CANCELLATION No 36 441 C (REVOCATION)

Biofarma, 50 rue Carnot, 92284 Suresnes cedex, France (applicant), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Dracco Brands Holdings ApS, Christian X’s Alle 144, 2800 Kgs. Lyngby, Denmark (EUTM proprietor), represented by Francesc Cotoli, Via Augusta, 13-15, Oficina. 211, 08006 Barcelona, Spain (employee representative).

On 23/10/2019., 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 9 964 701 are revoked as from 03/07/2019 for all the contested goods, namely:

Class 9:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.

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

	Class 16:	Writing utensils and materials, namely pencils and pencil sharpeners, ball pens, brushes, markers, chalk, staplers, hole punchers, rulers and other accessories for writing and drawing, and other cardboard and paper articles, namely but not limited to albums, boxes of paper and cardboard, writing pads, writing blocks, notebooks, booklets, wrapping paper, greeting cards, trading cards, labels, stickers and other cardboard and paper articles for among other office and school purposes.
	Class 25:	Clothing and footwear, namely but not limited to footwear of all kinds, jackets, coats, shirts, blouses, T-shirts, socks, shorts, scarves, underwear, sports wear, headgear of all kinds including caps.
	Class 28:	Games and toys, namely board games, card games, action type target games, and parlour games; beanbags; toy building blocks; cardboard and plastic caps, namely but limited to for toy guns, holders for caps, and cap guns; mechanical action toys; kites; electric action figures with lights and sounds; collectible items namely action figures, plastic toy figurines in various sizes, toy finger rings, yo-yo's, spin tops, plastic toys, toys incorporating magnets; plush toys and flying discs; glass ornaments and decorations for Christmas trees; costume masks; stuffed toy animals in various sizes; equipment sold as a unit for playing card games; game boards for trading card games; toy stamps with figures; toy and water pistols, guns, and cannons; dolls and baby dolls; balloons; bathtub toys; skateboards, ice skates, roller skates, and inline skates; surf boards and swim boards; balls, namely, footballs and handballs; electronic toys; jigsaw puzzles.

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

REASONS

The applicant filed a request for revocation of European Union trade mark No 9 964 701 'Opalia' (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 9:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.

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

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.

According to Article 58(2) EUTMR, where the grounds for revocation of rights only exist for some of the goods or services for which the European Union trade mark is registered, the proprietor’s rights must be revoked for those goods and services only.

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 24/03/2013.The revocation request was submitted on 03/07/2019. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 11/07/2019, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of two months to submit evidence of use of the EUTM for the contested goods.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the specified time limit.

According to Article 19(1) EUTMDR, if the proprietor of the European Union trade mark does not submit proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for the contested goods nor any indications of proper reasons for non-use.

Pursuant to Article 62(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.

Consequently, the EUTM proprietor’s rights must be partially revoked and deemed not to have had any effects as from 03/07/2019 for all the contested goods. The EUTM remains valid for all the uncontested goods.

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

The Cancellation Division

Arkadiusz GORNY

Hanne Kirsten THOMSEN

María INFANTE SECO DE HERRERA

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 submitted in writing at the Office within two months of the date of notification of this decision. It must be submitted 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 submitted 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.