CANCELLATION No 21 428 C (REVOCATION)

Go Greek Yogurt, LLC, 450 N. Bedford Dr, Suite 312, 90210 Beverly Hills, CA, California, United States of America (applicant), represented by Evangelia Christoforakou, 125 Solonos Street, 106 78 Athens, Greece (professional representative)

a g a i n s t

Gionas Georgios, Leoforos syggrou 36-38, 11742 Athens, Greece (EUTM proprietor), represented by Maria Kontou, Asklipiou 26, 10680 Athens, Greece (professional representative).

On 26/02/2020, 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 10 437 011 are revoked as from 13/04/2018 for some of the contested goods, namely:

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes, except for mugs.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made of cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

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

Class 21: Mugs.

Class 29: Edible oils.

4. Each party bears its own costs.

REASONS

On 13/04/2018, the applicant filed a request for revocation of European Union trade mark registration No 10 437 011 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made of cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

Except for selecting the grounds of Article 58(1)(a) EUTMR in the application for revocation of 13/04/2018, the applicant did not submit any particular arguments.

On 14/08/2018, the EUTM proprietor filed evidence of use (32 annexes which will be listed and assessed further down in the following section of the decision). He provided a short description of the items filed as proof of use and requested the rejection of the application for revocation. On 17/08/2018, the proprietor submitted observations in reply to the application for revocation whereby he describes in more detail the evidence of use previously filed and claims that the documents also show that the contested EUTM is well-known and enjoys ‘a great reputation in Europe and internationally’. In addition, he contends that the proof of use has to be considered in conjunction with ‘the critical depression circumstances of the Greek economy during the years 2010-2018, the Grexit talks, the 9 successive austerity programs imposed to the Greek economy and the capital controls that were imposed in Greece since 29/07/2015 and are still in force’. It is further shown that under these circumstances ‘not all products covered by the challenged EUTM could be sold and/or produced in large quantities’. ‘The proprietor has undertaken great efforts and expenses for a wide range of products’ and the EUTM should remain registered for all the goods covered in Classes 21, 29 and 30.

The proprietor also claims that the present revocation action has been filed in bad faith, the applicant aiming ‘at exhausting the proprietor with long and costly proceedings before the Office, wishing to take unfair advantage of the difficult economic situation for businesses in Greece and at the same time unfair gain from the challenged trade mark’s recognition’. In the proprietor’s view, bad faith would be demonstrated by the fact that the applicant filed three identical EUTMs which were all opposed by the EUTM proprietor. Finally, the proprietor submitted additional evidence (which will be listed and assessed further down in the following section of the decision).

On 18/09/2018 and 19/09/2018 the EUTM proprietor submitted English translations of part of the evidence filed on 14/08/2018, namely Items 1, 3, 12, 18 and 21. Following the Office’s request, the proprietor retransmitted on 30/10/2018 the fax submissions of 18/09/2018 and 19/09/2018.

In its observations in reply of 22/03/2019, the applicant individually assesses and challenges each of the items of evidence filed by the EUTM proprietor (as it will be detailed herein below, in the following section of the decision) and concludes that the contested EUTM should be revoked for all the registered goods. Even if some of the invoices show use for mugs in Class 21 and olive oil in Class 29, such use is merely token since the quantities sold are very small. In support of its claims, the applicant filed some documents (a number of 6 photographs and a statement under oath from a private investigator), related to a research for products marketed under the contested EUTM. As for the bad faith claim, it is shown that it is the EUTM proprietor who opposed the applicant’s EUTM applications and therefore the revocation action was filed to support the applicant’s rights.

In his final observations of 08/08/2019, the EUTM proprietor denies the applicant’s claims and maintains that the application for revocation is to be rejected an unfounded. The proprietor also submitted additional evidence (which will be listed and assessed, further down, in the following section of the decision).

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 15/05/2012. The revocation request was filed on 13/04/2018. 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 13/04/2013 to 12/04/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 14/08/2018 and on 17/08/2018 (within the time limit), the EUTM proprietor submitted evidence as proof of use. As mentioned above under the ‘Summary of the Parties’ Arguments’ section, on 08/08/2019 the proprietor filed additional documents.

Before proceeding to listing the evidence, the Cancellation Division notes that the EUTM proprietor indicated that its submissions of 14/08/2018, 18/09/2018 and 19/09/2018 were ‘Confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Cancellation Division does not consider these submissions confidential. In any event, the Cancellation Division will describe the evidence in general terms, without disclosing commercially potentially sensitive information.

Evidence filed on 14/08/2018

• Item 1: Private contract license granting agreement of 13/09/2012 concluded by the EUTM proprietor, as licensor with a Greek company, as licensee and granting a non-exclusive license for the use of the contested EUTM in respect of various products.

• Item 2: Selection of 16 invoices issued by the licensee referenced in the agreement filed under Item 1. The documents are dated between 01/10/2013 and 11/01/2018 and evidence the sale of goods (described as: nut mixes for Mediterranean/Italian/Mexican/Greek salad, jar pistachio, nuts (pine seeds, walnuts, caseous), peanuts jar, olive oil PDO Kalamata, jar caseous, jar mixes nuts, jar mixes (caseous raw), ground dried oregano, Greek oregano, Kythira salt in shaker, sultanas/sultaninas Crete, coffee, mix nuts and dried fruits) to customers located in Greece. The signs and respectively are depicted at the top left and respectively right corner of each invoice.

• Item 3: Statement under oath given on 06/08/2018 by the manager of the licensee referenced in the agreement filed under Item 1.

• Item 4: Invoice of 14/10/2013 issued by a Greek company for printing advertising and promotional material for ‘Go Greek’.

• Item 5: Invoice of 17/10/2013 issued by a Greek company for printing packaging for GoGreek products.

• Item 6: Undated photographs of goods, bearing the contested EUTM ( , or ): honeygar condiment, Kalamata PDO extra virgin olive oil, Kalamata olives in extra virgin oil, fleur de sel from Mani, wild herb seasoning, wild bitter honey, thymari wild raw honey, orange flower wild honey, wild flower gyris, wild oregano and thimari herbs, taygetos mountain wild tsai, fine ground Greek coffee, premium espresso coffee, Greek/Italian/Mexican salad nut mix, Greek roasted pistachios, pork sausages with wild thyme, pork sausages with orange, authentic Greek yogurt & muesli, vegetable moussaka (deep frozen meal), Graviera cheese and chewing gum.

• Item 7: Undated photographs of kitchen/cooking gloves, wooden kitchen utensils and coffee/sugar/tea containers bearing the contested EUTM.

• Item 8: (Front and back) self-adhesive labels for honeygar condiment (expiry date: 9/2015), Kalamata olives in extra virgin oil (expiry date: 11/2014), Kalamata PDO extra virgin olive oil (expiry date: 09/2014), fleur de sel from Mani, wild herb seasoning, pure sea salt from Kythira, wild bitter honey (expiry date: 02/2016), thymari wild raw honey (expiry date: 10/2015), wild oregano & thimari herbs (expiry date: 07/2015), mountain oregano, wild Cretan daphne (expiry date: 06/2016). The labels show, inter alia, the mention Packed exclusively for 2S foods, Athens, Greece and depict the contested EUTM.

• Item 9: Undated ‘Go Greek’ products flyer (PDO Kalamata extra virgin olive oil, Kalamata olives in extra virgin olive oil, fleur de sel, wild herb seasoning, family vissinada refreshment drink and wild bitter honey) and undated flyer for ‘Go Greek’ yogurt & muesli. Both documents mention the website www.gogreek.gr and 2S Foods (Athens, Greece).

• Item 10: Certificate of registration issued on 23/12/2014 by the Registrar of Companies for England and Wales and certifying that the company Yopsi Ltd was incorporated on 26/11/2014 by, inter alia, the EUTM proprietor.

• Item 11: Resolution of 07/04/2015 of the Sole Director of Yopsi Ltd, mentioning among other things, that said company has the right to use the contested EUTM (under license from the proprietor) and making reference to a company’s branch in Athens, called Evzon Branch of Foreign Company.

• Item 12: Statement under oath given on 06/08/2018 by the director of Evzon/Eyzon (a company which has the right to ‘manage’ the contested EUTM) and mentioning, inter alia, the turnover of the company for each of the years 2015 to 2017 and the awards received between 2015 and 2017.

• Items 13 to 15: Selection of documents related to some awards (‘Labela Bronze and Silver Label Award 2017’, ‘WorldStar Awards 2017’ and ‘HP Indigo Excellence Awards Labelexpo 2015’) for the labels of ‘Go Greek’ extra virgin olive oil Mr and Mrs Farmer and respectively ouzo miniatures.

• Item 16: Selection of 7 invoices issued by Eyzon/Evzon Branch of Foreign Company (based in Athens, Greece). The documents are dated between 10/03/2016 and 19/01/2018 and evidence the sale of ouzo miniatures (collection cases), olive oil, coasters, mugs, key-chains, backgammon, magnetic bookmarks, playing cards, Tagari fabric/tote bag and pocket mirrors to customers located in Greece (five invoices), Germany (one invoice) and USA (one invoice). The sign is depicted at the top left corner of each invoice. The goods are identified by a description and a product code, which includes the letters ‘GG’ and can either be traced back in one of the catalogues in Item 25 (for example GGOEV0250-501 which corresponds to olive oil Mr & Mrs Farmer) or contains an indication of the type of goods (GGMUG-009 which corresponds to mugs).

• Item 17: Two invoices issued by Eyzon/Evzon in November and December 2015 and addressed to shops at the International Athens Airport for the sale of coasters and ouzo. The sign is depicted at the top right corner of the documents.

• Item 18: Private contract license granting agreement of 01/01/2017 concluded by Eyzon/Evzon Branch of Foreign Company as licensor with a Greek company as licensee and granting to the latter the exclusive right to use and reproduce drawings and product illustrations in respect of ouzo miniatures.

• Items 19 and 22: Two invoices issued by Eyzon/Evzon on 29/12/2017 and on 29/07/2016 respectively and related (according to the proprietor) to the rights under the license agreement filed as Item 18. Item 22 further includes an internal document in Greek only covering the period January to June 2016. The proprietor informs that this is a list of sales. According to the information provided by the applicant, the document evidences the sale of ‘GoGreek’ mugs, magnets and key rings.

• Item 20: Printout from www.bankingnews.gr and containing the article ‘Summer is exciting for the brand gogreek’ published on 19/05/2017 and reporting in the main on the ouzo miniatures ‘GoGreek the collectibles’ being awarded for their design and packaging by the WPO (World Packaging Organisation).

• Item 21: Private contract license granting agreement of 22/06/2015 concluded by Eyzon/Evzon Branch of Foreign Company as licensor with a Greek physical person as licensee and granting to the latter the exclusive right to use and reproduce designs and illustrations on products (ceramic products, acrylic/wood products, decorative products).

• Item 23: Undated ‘Go Greek’ products flyer showing key chains and mugs.

• Item 24: Packages for ‘Go Greek’ Mr and Mrs Farmer extra virgin olive oil mentioning that the products are distributed by Evzon and showing, inter alia, the sign .

• Item 25: 2015 and 2016/2017 ‘Go Greek’ products Catalogues and more specifically: ouzo miniatures, (organic) pitted Kalamata olives in brine, Kalamata PDO extra virgin olive oil, Farmer/Farmer’s wife Kalamata PDO extra virgin olive oil, coasters, pillow, Tagari fabric tote bag, fabric doll, magnetic bookmarks, pocket mirrors, playing cards, cushion covers, key chains, magnets, backgammon and mugs.

• Item 26: ‘Go Greek’ collectibles advertisement flyer mentioning a number of 11 awards received between 2015 and 2017 for label and design.

• Item 27: Selection of documents relating to the ‘Go Greek’ sponsoring activity for the film ‘The Lobster’ (awarded the Jury Prize, 2015 at the Festival de Cannes).

• Item 28: Printouts from www.perrotiscollege.edu.gr relating to the 1^st International Olive Center Conference held in Thessaloniki/Greece (24-26/05/2018) and mentioning ‘Go Greek’ as sponsor.

• Items 29 to 31: Screenshots from the ‘Go Greek the collectibles’ Facebook page displaying posts uploaded between 2016 and 2017 and showing ‘Go Greek’ ouzo miniatures and ‘Go Greek’ Mr & Mrs Farmer extra virgin olive oil. The images feature pictures of Chef Elias Mamalakis and respectively Chef Dina Nikolaou with ‘Go Greek’ ouzo miniatures as well as the cover and inside page of the book ‘Greece La Cuisine Authentique’ (ed. Hachette Cuisine, Sept. 2017) by Chef Dina Nikolaou presenting Mr & Mrs Farmer extra virgin olive oil and ouzo miniatures. The products are also shown in ‘Art Quarter’ (vol. 14) Taiwan for food branding and packaging.

• Item 32: Selection of press articles and advertisements from ‘Leader’ (the Hellenic mail), ‘Matrix24’, ‘GTP Headlines’, ‘livemedia.gr’, ‘Chrima’, ‘Greek Hospitality Guide’ and ‘Greek Exports Guide’ dated between 2015 and 2018 and mentioning ‘Go Greek’ and showing the contested EUTM. Some quotations from the articles are as follows: ‘a new concept that aspires to express and promote Greek history, philosophy, mythology and tradition, through the creation of products and services which are characterised by a highly aesthetic design’; ‘the gogreek the collectibles series with traditional costumers from all over Greece as well as the Oh…my Gods series! […] already count on major design awards’; ‘aside from miniatures ouzo, the gogreek brand has a remarkable range of products: selected foods such as olive oil’; ‘the products are available in more than 200 stores and points of sale all over Greece and by the end of the summer selected products will be sold in America’; ‘take a bit of Greece home with Gogreek miniatures, olive oil & ouzo’; ‘available across Greece, on board cruise ships, at wine and liquor stores, at Athens International Airport and as far as Taiwan, the US and Austrialia, ‘Oh…my Gods!’, ‘Oh…my Hero!’, the ‘Tagari bag’ and the Evzonas and Amalia ouzo miniatures promise to get you smiling’; ‘Five gold, a Silver award and a Bronze prize at the 2016 Olymp Olympics Awards for the brand gogreek’.

Evidence filed on 17/08/2018

• Item 33: Selection of five press articles published between 2015 and 2017 (‘Business Insider UK’, ‘Le Monde’, moneymorning.com, ‘CNN’ Greece and Greece.greekreporter.com) and reporting on the Greek economic crisis and imposed capital controls.

• Item 34: Screenshot of the ‘Gogreek the collectibles’ Facebook page.

Evidence filed on 08/08/2019

• Item 35: (i) Selection of 10 invoices issued by Eyzon/Evzon. The documents are dated between January 2018 and March 2019 and evidence the sale of ouzo miniatures, playing cards, coasters and backgammon to customers located in Greece. The sign is depicted at the top left corner of each invoice. (ii) Invoice issued on 31/12/2018 by Eyzon/Evzon to a Greek company (the licensee referenced in the agreement filed under Item 18), for the rights paid by the licensee for the period January to December 2018. (iii) Internal document detailing sales (by the licensee referenced in the agreement filed under Item 18) of ouzo miniatures for the period January to December 2018. (iv) Wikipedia extract regarding the Hellenic Duty Free Shops S.A. company and (v) Five undated photographs showing (according to the proprietor) the refrigerating facilities and the inside/outside of the production area of a Greek company (the licensee referenced in the agreement filed under Item 1).

Preliminary remarks

Before proceeding to the assessment of the evidence, the Cancellation Division deems appropriate to discuss some of the parties’ arguments:

(1) Admissibility of the cancellation applicant

The EUTM proprietor argued that the present revocation action was filed in bad-faith (see under ‘Summary of the Parties’ Arguments’ above).

The Cancellation Division recalls that Article 63(1)(a) EUTMR grants all natural and legal persons the right to file an application for a declaration of revocation on the basis of Article 58 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision. In the present case, the EUTM proprietor did not provide convincing arguments and/or evidence of abuse of law from the part of the cancellation applicant which could call upon application of higher principles of law and the admissibility of the application for revocation. Therefore, the proprietor’s arguments are set aside.

(2) Examination of individual pieces of evidence

As stated under the Summary of the Parties’ Arguments section, the applicant individually assesses and challenges each of the annexes filed by the EUTM proprietor on 14/08/2018 and 17/08/2018, arguing in the main that the documents are not sufficient to prove that the use of the subject mark constitutes genuine use. 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.

(3) Means of evidence

In its observations of 22/03/2019, the applicant contends that the agreements under Items 1, 18 and 21 are not notarised or registered at any authority and do not have a valid and legally testified date. Moreover, since they were not registered against the contested EUTM at EUIPO’s data base cannot produce effects vis-à-vis third parties in all the Member States pursuant to Article 27 EUTMR. Consequently, in the applicant’s view, these documents are not a valid and legal proof of evidence regarding genuine use of the contested EUTM and cannot be used to support the use.

The applicant also shows that there is no relevant written agreement that the EUTM proprietor granted to Yopsi Ltd the right to use the Go Greek trade mark. Therefore, the statement in the resolution filed as Item 11 pursuant to which said company has a license from the proprietor as regards the contested EUTM is not supported and cannot be considered as true. Moreover, the applicant contests Eyzon/Evzon’s right to use the contested EUTM since there is no license agreement under which Eyzon/Evzon has the right to use and manage all IP rights in the designs and illustrations created by the EUTM proprietor and/or a license agreement to use the contested EUTM.

The Cancellation Division agrees with the applicant in that the agreements under Items 1, 18 and 21 are private contracts and that they were not entered into the Register pursuant to Article 27(1) EUTMR. However, this is not of such nature as to cast, at least prima facie, doubts as regards their validity. Therefore, and in the absence of any evidence from the applicant that such agreements would be effective under the applicable law only if being acknowledged before a notary public, they are considered valid and legally binding upon the parties by virtue of the principle pacta sunt servanda.

It is further true that the EUTM proprietor did not make available an agreement with Ypso Ltd and/or with Eyzon/Evzon for granting to the latter entities the right to use the contested EUTM. It is nonetheless clear from the documents on file (in particular Items 10 and 11) that there are economic links between them, since Ypso Ltd is a company controlled by the EUTM proprietor whereas Eyzon/Evzon is Ypso’s branch in Athens. The fact that the resolution (filed as Item 11) includes an explicit statement that the company has the right to use the contested EUTM, under a license from the proprietor is an implicit indication of the proprietor’s consent. Consequently, the Cancellation Division finds no reasons to doubt the resolution and/or the agreements entered into by Eyzon/Evzon. Finally, it is also recalled that where an EUTM proprietor submits evidence of use of its marks by a third party, this is an implicit indication that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Against this background the applicant’s claims are set aside.

(4) Additional evidence of 08/08/2019

Even though, according to Article 19(1) EUTMDR, the 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.

In addition, 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‑415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C‑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 08/08/2019. After checking these additional documents, the Cancellation Division considers that they do not introduce any new elements, but merely supplement and/or corroborate the evidence and information given in the previous submissions following the criticism of the applicant and their acceptance cannot change the outcome in the present proceedings. Therefore, the Cancellation Division does not consider it necessary to reopen the present proceedings for another round of observations for these particular documents.

Assessment of genuine use – factors

Time and place of use

The evidence must show genuine use of the EUTM within the relevant period (13/04/2013 to 12/04/2018 inclusive) and in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

As regards the time of use, it is noted that most of the evidence is dated within the relevant time frame. It is true that, as the applicant claims, part of the evidence is either undated (the photographs in Item 6 for example or the flyers in Items 9 and 23) or dated outside the relevant period (the statement in Item 12). However, this does not mean that such documents should simply be disregarded, ‘as irrelevant’, without any consideration. Images of products/products packaging may serve to show how the mark was used in relation to the relevant goods or to provide information regarding the type of goods the proprietor manufactures, and therefore cannot be ignored in the overall evaluation of the evidence (13/02/2015, T-287/13, HUSKY, EU:T:2015:99, § 67-68). The same applies to product flyers. Admittedly, evidence referring to use outside the relevant period is generally disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). This applies to the case at hand, where, as already mentioned, the majority of the evidence is dated within the relevant period and the documents dated outside refer to events dated within the relevant time frame.

The documents submitted by the EUTM proprietor (and in particular the invoices in Items 16, the document in Item 22, the catalogues in Item 25 or the press articles/advertisements in Item 32) clearly show that the place of use is, at least, Greece. This can be inferred from the language of the documents, the currency and/or the addresses of customers located in this Member State.

Therefore, it is considered that the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use and that it relates to the relevant territory.

Nature of use: use as a trade mark and use of the mark as registered

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.

It is clear from the body of evidence before the Cancellation Division (in particular from a corroborated interpretation of some of the invoices with the catalogues as well as from the press articles/advertisements) that goods bearing the contested EUTM have been put on the market, and therefore, a clear link is established between the use of the mark and some of the registered goods.

‘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 documents on file show use of the contested EUTM as registered or in a broadly equivalent form (see above under the listing of the evidence of use). The addition in some instances of verbal elements, for instance the word ‘collectible’ (see Item 24) does not alter the distinctive character of the mark, since these are placed in a secondary position in the sign and moreover they merely indicate that the goods are items valued and sought by collectors/part of the Go Greek collectible series.

Therefore, it is considered that, in the context of the evidence as a whole, the documents submitted do show that the contested EUTM was used in such a way as to establish a clear link between some of the registered goods and the EUTM proprietor (through its licensees) and in a form which does not alter its distinctive character.

The above however does not hold true as regards the goods listed above under Item 2, as there is insufficient or no evidence on, inter alia, the use of the contested EUTM as a trade mark.

The invoices under Item 2 display at the top the name/address of the licensee and the signs and , while the goods themselves are identified through a code and a description, without any mention of the contested EUTM. As the applicant correctly pointed out, the mere depiction of the ‘Go Greek’ sign at the top of the invoices, without a clear reference to specific products is not sufficient in supporting a conclusion that the goods themselves are identified and offered on the market under the contested EUTM.

In this regard, the EUTM proprietor argued that the invoices in Item 2 have to be interpreted in conjunction with the documents in Items 6 and 8.

It is admittedly true that some of the invoices in Item 2 show, among the goods sold, olive oil PDO Kalamata, nut mixes for Italian/Mexican/Greek salad, jar pistachio, ground dried oregano, Greek oregano, Kythira salt in shaker and coffee. Item 6 contains photographs of, inter alia, Kalamata PDO extra virgin olive oil, fleur de sel from Mani, wild herb seasoning, wild oregano and thimari herbs, fine ground Greek coffee, premium espresso coffee, Greek/Italian/Mexican salad nut mix and Greek roasted pistachios. Moreover, Item 8 includes product labels for, among other goods, Kalamata PDO extra virgin olive oil, fleur de sel from Mani, wild herb seasoning, pure sea salt from Kythira, wild oregano & thimari herbs and mountain oregano (all displaying the mention that the goods were packed for 2S foods, Athens).

However, not even a corroborated analysis of these documents with the invoices in Item 2 can be considered conclusive, in the absence of further evidence, in supporting genuine use of the mark in relation to the goods concerned. There are no product codes and/or other indications in the photographs and labels (or in the remaining items of evidence, for that matter) that could be traced back in the invoices so that it can be concluded with the required degree of certainty that the goods sold were actually identified with the contested EUTM. Even if in some cases the description of the goods in the invoices appears to be the same or almost the same as the one shown by the photographs and/or the labels (for example for olive oil and nut mixes for Italian/Mexican/Greek salad) this is not the case for the remaining goods. For example, coffee appears in Item 2 among the goods sold in one invoice of 18/03/2015 and it is described as sassi espresso gold 1kg and sassi espresso silver 500 gr. However, the photographs of coffee in Item 6 show the contested EUTM on fine ground Greek coffee, 180 gr and respectively on premium espresso coffee, 250 gr. Pistachio appears in Item 2 described as jar pistachio, 58 gr, whereas the photograph in Item 6 shows the EUTM applied not on a jar, but on a bag of Greek roasted pistachio, 150 gr. The same is valid as regards oregano, which is described in one invoice of 21/10/2015 as ground dried oregano, and in another (of the same date) as Greek oregano while the photograph in Item 6 shows the EUTM on wild oregano & thimari herbs, 50 gr. On a further note, it must also be mentioned that for the remaining goods shown in the invoices in Item 2 (for instance the dried fruits, peanuts jar or sultanas/sultaninas Crete) the EUTM proprietor did not make available any evidence whatsoever.

All of these facts raise further doubts as to the veracity of the proprietor’s claims, which the latter was not able to dispel. Indeed, in his final observations of 08/08/2019 and in reply to the applicant’s criticism, the proprietor limited himself to stating that the invoices in Item 2 prove the use of the mark, without making available any further documents in support thereof.

Therefore, and in the absence of reliable and conclusive evidence showing that the goods mentioned in the invoices in Item 2 (nut mixes for Mediterranean/Italian/Mexican/Greek salad, jar pistachio, nuts (pine seeds, walnuts, caseous), peanuts jar, olive oil PDO Kalamata, jar caseous, jar mixes nuts, jar mixes (caseous raw), ground dried oregano, Greek oregano, Kythira salt in shaker, sultanas/sultaninas Crete, coffee, mix nuts and dried fruits) were actually put on the market under the contested EUTM, no genuine use can be acknowledged for them.

Extent of use and nature of use: use in relation to the registered goods

Concerning 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).

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).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

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 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.

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proves genuine use for the contested goods for which the EUTM is registered (nature of use: use in relation to the registered goods).

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.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

Registered goods in Class 21

The documents on file (particularly, the invoices in Item 16 and the list of sales in Item 22) show use of the contested EUTM for mugs.

The Cancellation Division agrees with the applicant that the volume of sales is low; nonetheless, the evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. It is clear from the entire body of evidence that the EUTM proprietor’s activity revolves around marketing under the contested EUTM of goods (olive oil, mugs, ouzo and other touristic items - coasters, key-chains, backgammon, magnetic bookmarks, playing cards, fabric tote bags and pocket mirrors) aimed at promoting the Greek culture through highly aesthetic design. It is not expected from the EUTM proprietor to prove that for every single item in the catalogues/flyers significant quantities were sold. The Cancellation Division is satisfied to establish by corroborating the invoices in Item 16 and the list of sales in Item 22 with the catalogues in Item 25 and the flyer in Item 23 as well as with the press articles in Item 32 that the proprietor has seriously tried to acquire a commercial position in the relevant market and to consider, based on them, that the turnover figures disclosed in the statement in Item 12 are not improbable.

Furthermore, it is recalled that one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes and the obligation to produce evidence of genuine use of an earlier trade mark is not designed to monitor the commercial strategy of an undertaking or its commercial success. In the present case, as the numbers of the invoices are not consecutive, this allows for the inference that these documents are just examples of sales. Against this background, the Cancellation Division is of the opinion that in the present case, when assessing the evidence as a whole, it must be considered that the materials submitted are sufficient to show that the EUTM proprietor has seriously tried to maintain or create a commercial position in the relevant market and that there is sufficient information concerning the commercial volume, the duration, and the frequency of use as regards mugs.

The EUTM is registered in Class 21 for, inter alia, the broad categories of glassware, porcelain and earthenware not included in other classes, which cover, in addition to mugs, many other types of goods. On the other hand, the evidence shows use only for very specific goods mentioned above. This raises the question of whether the submitted evidence is to be regarded strictly as proof of use only for the particular goods, which are not mentioned as such in the list of goods, or for the broad categories of glassware, porcelain and earthenware not included in other classes as specified in the registration. In the present case, the Cancellation Division does not deem that use for, essentially, one type of goods is sufficient to secure use for the broad categories of the registered glassware, porcelain and earthenware not included in other classes respectively, even when taking into account the principles arising from the above quoted ‘Aladin’ judgment. Therefore, it is concluded that genuine use was shown only for mugs in Class 21.

The proprietor submitted in Item 7 two undated photographs showing wooden kitchen utensils and respectively coffee/sugar/tea containers bearing the contested EUTM. There is, however, no further evidence that such goods were actually put on the market and, more importantly, to what extent. As regards the remaining registered goods, there is no evidence in terms of nature and/or extent of use. Against this background, the EUTM proprietor’s rights must be revoked for all the registered goods in Class 21, with the exception of mugs.

Registered goods in Class 29

The documents on file (especially the invoices in Item 16 in conjunction with the catalogues in Item 25 and the press articles in Item 32) show use of the contested EUTM for Mr & Mrs Farmer olive oil. While olive oil may not be an expensive product in Greece, as the applicant contends, the Cancellation Division cannot share the latter’s view that the quantities of goods sold are too low for the use to be deemed as genuine.

Along similar lines of reasoning as explained above for mugs, the EUTM proprietor has to demonstrate that he has seriously tried to acquire and maintain a position in the relevant market for the products concerned and not his commercial success. There is no reason to doubt that this is the case here, even if the quantities sold may not be significant. In addition to evidence of actual sales, the proprietor made available press articles/advertisements which show the media coverage for the goods and that the use was public and the sign was exposed to the public with the aim of creating a market for the products concerned. Moreover, the documents in Items 13 and 15 evidence the awards received for the label of the product.

The contested EUTM is registered in this class for, inter alia, edible oils. Taking into account the evidence of use filed by the EUTM proprietor and bearing in mind that the EUTM proprietor is not required to prove use of all the conceivable variations of the category of goods and also the principles set out in the above mentioned Aladin judgement and in particular the legitimate interest of the proprietor in being able in the future to extend his range of goods, within the confines of the terms describing the goods for which the trade mark was registered, the Cancellation Division deems that genuine use of the trade mark must be established for edible oils in Class 29.

As regards the remaining registered goods, there is either no evidence of use at all (for example for eggs, fish, compotes, edible fats or game) or the evidence is clearly insufficient in terms of extent and/or nature. The Cancellation Division has already explained above when discussing ‘the nature of use: use as a trade mark’ why genuine use cannot be acknowledged for the goods listed under Item 2, which cover, inter alia, goods that pertain to this class (such as nuts or dried fruits). Reference is made to those findings.

The proprietor also submitted some undated pictures/flyers showing the EUTM in relation to some other goods which are covered by the registered goods in this class (meat and milk products or olives in olive oil). There is however no further evidence that such goods were actually put on the market and, more importantly, to what extent.

Against this background the proprietor’s rights must be revoked for all the registered goods in this class, with the exception of edible oils.

Registered goods in Class 30

As regards the registered goods in this class, there is either no evidence at all (for example for tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour, bread, pastry and confectionery, ices, baking powder, treacle, yeast or mustard) or the evidence is clearly insufficient in terms of extent and/or nature.

Reference is made to the above findings of the Cancellation Division as regards the goods in the invoices in Item 2 (coffee, salt and the herbs that could be used as condiments/spices) and the reasons for which the evidence on file is not sufficient for allowing a conclusion of genuine use. The proprietor also submitted some undated pictures and some product labels showing the EUTM in relation to some other goods which are covered by the registered goods in this class (honey or honeygar condiment). There is however no further evidence that such goods were actually put on the market and, more importantly, to what extent.

The contested EUTM must therefore be revoked for all the registered goods in this class.

For the sake of completeness, it is noted that part of the evidence shows that the proprietor (through its licensees) marketed/provided under the sign ‘Go Greek’ ouzo, coasters, key-chains, backgammon, magnetic bookmarks, playing cards, fabric tote bags and pocket mirrors. However, and as the applicant correctly pointed out, these goods belong to other classes that those covered by the contested EUTM.

It remains necessary to consider the EUTM proprietor’s arguments that he had proper reasons for not using the contested EUTM.

Reasons for non-use

In accordance with Article 58(1)(a) EUTMR, the EUTM proprietor may either prove genuine use of the contested EUTM or prove that there are justifiable reasons for non-use. These reasons cover circumstances arising independently of the EUTM proprietor’s will which prevent use of the contested EUTM.

The EUTM proprietor went to great lengths to argue that the application for revocation has to be rejected in its entirety since there are proper reasons for the non-use of the contested EUTM. As already shown above under the Summary of the Parties’ Arguments section, the proprietor essentially relies upon the national economic crisis in Greece. In support of his claims, he filed several press articles (Item 33) which report on the Greek economic crisis, the austerity programs and capital controls imposed on the Greek economy.

In this regard, the Cancellation Division endorses the applicant’s arguments and references to case-law that the concept of proper reasons must be considered to refer to circumstances arising independently of the will of the owner that make use of the mark impossible or unreasonable, rather than to circumstances associated with commercial difficulties it is experiencing (14/05/0008, R 855/2007-4, PAN AM, § 27; 09/07/2003, T-156/01, Giorgio Aire, EU:T:2003:198, § 41; 18/03/2015, T-250/13, SMART WATER, EU:T:2015:160, § 67-69). As such, financial difficulties encountered by a company as a result of an economic recession or due to its own financial problems are not considered to constitute proper reasons for non-use within the meaning of Article 58(1)(a) EUTMR, as these kinds of difficulties constitute a natural part of running a business.

In the present case, the proprietor limited himself to resorting to summaries of the press articles in Item 33 and to general statements, without providing any specific, convincing and/or credible arguments (backed up by relevant supporting evidence) as to how the economic situation in Greece had a direct relationship with the mark so that the use in relation to the registered goods would have been unreasonable. Or which were the specific changes in his commercial strategy that he would have to make in order to circumvent the obstacle under consideration and how these would make use of the mark unreasonable.

The declaration in Item 3 is not of such a nature as to lead to a different conclusion. The document contains statements from the licensee (our clients showed great interest for all our products, but we, given that the number of products we were called to produce and distribute was very large, we decided to prioritize ‘shelf products’ and leave products whose production and distribution required a cold chain – i.e. cheese, yoghurt, ice-cream, cured meat, frozen convenience meals – and significant investments in infrastructure for the coming year; when eventually in 2015 we tried to produce and promote dairy products – i.e. cheese, ice-cream and yoghurt and frozen convenience meals, we came face to face with big problems, since by that time the Greek market and economy were practically dying and the capital controls on 29/06/2015, when the banks completely closed, brought us face to face with a total lack of both liquidity and a future of unprecedented things) are not backed up by any reliable evidence. Moreover, they appear to speak more in favour of the applicant’s argument that the proprietor seems to have followed a specific business plan and to have chosen to invest in producing, marketing and promoting certain goods. On a further note, the Cancellation Division also points out that the economic crisis invoked does not seem to have impeded the proprietor to set-up in November 2014 a company in the UK and to establish a branch in Athens.

Against this background, the Cancellation Division does not find the arguments and evidence submitted by the EUTM proprietor as sufficient in demonstrating that the latter had proper reasons for not using the contested EUTM.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the registered goods in Class 21, except for mugs, for any of the registered goods in Class 29, except for edible oils and for any of the registered goods in Class 30. Moreover, as shown above, the proprietor failed to demonstrate that there were proper reasons for non-use of the contested EUTM for these goods. Therefore, the mark must be revoked.

The EUTM proprietor has proven genuine use for mugs in Class 21 and edible oils in Class 29 only; 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 13/04/2018.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Ioana MOISESCU

Oana-Alina STURZA

Michaela SIMANDLOVA

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.