CANCELLATION No C 40 041 (REVOCATION) 

 

Auditel S.R.L., Via Larga 11, 20122 Milan, Italy (applicant), represented by Taliens Partnerschaft von Rechtsanwälten mbB, Amalienstr. 67, 80799 München, Germany (professional representative)

 

a g a i n s t

 

Audiovisuales y Telecomunicacion, S. A., Avda. del Partenón Nº 10, 2ª - Campo de las Naciones, 28042 Madrid, Spain  (EUTM proprietor), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).

On 02/06/2021, 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 10 160 208 are revoked as from 03/12/2019 for some of the contested goods and services, namely: Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. Class 35: Import and export, wholesaling and retailing in shops, selling via global data transmission networks (Internet) and between computer terminals, franchise-issuing in relation to business management assistance, sales promotion for others, business management, all the aforesaid in relation to electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, professional telecommunication, electronic and computer equipment installations, closed circuit television installations, public address installations, scoreboard installations in football stadia, conference room installations, simultaneous translation equipment installations, lighting equipment installations for large spaces, structured cabling installations. Class 37: Installation, maintenance and repair of photovoltaic installations; construction of real estate and civil works in general and prefabricated construction; integral alteration of civil works and installations; installation and maintenance of fuel tanks of all kinds. Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; design and development of computer hardware and software, scientific and technological services, research, analysis in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations.
3.		The European Union trade mark remains registered for all the remaining services, namely: Class 37: Installation, maintenance and repair of electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, integral management of buildings and installations and integral and specialised maintenance relating to installation services, maintenance and repair. Class 42: Engineering, design and development in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations.
4.			Each party bears its own costs.

 

REASONS

 

On 03/12/2019, the applicant filed a request for revocation of European Union trade mark No 10 160 208 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 35: Import and export, wholesaling and retailing in shops, selling via global data transmission networks (Internet) and between computer terminals, franchise-issuing in relation to business management assistance, sales promotion for others, business management, all the aforesaid in relation to electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, professional telecommunication, electronic and computer equipment installations, closed circuit television installations, public address installations, scoreboard installations in football stadia, conference room installations, simultaneous translation equipment installations, lighting equipment installations for large spaces, structured cabling installations.

Class 37: Installation, maintenance and repair of electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, integral management of buildings and installations and integral and specialised maintenance relating to installation services, maintenance and repair, construction of real estate and civil works in general and prefabricated construction; Integral alteration of civil works and installations; Installation and maintenance of fuel tanks of all kinds.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software, scientific and technological services, engineering, research, analysis, design and development in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations.

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

SUMMARY OF THE PARTIES’ ARGUMENTS 

The applicant argues that the mark has not been put to genuine use for a continuous period of five years.

 

The EUTM proprietor submits evidence to prove use of the mark (listed below), describes each document and explains what does it prove, according to the EUTM proprietor. It argues that the evidence is sufficient to demonstrate that the contested mark was genuinely used, in the relevant time and territory, for all the goods and services for which it is registered.

The applicant points out that the EUTM proprietor did not use the mark itself and that there is no proof that the company that appears in the evidence used the mark with the EUTM proprietor’s consent. The ‘authorization of use’ submitted by the EUTM proprietor postdates the use and was only produced for the purposes of proving the use of the mark. The applicant considers that it was not demonstrated that the use during the relevant period made by the other company was with the consent of the EUTM proprietor. It argues that there are no figures as to the turnover, marketing investment etc. generated with the mark. According to the applicant, the mark has not been used as registered. Part of the documents shows use outside of the EU and outside of the relevant period. The applicant claims that the evidence was not presented in a structured manner and that it does not meet the requirements of Article 55(2) EUTMDR. It also claims that the documents submitted are manifestly insufficient and irrelevant and any further documents cannot be considered to be supplementary. The brochures are merely internal documents, which are undated and it is not clear if they were ever distributed to the EU public. The applicant puts forward that the invoices are seemingly for services such as maintenance and installation and show no use of the mark in relation to the goods in Class 11 or services in Class 35. The articles refer to a company named Auditel and do not mention any specific services. It concludes that the mark should be revoked in its entirety. The applicant submitted requests of proof of use made by it in parallel opposition proceedings which are based on, inter alia, the contested mark.

The EUTM proprietor argues that the applicant’s allegations are meaningless. It contends that all it takes it to make a simple internet engine search to find that the contested mark is used. It lists the news pieces regarding the projects that ‘Auditel’ is currently involved in, as they appear on its website. As regards the consent, it argues that the declaration submitted sufficiently shows that the use was made with the EUTM proprietor’s consent. It reminds that the purpose of the present assessment is not to review the economic strategy of the EUTM proprietor and, therefore, it is not the purpose of this exercise to determine precisely the extent of use but to ensure more generally that the mark was actually used for the goods and services for which it is registered. It concludes that the evidence submitted demonstrates real commercial exploitation of the trade mark and there is no need to provide the counterparty with sensitive commercial information. It maintains that the revocation request should be rejected.

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 and 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 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 14/12/2011. The revocation request was filed on 03/12/2019. 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 03/12/2014 until 02/12/2019 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

 

On 10/02/2020 the  EUTM proprietor submitted the following evidence as proof of use:

  

 Authorization of use of the trade mark ‘AUDITEL’ by the EUTM proprietor to Auditel Ingeniería y Servicios, S.L., signed on 22/05/2019.

 Two brochures in which the activities carried out under the mark are described, in particular the projects accomplished in the past. The mark that appears throughout the brochures is , or only and . The company is presented as devoted to engineering, consulting and integration of technological and industrial systems, specializing in offering turnkey solutions from the initial analysis/design to the integral maintenance service. According to the brochure, the company has presence (from the EU countries) in Spain, France and Germany. The brochures introduce specific services provided by the company, in particular installations/maintenance of video surveillance, evacuation PA system, fire detection, access control, ticket sales, accreditations management, radiocommunications, control center, illumination, sonorization, video scoreboards and banners, media infrastructures and broadcasting. Regarding industrial facilities, electrical and mechanical installation projects can be implemented such as electrical installations, building management system, transformation centers, street lighting, compressed air and vacuum, plumbing and gas. The brochures also lists specific services provided in the field of security and communications, automation and control projects. The brochures also present the emblematic projects from Europe and other countries.

 Invoices dated between 2013 and 2018, issued by AUDITEL Ingeniería y servicios to various companies in Spain, Germany, France and the United Kingdom for different services. The mark is displayed at the top of the invoices.

 Invoices for marketing activities related to the trade mark, issued to AUDITEL Ingeniería y Servicios by different companies, dated between 2014 and 2018, with pictures of the respective marketing materials. These objects (banners, Christmas card, calendar, catalogues, brochures, a leather card holder, a USB, a book about football stadiums) show the mark , or . There are also invoices for the production of the articles published in El Mundo and La Razón.

 The two articles published in La Razón and El Mundo in 2017, in which the company’s activities are described.

 ISO and OHSAS certifications for AUDITEL Ingeniería y Servicios, issued in 2002 and 2009 (renovated in 2018) and in 2016.

On 21/01/2021 the EUTM proprietor submitted the following documents:

 Result of Google search for the word ‘auditel’.

 An excerpt from www.auditel.es showing news articles regarding the projects carried out under the contested mark.

PRELIMINARY REMARKS 

  

On Article 55(2) EUTMDR

The applicant claims that the evidence was not submitted in a structured manner and in compliance with Article 55(2) EUTMDR and should be disregarded. This applicant’s claim is totally unfounded. The EUTM proprietor submitted the list of consecutively numbered annexes, which contains numbers of the annexes, a short description and the number of pages that each annex contains. Moreover, the number of each annex is mentioned in the part of the observations which concern that particular document. It is crystal clear which document refers to which argument and what each document represents. There is no deficiency in the submission of the EUTM proprietor’s documents and absolutely no reason for any of them to be disregarded.

On the additional evidence

On 21/01/2021, after expiry of the time limit, the EUTM proprietor submitted additional evidence. Even though, according to Article 19(1) EUTMDR, the EUTM proprietor has to submit proof of use within a time limit set by the Office, Article 10(7) EUTMDR (applicable to cancellation proceeding by virtue of Article 19(1) EUTMDR) expressly invites the Office to exercise its discretionary power if relevant evidence was submitted in time and, after the expiry of the time limit, supplementary evidence was filed.

 

According to Article 10(7) EUTMDR, where, after the expiry of the time limit set by the Office, indications or evidence is filed that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of exercise of the discretion conferred on it by Article 95(2) EUTMR. When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

 

In this regard, the Cancellation Division considers that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional. The applicant’s argument in this regard, namely that the originally filed evidence is manifestly insufficient and irrelevant must be set aside, as it is obvious that there are indications, in the original evidence, of time, place, extent and nature of use. The question whether or not the evidence demonstrates genuine use of the contested mark will be tackled below, but it is clear, prima facie, that the evidence is not manifestly insufficient or irrelevant.

 

The stage of the proceedings at which the additional evidence was submitted does not preclude the documents from being taken into account. Moreover, the fact that the applicant disputed the initial evidence submitted by the EUTM proprietor justifies the submission of additional evidence in reply to the objection (29/09/2011, T-8209;415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-8209;621/11 P, Fishbone, EU:C:2013:484, § 36)

  

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division therefore decides to take into account the additional evidence submitted on 21/01/2021. At the same time, it is considered that it is not expedient, in the present case, to reopen the adversarial part of the proceedings and give the applicant a specific opportunity to comment on this additional evidence, as these documents have no influence on the outcome of the case, as will become evident below.

On the use by third parties

The applicant contests the evidence of use filed by the EUTM proprietor on the grounds that it does not originate from the EUTM proprietor itself but from another company, namely Auditel Ingeniería y Servicios, s.l. (hereinafter ‘Auditel’).

 

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The EUTM proprietor submitted an authorization by the EUTM proprietor to Auditel for use of the marks of ‘AUDITEL’. The applicant casts doubts on the interpretation of this and argues that the mark involved is not identified. Moreover, it points out that this authorization was only signed on 22/05/2019, that is, roughly half a year before the end of the relevant period and, therefore, does not prove that the EUTM proprietor gave its consent with the use of the mark beforehand. As regards this document, it specifies that Auditel is authorized for use of the mark since it was granted (it literally reads ‘since it was granting’ but this must be interpreted as a translation issue as it was written by a non-native English-speaker). This can be understood as that Auditel was authorized to use the contested mark since the mark’s registration and the date on the document merely reflects the date on which it was drafted and signed. This is also supported by the fact that the document is in fact not entitled ‘authorization’ but it is a certificate of authorization, in other words, it merely certifies that Auditel has been authorized to use the mark.

Moreover, according to the case-law, where the proprietor of an EU trade mark maintains that use of that mark by a third party constitutes genuine use of that mark it is, for the purposes of Article 18 EUTMR, claiming implicitly that that use was made with its consent (13/01/2011, T 28/09, Pine Tree, EU:T:2011:7, § 62; 30/01/2015, T 278/13, now, EU:T:2015:57, § 36). Furthermore, it seem unlikely that the EUTM proprietor could have had those documents and submitted them as proof of use of the contested mark if that use had taken place against its wishes (22/03/2017, T 336/15, The Specials, EU:T:2017:197, § 56). The fact that the EUTM proprietor was able to submit documents such as invoices showing the use of the mark by Auditel, sufficiently proves that the use was made with the consent of the EUTM proprietor. The EUTM proprietor would not have access to documents of such private nature as invoices, if Auditel did not act in agreement with the EUTM proprietor. Therefore, the fact that the EUTM proprietor submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Overall, taking into account the evidence on the file, there are no reasonable doubts that the use made of the mark was not with the prior consent of the EUTM proprietor.

  

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use shown by the evidence submitted was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

ASSESSMENT OF GENUINE USE – FACTORS

 

Time of use

 

The evidence must show genuine use of the contested EUTM within the relevant period.

 

Some of the most relevant evidence, such as the invoices, are dated within the relevant period. It is true that many of the invoices, namely those dated in 2013 and 2014, predate the relevant period. These invoices will not be taken into account. For the purpose of the aspect of time, although some of the documents are not dated and some are dated outside of the relevant period, there are sufficient indications, in particular the invoices dated in 2015, 2016, 2017 and 2018, that the mark was used during the relevant period.

Unless explicitly specified otherwise, the references to invoices in the following parts of this decision are to be understood as the invoices dated within the relevant period.

  

Place of use

 

The evidence must show that the contested EUTM has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

 

The brochures indicate the presence of the mark in several countries globally, from the EU countries Spain, France and Germany are specifically mentioned. The projects listed therein also include the ones carried out in those three EU countries. The invoices confirm the bulk of use in Spain, as most of them are addressed to companies in Spain for services provided in facilities located in Spain. The mark was also advertised in Spanish press as evidenced by the two articles in El Mundo and La Razón. Some of the invoices are addressed to German clients and clients in the United Kingdom. The amounts charged are in Euros.

As regards the references to the use of the mark in the United Kingdom, the following needs to be stated. On 01/02/2020, the UK withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. Therefore, use in the UK prior to the end of the transition period constituted use ‘in the EU’. Consequently, the evidence relating to the UK and to a period prior to 01/01/2021, which is the entirety of the evidence in the present case, is relevant with a view to maintaining rights in the EU and will be taken into account.

It follows from the above that the evidence relates to the relevant territory.

 

Nature of use: use as a trade mark

 

Nature of use requires, inter alia, that the contested EUTM 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.

The evidence shows use of the mark in relation to services. It is impossible, due to their intangible nature, to attach the mark to services. Therefore, use of the mark in the brochures, at the top of the invoices and also on promotional articles is an acceptable use of the mark. In particular the brochures and the invoices show the mark being used directly in connection with the services to identify their commercial origin. In the present case, when the main element of the company that uses the trade mark is identical to the verbal element of the trademark, the border between use as a company name and use as a trade mark is somewhat blurred. However, the use of the figurative version of the mark in addition to the company name is a clear indication that not only the company as an entity is referred to but also the trade mark is used to identify the particular services. Therefore, it was sufficiently shown that the mark was used 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 EUTM. 

  

The purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

The mark is registered as . The applicant argues that it was not used as registered because sometimes only the figurative element is used, sometimes only the verbal element and in any event, the combination is never used as it is registered. It is true that sometimes only the figurative element is displayed, mainly in the brochures. However, in other, numerous, instances, the mark is displayed as . Whilst the composition of the figurative element above the verbal one is not maintained, both components are present, the word is clearly legible and even represented in the same or essentially the same typeface and the figurative element is also identically reproduced (the modifications of colours are negligible modifications as they mainly ensure the mark’s visibility on a colourful background). The fact that the exact composition of the verbal vis-à-vis figurative element is modified does not alter the distinctive character of the mark in the situation when both elements are distinctive and both of them are present. The addition of ‘Engineering and Services’ also does not alter the distinctiveness of the mark, as these are descriptive indications of the nature of activities carried out under the mark. Therefore, the mark as used in the brochures constitutes use of the mark in compliance with Article 18(1)(a) EUTMR. The mark was used in a form essentially identical to that of the brochures in the invoices and on the promotional materials, on some of which even the composition of the figurative versus verbal component is maintained. Consequently, there are sufficient instances provided of the mark being used in a form that does not alter its distinctive character.

 

 Use in relation to the registered goods and services

 

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

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.

 

The contested EUTM is registered for the following goods and services:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 35: Import and export, wholesaling and retailing in shops, selling via global data transmission networks (Internet) and between computer terminals, franchise-issuing in relation to business management assistance, sales promotion for others, business management, all the aforesaid in relation to electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, professional telecommunication, electronic and computer equipment installations, closed circuit television installations, public address installations, scoreboard installations in football stadia, conference room installations, simultaneous translation equipment installations, lighting equipment installations for large spaces, structured cabling installations.

Class 37: Installation, maintenance and repair of electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, integral management of buildings and installations and integral and specialised maintenance relating to installation services, maintenance and repair, construction of real estate and civil works in general and prefabricated construction; Integral alteration of civil works and installations; Installation and maintenance of fuel tanks of all kinds.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software, scientific and technological services, engineering, research, analysis, design and development in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations.

There is no indication in the evidence that the mark was used for any goods. The brochures indicate that the services provided by Auditel under the contested mark are engineering, consulting and integration of technological and industrial systems. Auditel is described as system integrator, that develops solutions that apply to the particular projects and carries out the solution in the form of engineering, procurement, installation, commissioning, training and maintenance. These services are also listed in the description of the particular projects, in the invoices and in the ISO certificates. The press articles are also written in the same vein. Moreover, there are indications that indeed Auditel used products of marks other than the contested one in the provision of its services. In one of the brochures ‘technological partners’ are listed for different fields, where trade marks of products of those specific fields are listed. In any event, there is absolutely no indication that the contested mark was used for any goods at all. Therefore, it must be revoked in relation to all the goods in Class 11.

In Class 35, the mark is registered for import and export, wholesaling and retailing in shops, selling via global data transmission networks (Internet) and between computer terminals, franchise-issuing in relation to business management assistance, sales promotion for others, business management. As mentioned above, the services for which there are indications of use of the mark are those connected with design and implementation of technological projects, installation and maintenance of different technological or industrial systems. There are no indications that the mark was used to provide any of the services registered in Class 35 for third parties. The fact that Auditel may need to import or export goods or that it uses certain products during the provision of its services does not constitute use of the contested mark for import, export, retail or wholesale services, as such activities would have to be provided, under the contested mark, for third parties as independent services, which is not the case. The invoice dated on 16/04/2018 is for sales of certain products of the mark BOSCH. This however cannot be considered as a proof that the contested mark was used for retail as this is an isolated sale of goods and there is no indication that the mark was used for an actual bringing together of a variety of goods enabling customers to conveniently view and purchase them (an activity that constitutes retail). There is no evidence of existence of a retail shop under the contested mark or a webshop or even any catalogue with goods offered or any other indication that retail activities were carried out under the mark ‘Auditel’. In view of the remaining documents this sale appears to be rather a part of the project than an indication that Auditel dedicates itself to retail of a variety of goods. In the same vein as above, the fact that Auditel promotes its own mark and its own services, does not constitute the use of the mark for sales promotion for others. Consequently, the mark must be revoked also for all the services in Class 35.

The invoices (dated within the relevant period) were issued for the following services: maintenance of the communication system of Lanzarote airport, improvement of fire protection system in the factory of Airbus, replacement of compressed air, maintenance, repair, piping and technical management of the electricity system, electronic voting, PAS system, simultaneous translation, sound and television signals, electricity generator, lighting rods, transformation centres and consumables of Congress of Deputies in Madrid, replacement of the scoreboard in the stadium of Real Madrid, delivery and installation of specific industrial pipelines, electrical installations, climate control ventilation in a Carrefour, ventilation duct for the Airbus factory, extension of electrical system, climate control and acoustic conditioning for a theatre, air conditioning and electricity installations, works in the south goal on the stadium of Real Betis, installation of fire protection system in a police school, installation of extractor sheds, maintenance of the building facilities, machinery and informatic system of management for a hospital. The invoice of 22/05/2015 for execution of the lighting system in a football stadium in Ivory coast is not taken into account as these services were not provided in the EU.

The invoices alone cover the majority of the services registered in Class 37, namely installation, maintenance and repair of electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, integral management of buildings and installations and integral and specialised maintenance relating to installation services, maintenance and repair.

Furthermore, a detailed list of projects / services is provided in the second brochure. Admittedly, this is promotional material originating from the company that uses the mark itself. On the other hand, the list contains very specific information and more importantly, many of the projects therein mentioned can be also traced in the invoices. This is the case, for example, with the works at a goal of the stadium of Real Betis, with the integral maintenance of Dr. Negrin Hospital in Gran Canaria, maintenance of the internal communication system of the Lanzarote Airport, maintenance of the electrical installations, sound, image and voting control in the Congress of Deputies in Madrid, air conditioning in Carrefour in Palma, etc. Taking this into account, the information regarding the finished and ongoing projects given in the brochure is considered to be reasonably reliable.

However, there is no mention in any of the documents, including the brochures which include the broadest description of the services provided under the trade mark and including the documents submitted on 21/01/2021, that the mark would specifically be used in relation to installation and maintenance of fuel tanks of all kinds or installation, maintenance and repair of photovoltaic installations. The only reference to a photovoltaic plant is the installation of electrical line of evacuation for the photovoltaic plant in Getafe. However, this was carried out in 2008 and does not refer to installation, maintenance or repair of a photovoltaic installation but to a line of evacuation. Consequently, the mark must be revoked for the services mentioned above.

Moreover, the Cancellation Division also considers that the evidence does not show genuine use of the mark in relation to construction of real estate and civil works in general and prefabricated construction; integral alteration of civil works and installations. The description of the services and accomplished projects as indicated in the brochures (the broadest indication of the services in the entire evidence) refers to services such as video surveillance, evacuation PA system, fire detection, access control, ticket sales, accreditations management, radiocommunications, control centre, illumination and meeting room, sonorization, video scoreboards and banners, media infrastructures and broadcasting, electrical and mechanical installation projects in industrial facilities such as electrical installations, building management system, transformation centres, street lighting, compressed air and vacuum, plumbing and gas. In the field of security and communications, automation and control projects, telecommunication installations are mentioned as well as security systems (intrusion detection, video surveillance, access control etc.) and automation solutions for various areas. Finally, consulting and maintenance services are also mentioned. From this it appears that Auditel does not construct real estate or civil works as such but provides partial solutions in specific areas for specific, already constructed, facilities. Therefore, the mark will also be revoked for the services mentioned above.

Finally, the mark is registered for scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software, scientific and technological services, engineering, research, analysis, design and development in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations in Class 42.

First of all, an interpretation of the wording of the list of the services in Class 42 is required to determine the scope of protection of these services. The term ‘in particular’, used in the list, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see reference in 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Bearing this in mind, the Cancellation Division considers that use was shown for engineering, design and development in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations. Although the invoices do not mention specifically design and development of the systems that were installed or maintained, given the nature of some of the projects and also their prices (many of the invoices are for hundreds of thousands Euros), it is clear that the services provided did not include for example a mere installation but that a specific design had to be created for the specific project. For example, the installation of a fire protection system in police school, with the cost of nearly EUR 150 000, certainly included the design of such fire protection system specific for the school. The same applies to the works in south goal of Real Betis’ stadium, which included, according to the brochure, electrical installations, PCI system, air conditioning and ventilation and which cost nearly EUR 1,3 million. Such types of works also include design and development of the specific solution, which forms part of the services provided and charged.

Moreover, as specified above, the items listed after ‘in particular’ are merely examples of possible fields to which the services of engineering, design and development might relate but the protection is granted to these entire categories. As indicated above, the documents show that these services were provided in various fields, for example electro installations, climate control, fire prevention, communication systems, pipeline systems etc. Taking into account the evidence of use filed and bearing in mind that the proprietor is not required to prove use of all the conceivable variations of the category of registered services and also the legitimate interest of the proprietor in being able in the future to extend its range of services, within the confines of the terms describing the services for which the trade mark was registered, the Cancellation Division deems that use of the trade mark must be established for the entire categories of engineering, design and development.

On the other hand, as regards scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software, scientific and technological services, research, analysis in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, the same as was explained above regarding the services in Class 35 applies. There is no indication that the mark was used, vis-à-vis third parties, for these services. If Auditel does some scientific research or industrial analysis or develops software for its internal purposes, in order to be able to provide its services, this would only be internal activities and not public use of the trade mark and providing such services for third parties. The mark must thus be revoked for these services.

Extent of use

 

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

 

Assessing the circumstances of the case may include giving consideration, inter alia, to the nature of the goods or services, the characteristics of the market concerned and the scale and frequency of use of the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39). The characteristics of the market in question must be taken into account (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51).

As already mentioned above, the invoices show very considerable amounts that were charged for the services. Although the invoices are not exceedingly numerous, this is compensated by the fact that each project or service charged is rather costly. The amounts that appear in the invoices range from several thousands of Euro to more than a million. Moreover, they are spread within four years of the relevant period and there are indications that the use started even well before that. The supporting information from the brochures suggests that the use of the mark was even more intensive than shown by the invoices. The mark was also supported by promotional activities, as demonstrated by the invoices for marketing expenditures. The conclusion that the use was genuine and with serious intentions and not merely token is also supported by the fact that the company that used the mark obtained ISO certificates, something that is not a simple process. Contrary to the applicant’s arguments, it is not necessary that the EUTM proprietor submits turnover or sales figures or a complete list of marketing expenditures. The EUTM proprietor is not under any obligation to disclose its overall economic position. The evidence submitted shows sufficient extent of the contested mark’s presence on the market as to conclude that the use of the mark in relation to the services mentioned in the previous section was genuine.

 

Overall assessment

 

In order to examine, in a given case, whether use of the 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).

 

The evidence demonstrated that the mark has 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 made was genuine. Moreover, it was used as a trade mark and in a form not altering the distinctive character of the mark. Considering all the above, 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 some of the services in Classes 37 and 42, as stated above.

 

Conclusion

 

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

 

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 35: Import and export, wholesaling and retailing in shops, selling via global data transmission networks (Internet) and between computer terminals, franchise-issuing in relation to business management assistance, sales promotion for others, business management, all the aforesaid in relation to electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), mechanical installations for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations, professional telecommunication, electronic and computer equipment installations, closed circuit television installations, public address installations, scoreboard installations in football stadia, conference room installations, simultaneous translation equipment installations, lighting equipment installations for large spaces, structured cabling installations.

Class 37: Installation, maintenance and repair of photovoltaic installations; construction of real estate and civil works in general and prefabricated construction; integral alteration of civil works and installations; installation and maintenance of fuel tanks of all kinds.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; design and development of computer hardware and software, scientific and technological services, research, analysis in general and in particular of projects relating to closed circuit television, PA systems, scoreboards, conference rooms, simultaneous translation equipment, lighting equipment for large spaces, electrical installations in general (high voltage, low voltage and medium voltage, and substations and power transmission), for air-conditioning, heating and ventilation, photovoltaic installations, integrated security systems for large venues (closed circuit television, access control, PA systems, intercoms), fire prevention installations.

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 03/12/2019. 

 

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

 

 

The Cancellation Division

 

Martin LENZ

Michaela SIMANDLOVA

Elena NICOLÁS GÓMEZ

 

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.