CANCELLATION No 15 279 (REVOCATION)

OBI ApS, Jacob Møllersgade 4, 9560 Hadsund, Denmark (applicant), represented by Plougmann Vingtoft A/S, Strandvejen 70, 2900 Hellerup, Denmark (professional representative)

a g a i n s t

V-TAC Europe OOD, Bul. "Luben Karavelov" No: 9B, ap. 4, 4000 Plovdiv, Bulgaria (EUTM proprietor), represented by Inter-Ecvi-Patent, 13, Sofrony Vrachansky Str., at. 3, 1303 Sofia, Bulgaria (professional representative).

On 21/12/2018, 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 10 256 907 are revoked as from 21/07/2017 for some of the contested goods and services, namely:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproductions 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 boats.

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

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.

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

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Class 11: Apparatus for lighting.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 256 907 (figurative individual mark). The request is directed against all the goods and services covered by the EUTM, which are the following:

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 reproductions 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 boats.

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

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.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark in question has been registered for over 5 years but has not been put to genuine use in the European Union within the five-year period in connection with all the goods and services that are the subject of the revocation application and in particular with regard to goods and services in Classes 9 and 42.

The EUTM proprietor submitted evidence of use (listed below) with comments about the particular items and goods and services they concern. The EUTM proprietor explains that over 99% of its business is in LEDSs and over 99% of the company sales include sale of LEDs in varying shapes, forms and applications. It further elaborates that all of V-TAC floodlights (which the company sells since its creation) and pendants come with cables themselves. Thus all of the provided invoices represent evidence of the use of the mark with regard to electric cables. It explains that it develops the design of the packaging for its own products, as well as for the suppliers and their suppliers on a regular basis and produces advertising materials for its clients and counterparties. Moreover, it maintains that it engineers a large part of its products in house and orders the production based on its own engineering design. In the observations the EUTM proprietor refers to links to its website where the advertising materials should be found that should show its work in the field of energy-saving. The EUTM proprietor explains that a major part of its business and the message that it sends to its customers is in the field of energy-saving. Every sale the company makes should include an explanation of how to save energy by using its products. The EUTM proprietor observes that it has developed its own software named V-TAC Design which provides a simple tool for interior lighting design. The EUTM proprietor claims that it provides the service of sketching out initial designs to a lot of its customers as a part of the sale process.

In reply the applicant observed that some of the invoices are duplicates and some of the evidence like the packaging is not dated and should be disregarded. The invoices should show that goods under company name equivalent to the contested sign have been sold to customers in various countries. According to the applicant it is clear that the goods sold under the contested trade mark are all electronic goods including adaptors, measuring chargers, measuring apparatus, power supplies, electrical cable and LED lighting including LED light, bulbs, LED tubes, Les strips, LED floodlight, LED lamps, LED diodes and spots. As to the advertising material the photos of which have been submitted the applicant observes that they are merely advertising material and merely show use for LED lighting in Classes 9 and 11. The applicant also criticizes the remaining materials submitted by the EUTM proprietor e.g. the ones regarding the engineering, test reports, the items regarding interior design etc. It observes, in particular, that no agreement for software development was submitted, and providing two links to show use in the field of energy saving is insufficient. The applicant proposes the list of the contested sign to be limited to the following goods:

Class 9: Adaptors (electric -), electronic power supplies, electrical cable, electronic meters, electric battery chargers, measuring apparatus, light-emitting diodes [LED] all for use with LED lighting.

Class 11: Apparatus for lighting.

Class 42: Scientific and technological services and research and design relating thereto in relation to lighting.

In its final observations the EUTM proprietor observed that it presented 22 invoices (6 in item 1, 4 in item 2, 2 in item 3, 3 in item 4 and 7 in item 5), which were duly listed and there was no reason to disregard them. They should form a sample of randomly selected invoices to illustrate the great variety of products produced by it, the different territories and the long period of operation. As to the criticism regarding items 6 and 7, the EUTM proprietor observes that they should not be disregarded for a mere absence of date, since indication of time of use can be found in other evidence e.g. in invoices. The EUTM proprietor explains that by submitting evidence for the preparation work (engineering work) together with the evidence for the end products (as described in the invoices and shown on the company website) it illustrates the different stages of the producing processes of their client. The same applies to the remaining part of the evidence submitted in Item 9, 10 and 11 proving the accompanying pre‐sale and after‐sale services.

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 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 20/04/2012. The revocation request was filed on 21/07/2017. 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 21/07/2012 to 20/07/2017 inclusive, for the following contested goods and services:

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 reproductions 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 boats.

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

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.

On 06/10/2017, within the time limit set by the Office, the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

1. 22 invoices (each submitted with a duplicate) issued by a the EUTM proprietor and addressed to clients in various EU members states like Greece, Italy, Spain, Hungary, Romania, Austria, United Kingdom etc. One is addressed to company in Armenia. They concern the period between 2012 and 2017. The contested sign is visible in the left upper part of each invoice. The goods mentioned are diverse lighting apparatus, mostly based on LEDs like, LED panels, LED bulbs, LED strips (meters), street lamp, LED floodlight, LED tube, Wall lamp, LED table lamp, LED module, LED downlight etc. as well as some accompanying items like power supplies, connectors, convertors, drivers for LED panel, LED chips, cables. The quantities of the goods are mostly above 10, and in many cases between 50 and 100 items. In some cases the amounts are above 1000, e.g. for LED tube or LED bulb. The EUTM proprietor explains that battery chargers are included in some of V-TAC battery-powered products like SKU7098 and SKU5692, for example (the code 5692 should correspond to a researchable floodlight, the codes 7098 and 7099 to rechargeable led table lamps in different colours). The EUTM proprietor explains that it has developed its own Wattage meter that it usually gives out or sells at a very small price as advertising material. The code 7037 corresponds to a power monitor EU plug which is the above described wattage meter. This plug has a symbolic price of 0,005 EUR therefore it is clearly not sold but actually given away as a gift, similarly the advertising hats, paper bag, pen or a catalogue, where either a symbolic price of 0,001 EUR or directly 0 EUR is indicated. The EUTM proprietor explains that the code 9703 should correspond to a HDMI cable, the code 9715 to power cable, the code 9721 to a signal cable. However, according to the EUTM proprietor there are some specific specialized cables for sale on their own. HDMI cable features separately twice for price of 10 EUR. (Items 1-5)

2. A picture of samples of packaging designs developed by the EUTM proprietor for its products. The sign is prominently visible there. (Item 6)

3. A picture of samples of advertising materials (pens, notebooks, calendars, etc.). (Item 7)

4. Copies of 6 test reports of the EUTM proprietor’s prototype products; 9 pictures of its laboratories, test rooms where it conducts tests and measurements and workshops where its engineers repair damaged goods and assemble experimental products; an electrical scheme that it has created for installation of lighting products for a client. The submitted evidence should attest that the EUTM proprietor conducted measurement and tests of lighting products in years 2015-2017. (Item 8)

5. Examples of work with DIALux and detailed interior lighting designs projects which the EUTM proprietor has developed for its clients, as well as pictures of finished interiors e.g. the visualization of the showroom in Sofia and the showroom in Romania. (Item 11)

In the observations the EUTM proprietor also mentioned items 9 and 10, which will be commented below.

Preliminary remarks

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods and services for which the EUTM is registered, in particular because some of the items, like the packaging, are not dated.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use. As the EUTM proprietor correctly observes the invoices provide relevant indications of time and place of use, which can supplement the in formation missing in, for example, the packaging.

The Cancellation Division agrees with the applicant that indeed no copy of the agreement for the development of software (item 9) was provided.

As to the EUTM proprietor’s reliance on links to its website (item 10) to show consulting services in the filed of energy saving, the Cancellation Division explains that such evidence is not taken into account. The Cancellation Division does not check the content to which the links direct. It only makes assessment on the basis of the evidence actually submitted. Not to mention that consulting the website by the Cancellation Division while assessing the case would provide information at the time of issuing the decision but not regarding the relevant period for proof of use. In any case, the value of evidence consisting of the EUTM proprietor’s website is, in principle, rather limited, since it comes from the interested party and not from independent sources.

The applicant observes that at least half of the invoices should be disregarded as they are in duplicates. The EUTM proprietor explains that it submitted 22 invoices all duly listed. The Cancellation Division observes that in fact the EUTM proprietor filed over 40 invoices however half of them are duplicated, because each of the invoices was submitted with a duplicate, therefore there are effectively indeed 22 invoices.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period.

Most the evidence is dated within the relevant period, especially the invoices as well as part of the documentation provided for the design of lighting panels. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

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

The invoices concern the relevant territory, especially the invoices issued to companies in various member states in EU. This can be inferred from the addresses of the recipients in Italy, Greece, UK, Spain etc. Therefore, the evidence relates to the relevant territory.

Nature of use

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark that is for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The applicant suggests that it should be used as a company name because it is placed in the upper corner of the invoices. The Cancellation Division does not agree with that assessment. It is not unusual for companies not to use the trade mark in the invoices next to the goods but merely place it in the letterhead. This occurs especially in case of companies which only sell their own products under their own trade mark, as it is in this case. In most of the invoices in the description of goods there is a product number which starts with VT, what confirms this conclusion. In the invoices, the sample packaging as well as the photos from the EUTM proprietor’s premises the contested sign is displayed. The Cancellation Division finds that it is clearly used as a trade mark and it is used as registered.

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).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is 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 submitted by the EUTM proprietor in order to prove genuine use of the earlier EUTM relates to different territories within EU and concerns the entire relevant period.

In the present case, the items in support of the extent of the use consist of the invoices issued for the sale of different goods to companies in different countries within EU. The EUTM proprietor did not provide the global sales volumes or figures but the information which based on the invoices alone, is sufficient to establish the extent of use. The volumes of the sold items are mostly between 50 and 100 per product type, in some instances they are around 10, but in many they are 1000 and above. This provides the Cancellation Division with sufficient indication of the extent of use.

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, 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 reproductions 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 boats.

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

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.

However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services for which it is registered.

The Cancellation Division essentially agrees with most of the applicant’s conclusions as to the use of the contested sign.

As the EUTM proprietor observes itself, over 99% of its business is in the LED lighting. This is also what emanates from the submitted evidence. Considering the submitted evidence as well as observations of the EUTM proprietor the Cancellation Division observes that the goods sold under the contested trade mark are mostly different kinds of lighting apparatus such as LED lighting including LED light, bulbs, LED tubes, LED strips, LED floodlight, LED lamps, LED diodes and spots, LED panels, street lights, as well as some power supplies, battery chargers, electrical cables, connectors and convertors. The use for the latter electrical goods can only be accepted because in the invoices they are included as separate entities and sold for a market price.

The same, however, does not apply to the so-termed advertising materials, like pens, T-shirts, hats, catalogues or the measuring device developed by the EUTM proprietor. The EUTM proprietor alone admits that they are given away for advertising purposes. This also emanates from the invoices where it can be seen that these items are either given away for free or ‘sold’ for a symbolic price. It is quite clear that this does not constitute genuine use of the sign and it was also not the EUTM proprietor to sell them in order to gain market share, but to use them for advertising purposes. Not to mention that most of the items would be classified in classes for which the sign is not protected like Class 16 or 25.

In view of the above the Cancellation Division finds that in Class 9 the use has been proven for power supplies, battery chargers, electrical cables, connectors and convertors as well as LEDs as electrical devices. These items fall under the broad category of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

As to Class 11 it is clear, as also the applicant concluded that the EUTM proprietor provides diverse apparatus for lighting.

There is no indication of the use of the mark for the remaining goods in Classes 9 and 11. As it was explained the only other indication of goods concerned only goods used for advertising purposes, what does not amount to genuine use.

As to the contested services no real indications of use have been provided, especially that they are not mentioned in the invoices. It is clear from the few submitted pieces of evidence as well as from the EUTM proprietor’s explanations that all these actions that concern the design of products, research, testing and development is performed by the EUTM proprietor for their own products. There is no indication that these services are offered independently to customers without connection to their own products. If they are performed, which has not been sufficiently documented, they are part of the sale of the lighting apparatus. The EUTM proprietor alone observed that these are ‘pre-sale- and ‘post-sale’ services. Contrary to the EUTM proprietor’s allegations no convincing evidence was provided to prove the provision of services which have to do with advice of energy saving or development of software.

There are no indications as to the use of the mark with regard to the remaining services in Class 42.

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.

Overall assessment and conclusion

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies 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).

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated in terms of the nature, place, time and extent of use in connection with some of the goods for which the EUTM is registered, bearing in mind that the evidence shows use of the EUTM as a trade mark and in a form that complies with the conditions of Article 18(1)(a) EUTMR.

Consequently, the EUTM remains registered for the following goods:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

Class 11: Apparatus for lighting.

However, the EUTM proprietor has failed to prove genuine use of its trade mark for all the remaining goods and services. Regarding these goods and services, an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period.

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproductions 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 boats.

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

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.

The EUTM proprietor has proven genuine use for the remaining contested goods; 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 21/07/2017. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has not requested an earlier date.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested 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

Liliya YORDANOVA

Ewelina SLIWINSKA

Denitza STOYANOVA-VALCHANOVA

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.