated with additional verbal elements, such as ‘hotel’, ‘Amsterdam’ or ‘Barcelona’. These additions are descriptive as they indicate the place where the services are rendered. Consequently, the 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: The EUTM 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). 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. 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.

• The evidence (in particular the extracts from the EUTM 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, use has been shown for the complete categories of ‘cosmetics, stationary (sic), 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.

• 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)’ the evidence does not demonstrate any use of the sign.

• The EUTM 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 EUTM 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 for example the bottles 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 (sic – trunks) 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 it cannot be ascertained if they were actually sold by the EUTM proprietor under the contested EUTM.

• 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.

6. On 11 August 2020, the EUTM proprietor filed an appeal against the contested decision, requesting that the decision be partially set aside to the extent that the revocation was upheld, thus, as regards all the revoked services. The statement of grounds of the appeal was received on 12 October 2020.

7. On 19 November 2020, the cancellation applicant submitted its observations in reply

Submissions and arguments of the parties

8. The EUTM proprietor reiterates its earlier submissions dated 29 July 2019. The arguments raised in the statement of grounds by the EUTM proprietor may be summarised as follows:

• The evidence of Ms Kate Nicholls, Chief Executive Officer of UKHospitality is independent. Ms Nicholls holds the office of Chief Executive Officer of UKHospitality, which is one of the UK’s largest hospitality associations. Not only does the witness statement itself independently verify that the ‘W’ mark has been used by the EUTM proprietor for a range of retail services, the body of evidence also corroborates Ms Nicholls’ statement.

• Regarding the assessment of the extent of use, the Cancellation Division stated that the evidence does reach the minimum level necessary to establish genuine use of the contested mark, however, only in relation to retail services for some of the goods and the following services have been maintained:

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.

• However, notwithstanding the above, the Cancellation Division decided to revoke the registration in relation to retail services related to ‘travelling bags’. This finding is incongruent on the basis that all bags can be considered to be ‘travelling bags’, or rather, ‘travelling bags’ are not so far removed from ‘bags’ per se to warrant the removal of the term from the contested registration’s specification.

• Similarly, the Cancellation Division also considered that use has been shown for ‘stationary’. However, notwithstanding the above, it concluded that retail services in relation to ‘stationary’ should be revoked, whilst the term ‘stationary’ has been retained. In the English language, the term ‘stationery’ relates to e.g. paper, writing implements, ink, and general office supplies; the term ‘stationary’ means ‘not moving’ or ‘having a fixed position’. Whilst it is clear that the specification of the contested registration contains a typographical error, it is requested that the term ‘stationery’ be included in the terms to be retained on the same basis that the Cancellation Division concluded it was appropriate to retain the term ‘stationary’.

• The Cancellation Division revoked the contested EUTM in connection with the retail of food and drinks products on the basis that no evidence was provided and that these services were provided as ‘independent services’. However, with this criteria, the Cancellation Division has imported a new requirement for genuine use: that use of the mark must relate to services rendered independently of a core service/offering. In other words, use in connection with services ancillary to a core activity (such as accommodation services) cannot constitute genuine use. The Cancellation Division’s adoption of such a principle is incorrect and is also contradictory to the decision to retain services relating to the retail of clothing products etc. via the EUTM proprietor’s hotel stores.

• Whilst it is common practice for hotels to provide e.g. complimentary bottles of water to guests on arrival, the provision of other items are items which are provided for a charge and are of a different nature (see earlier submitted evidence and confidential Exhibit 7). The confidential Exhibit 7 contains representative invoices relating to the sale of various food and beverage goods via its minibars. This evidence provides an indication of the extent of use made in connection with the retail of such goods. However, the Cancellation Division appears to have imported an additional criterion – that the services were provided ‘independently to third parties’ – which is unclear. The goods are provided to hotel guests, though it is unclear as to why such individuals would not be considered to be ‘independent’.

• The witness statement of Ms Nicholls confirm that the EUTM proprietor has used the ‘W’ mark in connection with retailing of various goods including food and drinks products. UKHospitality is a trade body which covers numerous aspects of the hospitality industry, including hotel and leisure venues, and Ms Nicholls is an independent witness. There is no indication in the contested decision that the witness statement has been afforded appropriate weight. Given the prominence of Ms Nicholls position in the sector, she undoubtedly has a good understanding of the concept of retailing and would arguably interpret the terminology with the same/similar breadth as the EUIPO.

• The contested decision ignores the fact that hotels provide consumers with many additional services which are provided for an additional fee above and beyond that charged for temporary accommodation itself. A consumer taking advantage of the various retail services provided under the mark would without doubt approach the EUTM proprietor in the event of any issues with those products. The figures provided demonstrates that a significant amount of money is generated via sales of food and drinks products provided directly to consumers on-site at the EUTM proprietor’s premises (see confidential Exhibit 10).

• The provision of minibar services falls squarely within the definition of ‘retail’ as defined in the contested decision. The goods are provided at additional cost; they are provided on display in a guest’s room enabling them to conveniently view and select their own items; the goods are provided for the benefit of that guest. Further, such products are offered in direct competition with goods retailed via other more traditional shopping outlets. For instance, a hotel guest may elect to purchase goods from a minibar / from a hotel, rather than going across the street to a convenience store. The provision of goods in a particular context (e.g. selecting a product from one’s own hotel room / requesting a product from a reception desk) should not form the sole basis for revoking various Class 35 terms from the contested registration. Whilst the goods may be retailed to a limited audience (an individual who is not staying at the hotel may not be able to conveniently view the goods in the same way as a paying guest, but they may still be able to access those goods), a guest can elect to purchase food and drinks products directly from the hotel (self-service via a minibar) or via a local convenience store. A further example, also from the hospitality sector, relates to the provision of food and drink served in restaurants within a hotel complex. It remains open to hotel guests to choose whether they ‘dine in’ within one of the hotel’s own restaurants, or whether they go elsewhere for food. However, that does not diminish the fact that restaurant would be providing independent restaurant services at a cost to the guest.

• The goods retailed under the contested mark are third party products (i.e. snacks and beverages which are branded with a third party mark). The goods are also available to guests for self-selection. There is no ‘preparation’ or ‘service’ of the food/drink by the hotel; rather the consumer chooses their items and consumes them and the hotel has merely made those goods available for selection. This type of commercial transaction bears a closer resemblance to a convenience store (a Class 35 service), than it does to ‘preparing food and drink for consumption and the provision of temporary accommodation’ in Class 43, notwithstanding the fact that the service is provided on a hotel premise.

• It is unclear from the contested decision as to why use of the ‘W’ mark must relate to ‘independent services’. The Cancellation Division has not provided a definition of what it considers to be an ‘ancillary’ service. The retail services of various food and beverage goods within a hotel are and should be considered to be in direct competition with those offered by third party undertakings. The services provided by hotels can (and do) compete directly with other service providers. Just because a service is convenient (because it is provided ‘on one’s doorstep’, and is made available during a hotel stay), does not mean that it is not being offered for commercial gain, or it does not amount to a retail transaction. The evidence provided is capable of supporting the contested trade mark registration in Class 35 notwithstanding the fact that it differs from the Nice class typically associated with the proprietor’s main activities.

• The Cancellation Division revoked the retail services relating to ‘dentifrices’. However, as can be seen from confidential Exhibits 16 and 17, such products have been provided for sale to consumers via the EUTM proprietor’s Barcelona Hotel. Mouthwash is noted on pages 1 and 6 of Exhibit 16 (enjuague bucal pequeño – small mouthwash) and on several pages of Exhibit 17. Dental floss is noted on page 10 of Exhibit 16 (hilo dental) and on several pages of Exhibit 17. ‘Dentifrice’ is defined as ‘any preparation used in the cleansing of teeth, for example, a tooth powder, toothpaste or tooth wash’ (see attached Annex 1). Bearing in mind the multiple references to sales of the relevant goods, the evidence provided proves that the ‘W’ mark has been used in connection with the retail of various goods, including ‘dentifrices’.

9. The cancellation applicant argues that all the arguments presented by the EUTM proprietor in the statement of grounds are not enough to alter the contested decision which was based on the overall evaluation of the documents submitted. The EUTM proprietor failed to show genuine use of the revoked services.

Reasons

10. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Article 58(1)(a) EUTMR

11. 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.

12. 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.

13. There is genuine use of a trade mark where the mark is used in accordance with its essential function as a trade mark, which is to guarantee the identity of the origin of goods or services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37; 30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38; 18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 27).

14. Genuine use of a trade mark in the sense of Article 58(1)(a) EUTMR in conjunction with Article 18 EUTMR must be understood to denote real use that is not merely token, serving solely to preserve the rights conferred by the mark (fictitious use). Genuine use of the mark entails use of the mark on the relevant market and not just internal use by the undertaking concerned (27/09/2007, T‑418/03, La Mer, EU:T:2007:299, § 54; 11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 36-37). Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47).

15. In the present case, it is not disputed that the request for revocation is admissible, given that the contested EUTM had been registered for more than five years at the date of filing the request. The contested EUTM was registered on 14 February 2012 and the request for revocation was filed on 18 March 2019. The relevant period for assessing use of the contested EUTM is between 18 March 2014 and 17 March 2019 inclusive.

Obvious mistake in the order of the contested decision

16. The term ‘stationery’ is mentioned twice in the specification of the registered mark. The Cancellation Division found that use was proven 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 stationary (sic – stationery)’. However, in the order, the registration is revoked/maintained for this service.

17. This is an obvious mistake in the order of the contested decision coming from the fact that ‘stationery’ was mentioned twice in the specification. As it is clear from the reasoning of the contested decision, the Cancellation Division decided that the registration remained valid 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, candles, jewellery, watches, stationary (sic – stationery); bags; textile goods; bed covers; clothing, footwear, headgear’ in Class 35 and was revoked for the remainder.

Use 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 travelling bags’

18. According to the EUTM proprietor, the Cancellation Division should have concluded that genuine use had been proven for ‘retail store services … of travelling bags’, since it found that the evidence was sufficient to prove use for ‘retail store services … of bags’. The EUTM proprietor alleges that all bags can be considered as ‘travelling bags’, or rather ‘travelling bags’ are not so far removed from ‘bags’ per se to warrant the removal of the term from the specification of the registration.

19. However, use proven for one product cannot be extrapolated to other similar products. Travelling bags are generally understood as bags in which to pack personal belongings for travelling. They can be easily differentiated from other kinds of bags such as, for example, a handbag (a small bag used to carry everyday personal items), a sports bag (a bag designed to carry sports equipment) or a tote bag (a large roomy handbag or shopping bag, Collins English Dictionary).

20. Further, the EUTM proprietor does not refer to any specific evidence proving the use of the mark for ‘travelling bags’ as such. The Board has checked the evidence submitted. Exhibit 4 shows handbags for sale in the retail store of the W Barcelona hotel. Exhibit 13 shows online sale of a beach bag (pages 22 and 26) and tote bags (pages 33 and 34). No travelling bags are shown.

21. Therefore, the EUTM proprietor’s argument is rejected as unfounded.

Use 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 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 and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers)’

22. The Cancellation Division found that sales of foodstuff and beverages in the minibar of hotel rooms are an ‘ancillary service to the hostelry service’, ‘not an independent service offered to third parties’ and concluded ‘there is no evidence of use in relation to retail services of the above-mentioned goods’. The EUTM proprietor disputes those findings.

23. In that regard, it must be borne in mind that, as regards retail services in Class 35, within the meaning of the Nice Agreement, the Court has held that the objective of retail trade is the sale of goods to consumers. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34).

24. In addition, it must be pointed out that the explanatory note relating to Class 35, within the meaning of the Nice Agreement, states that that class includes, in particular, the bringing together, for the benefit of others, of a variety of goods, excluding the transport thereof, enabling customers to conveniently view and purchase those goods. Those services may be provided by retail stores, wholesale outlets, through vending machines, mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes. It follows from that explanatory note that the concept of ‘retail services’ relates to three essential characteristics, namely, first, the purpose of those services is the sale of goods to consumers, secondly, they are addressed to the consumer with a view to enabling him or her to conveniently view and purchase those goods and, thirdly, they are provided for the benefit of others. (04/03/2020, C‑155/18 P, C‑156/18 P, C‑157/18 P & C‑158/18 P, BURLINGTON / BURLINGTON ARCADE et al., EU:C:2020:151, § 124-126).

25. Accordingly, the sales of products in the minibar of a hotel room cannot be excluded by definition from the scope of the concept of ‘retail services’ defined in Class 35. The products sold in the minibar are displayed in the minibar in order for the clients to conveniently purchase them, for the benefit of third parties producing the products in question and the minibar service is in competition with other retail shops (clients may decide to buy the products outside of the hotel), as argued by the EUTM proprietor. Furthermore, the products sold in the minibar are paid in addition to the hotel room.

26. This being said, as regards the extent of use, the EUTM proprietor had to demonstrate that ‘those services have economic value and a significant commercial volume, independent of the hotel services’ (see, by analogy, 01/03/2018, T‑438/16, CIPRIANI / HOTEL CIPRIANI et al., EU:T:2018:110, § 32).

27. It must be noted that during the relevant period the EUTM proprietor has operated only four hotels in the EU under the brand ‘W’ (one in the UK, one in France, one in the Netherlands and one in Spain).

28. Further, the Witness Statement (Exhibit 3) on which the EUTM proprietor relies is vague. It is declared that the ‘W’ mark was in use by the EUTM proprietor ‘in relation to its W hotels, including the W London Leicester Square Residence Hotel in the United Kingdom, W Paris Opera in France, W Amsterdam in the Netherlands and W Barcelona in Spain during the relevant period in relation to, among other things, hotel, restaurant, and bar and lounge services’ and that the W mark has been used by the EUTM proprietor ‘during the relevant period in relation to the retailing of various products, including but not limited to personal care products, candles, jewellery and watches, stationery, bags, wallets, artwork, homeware accessories, textiles and bedding, food and drink products, clothing, footwear and headgear’.

29. Even if the Witness Statement comes from an independent third party, as the EUTM proprietor alleges, it does not give any indication as to which food and drink products have been sold.

30. From the price list ‘W MIXBAR’ and the pictures submitted (Exhibits 5 and 8), it can be seen that the products offered for sale in the ‘Mini Bars’ or ‘Mix Bars’ in W hotel rooms are: orange juice, still and sparkling water, sodas, beers, whisky, vodka, tequila, gin, wine, confectionary, biscuits and chips. Thus, the EUTM proprietor should have indicated the sales figures for these products separately or at least for the category of goods mentioned in the specification (e.g. confectionary, mineral and aerated waters, fruit juices, beers, alcoholic beverages etc.).

31. A spreadsheet (confidential Exhibit 10) of unknown origin was filed. It shows the sales at the W Paris Opera from 2012 to 2018. In addition to the uncertainty as regards its source, only global figures, which are not impressive, are given for ‘mini bar food revenue’ / ‘mini bar beverage revenue’.

32. The EUTM proprietor also submitted invoices issued by the W Amsterdam hotel and W Barcelona hotel mentioning ‘Mini Bar’ and ‘Mix Bar’ (confidential Exhibit 7), but only a few of them contain the products details. The Board identified 13 invoices and their related ‘check detail’ corresponding to the sales of specific beverages and food products. The quantity for each different item is always ‘1’. It must be noted that other items such as hats and travel plugs were also sold in the ‘Mix Bar’ so the details of the products sold are necessary. The Board understands that the invoices submitted are samples of invoices, but the above mentioned spreadsheet is too global and does not even correspond to sales in Amsterdam and Barcelona for which the invoices were filed.

33. It is recalled that it is not sufficient for genuine use 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).

34. Therefore, genuine use for the above-mentioned services was not proven.

Use 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 dentifrices’

35. The Cancellation Division revoked the registration of the mark for ‘retail store services … of dentifrices’.

36. The EUTM proprietor argues that the Cancellation Division’s findings are wrong because the evidence filed (confidential Exhibits 16 and 17) shows that mouthwash (enjuague bucal) and dental floss (hilo dental) were sold in the EUTM proprietor’s Barcelona Hotel. However, mouthwash and dental floss are not dentifrices even if they are used to clean the mouth/teeth. In addition, the sales are minimal and only local (Barcelona).

37. The EUTM proprietor is required to prove that it created and maintained a market share for the services offered under the mark. This has not been demonstrated here. Therefore, the EUTM proprietor’s argument is rejected as unfounded.

38. As to the remaining retail store services of the other goods listed in the specification, the Board sees no reasons to depart from the Cancellation Division’s findings and the EUTM proprietor has not put forward any argument in this regard.

39. Therefore, the Board confirms that the evidence submitted is insufficient to prove genuine use of the services under appeal. The partial revocation of the EUTM registration is confirmed.

40. In light of the above, the appeal is dismissed.

Costs

41. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the EUTM proprietor, as the losing party, must bear the cancellation applicant’s costs of the appeal proceedings.

42. As to the appeal proceedings, these consist of the cancellation applicant’s costs of professional representation of EUR 550.

43. As to the cancellation proceedings, the Cancellation Division ordered each party to bear its own costs. This decision remains unaffected. The total amount for both proceedings is, therefore, EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Confirms that the European Union trade mark No 9 805 318 remains registered 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, stationery; bags; textile goods; bed covers; clothing, footwear, headgear.

and that the EUTM proprietor’s rights in respect of the European Union trade mark are revoked for the other services as from 18 March 2019;

3. Orders the EUTM proprietor to bear the costs incurred by the cancellation applicant in the appeal proceedings amounting to EUR 550.

Signed S. Stürmann

Signed C. Negro

Signed S. Martin

Registrar: Signed H.Dijkema