CANCELLATION No 19 504 C (REVOCATION)

Mouldpro ApS, Baltorpbakken 10, 2750 Ballerup, Denmark (applicant), represented by Nordia Advokatkontor, Østergade 16, 2. th., 1100 Copenhagen K, Denmark (professional representative)

a g a i n s t

Wenz Kunststoff GmbH & Co. KG, Hueckstr. 8, 58511 Lüdenscheid, Germany (EUTM proprietor), represented by Patentanwälte Dörner & Kötter Partg mbB, Körnerstr. 27, 58095 Hagen, Germany (professional representative).

On 30/03/2020, 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 10 022 317 are revoked in their entirety as from 30/01/2018.

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

REASONS

On 30/01/2018, the applicant filed a request for revocation of European Union trade mark registration No 10 022 317 ‘MOULDPRO’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 17: Hose couplings of plastic (included in class 17), hoses, rapid-release couplings for hoses, hose connection couplings.

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

SUMMARY OF THE PARTIES’ ARGUMENTS AND PROCEDURE

In the application for revocation of 30/01/2018, the applicant argues that ‘the only use made is pro forma’ and that such use ‘does not cover the relevant goods of Class 17’.

On 26/03/2018, the EUTM proprietor submitted written observations and evidence of use (14 exhibits, marked from DK1 to DK14, which will be listed and assessed further down in the following section of the decision). The proprietor provides a description of the items filed as evidence of use, states that the genuine use of the mark is proved and requests for the revocation application to be dismissed.

In their further submissions (applicant on 12/06/2018 and EUTM proprietor on 03/09/2018) each of the parties puts forward arguments as to the insufficiency of the evidence of use (the applicant) and respectively the dismissal of the application for revocation (EUTM proprietor). The Cancellation Division will refer to the relevant arguments of the parties further down, in the following section of the decision. On 12/06/2018, the applicant also filed several exhibits (marked from A to M) in support of its claims (which will be listed and analysed further down, in the following section of the decision, only if necessary and/or relevant for the outcome of the case).

In September 2018 (after the closure of the adversarial part of the proceedings), the Office notified the parties on the suspension of the proceedings because two counterclaims have been filed against the contested EUTM. The proceedings were resumed in June 2019 as the judgement in case T-796/17 (relating to parallel invalidity proceedings C 9539 against the contested mark) has become final and respectively because the Court proceedings in Düsseldorf have been stayed.

In November 2019, the Office suspended again the proceedings because a decision in the parallel proceedings C 29941 had been issued. Finally, on 28/02/2020, both parties were informed that the proceedings are resumed and that the Office will decide on the revocation on the basis of the evidence before it.

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 07/11/2011. The revocation request was filed on 30/01/2018. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 30/01/2013 to 29/01/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 26/03/2018, the EUTM proprietor submitted the following evidence as proof of use:

• Exhibit DK1: Internal document (in English) containing a list of 101 invoices, delivery notes and offers issued by the EUTM proprietor between June 2011 and January 2018 and addressed to several customers located in Germany in relation to ‘MOULDPRO’ goods, described as follows: coupling straight with valve, coupling 90⁰ with valve, coupling straight without valve (13mm), coupling 45⁰ with/without valve, coupling 90⁰, coupling straight without valve 1C and fitting for hose 10mm.

• Exhibit DK2: Two delivery notes issued by the proprietor in June 2011 and respectively in March 2014 and addressed to a German client in relation to ‘Mould Pro’ couplings straight without valve.

• Exhibits DK3 to DK6: Selection of invoices, delivery notes and offers issued by the EUTM proprietor in 2015, 2016, 2017 and 2018 (up to 26/01/2018) and addressed to customers located in Germany, in relation to, among other ‘Mould Pro’ goods (in the main several types of couplings, except for one offer of 17/12/2015 which relates also to fitting for hose).

• Exhibit DK7: Three undated pictures of couplings/fittings made of metal on which the sign ‘MOULDPRO’ is featured ( , , ).

• Exhibit DK8: One undated picture showing a cardboard box and a transparent packaging of metallic couplings/fittings respectively ( ), both labelled with the sign ‘MOULDPRO’.

• Exhibit DK9: Internal document containing a list of trade fairs in which the EUTM proprietor took part in each of the years 2013 to 2018.

• Exhibit DK10: Selection of pictures from trade fairs, showing inter alia, the sign ‘Mould Pro’. According to the information provided by the proprietor, the photographs were taken at the following trade fairs: ‘K-Messe’ (held in Düsseldorf, Germany, 19/10-26/10/2016), ‘WFB – Fachmesse für Werkzeug- und Formenbau’ (held in Siegen, Germany, 21/03-22/03/2017) and ‘Fakuma’ (held in Friedrichshafen, Germany, 17/10-21/10/2017).

• Exhibit DK11: Printouts (two pages) from the MOULDPRO-Webshop webpage located at www.mouldpro.de (with a printout date on 16/03/2018 and a copyright notice 2015-2017) as follows: and . There are references to ‘MOULDPRO’ online shop and to the sign ‘MOULDPRO’.

• Exhibits DK12 and DK13: Two affidavits given by employees of the EUTM proprietor and attesting to the participation of the proprietor in trade fairs held in Germany (in 2013, 2015, 2016 and 2017) where ‘MOULDPRO’ hose couplings were displayed.

• Exhibit DK14: Affidavit given by the Managing Director of the EUTM proprietor and attesting to the use of the contested mark for hose couplings, hoses and hose connection couplings and the participation of the company in the trade fairs listed in the document filed under Exhibit DK9. The evidence further provides information on the turnover achieved from ‘MOULDPRO’ goods in 2016, 2017 and January 2018.

Preliminary remark

In its observations of 12/06/2018, the applicant contends, inter alia, that it has performed two test buys with the proprietor to see if one can actually buy ‘MOULDPRO’ marked goods from the latter. In both cases, the goods received were bearing the sign ‘TALKOB’ which would mean, in the applicant’s view that ‘the proprietor pretends to sell ‘MOULDPRO’-marked goods, but is really delivering either blank couplings or couplings marked ‘TALKOB’’.

The applicant also puts forward that the parties share the same two suppliers, who have nonetheless confirmed that they are not delivering ‘MOULDPRO’ branded goods to the proprietor. The pictures of ‘MOULDPRO’ goods submitted by the proprietor in Exhibits DK7 and 8 actually originate from one shipment of 850 couplings erroneously sent to the proprietor in 2015 by one of these companies.

As mentioned under the ‘Summary of the Parties’ Arguments’, the applicant also made available some evidence in support of the above claims.

In the present case the question whether the couplings ‘actually’ delivered by the EUTM proprietor are either blank or marked with the sign ‘TALKOB’ can however remain open since this fact will be without prejudice to the cancellation applicant, as it will be explained in the following section of the decision.

Assessment of genuine use – factors

General considerations

As already mentioned above, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods and/or services.

These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the EUTM proprietor is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (judgment of 17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).

At this point, the Cancellation Division considers it appropriate to focus the assessment of the evidence on the criteria of nature of use (use in relation to the registered goods) and extent of use; in its opinion, the evidence submitted by the EUTM proprietor is clearly insufficient to prove that these requirements have been met in the present case.

Nature of use requires, inter alia, in the context of Article 58(1)(a) EUTMR and Article 10(3) EUTMDR, that the EUTM proprietor proves genuine use for the contested goods for which the EUTM is registered.

As regards the 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). Furthermore, the Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39). The assessment of genuine use entails therefore a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use. The evidence 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 and services and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

Assessment of the evidence

The contested EUTM is registered in Class 17 for: hose couplings of plastic (included in class 17), hoses, rapid-release couplings for hoses, hose connection couplings.

It is noted from the outset that there is no evidence in terms of extent and/or nature as regards the registered hoses and therefore the mark must be revoked for these goods.

The same conclusion must be reached as regards the remaining registered goods.

It is admittedly true that the documents made available by the EUTM proprietor show some use in relation to couplings/fittings for hoses. However, as it can clearly be seen from a corroborated interpretation of the evidence (in particular the documents in Exhibits DK2 to 6 which refer to ‘MOULDPRO’ couplings and fittings for hose with the information in Exhibits DK7, 8 and 11) the goods concerned are made of metal and therefore do not belong to the registered Class 17.

Whereas, in general, classification does not serve more than administrative purposes, it is relevant (contrary to the proprietor’s claims), in order to assess the nature of the use, to establish whether the goods for which a mark has been used fall under the general indications for which that mark is registered or under another general indication of that same class, but which is not covered by the specification or if they belong in fact to a different class (for which the mark is not registered or which is not subject to the revocation proceedings).

As the applicant correctly pointed out, Class 17 encompasses, inter alia, finished goods that are made of materials other than metal. Couplings/fittings for hoses depending on the material of which they are made, are consequently properly classified in Class 17 (if they are not made of metal) or in a different class (for example Class 6, if they are metallic).

Against this background, and bearing in mind that the Cancellation Division can only base its findings on the overall assessment of the documents before it and cannot reach a finding of genuine use by resorting to probabilities and presumptions (see 15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43), it must be concluded that the mark was not genuinely used during the relevant period for the relevant hose couplings of plastic (included in class 17), rapid-release couplings for hoses and hose connection couplings, but for goods which belong to a different class, for which the mark is not registered.

The proprietor’s claims that ‘during the application proceedings of the contested trade mark, the trade mark applicant was requested by EUIPO to classify the goods rapid-release couplings for hoses and hose connection couplings into Class 17’ cannot lead to a different conclusion. It is not disputed that in June 2011, the Office issued a classification deficiency by means of which the EUTM proprietor (applicant at that time) was asked to move the above mentioned goods from Class 7 (where they have been wrongly indicated by the applicant at the moment it filed the trade mark application) to Class 17. However, what must be borne in mind is that it is not the duty of the Office to determine the scope of protection that a trade mark applicant soughs to obtain when applying for a trade mark. In other words, it is for a trade mark applicant to choose the relevant class for its goods depending on their nature, since the Office cannot be in a position to determine and cannot obviously be aware of the exact nature of the goods for which a trade mark is used or intended to be used.

The factors of time, place, extent and nature of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as at least nature of use and/or extent of use have not been established, it is not necessary to enter into the other requisites.

Conclusion

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

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 30/01/2018.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Ioana MOISESCU

Oana-Alina STURZA

Frédérique SULPICE

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.