CANCELLATION No 15 274 C (REVOCATION)

Hikari Miso Co. Ltd., 4848-1 Simosuwa-machi, Suwa-gun, Nagano-ken, Japan (applicant), represented by Urquhart-Dykes & Lord LLP, Euston House, 24 Eversholt Street, London NW1 1AD, United Kingdom (professional representative).

a g a i n s t

JFC International (Europe) GmbH, Theodorstr. 293, 40472 Düsseldorf, Germany (EUTM proprietor), represented by Lenzing Gerber Stute Partnerschaftsgesellschaft von Patentanwälten m.b.B., Bahnstraße 9, 40212 Düsseldorf, Germany (professional representative).

On 04/08/2021, 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 10 585 701 are revoked as from 21/07/2017 for some of the contested goods, namely:

Class 29: Meat, fish, poultry and game; Meat extracts; Snacks; Preserved, dried, and cooked fruits and vegetables; Nuts (prepared); Jellies, jams and fruit purees; Eggs, milk and milk products; Edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, tapioca, sago, artificial coffee; Noodles; Flour and preparations made from cereals, bread, pastry and confectionery, biscuits, ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 31: Agricultural, horticultural and forestry products and grains, not included in other classes; Live animals; Fresh fruits and vegetables; Seeds, natural plants and flowers; Foodstuffs for animals, malt; Nuts.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 33: Wine, rice wine, alcoholic beverages.

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

Class 30: Rice.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 585 701 ‘MEGUMI’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely

Class 29: Meat, fish, poultry and game; Meat extracts; Snacks; Preserved, dried, and cooked fruits and vegetables; Nuts (prepared); Jellies, jams and fruit purees; Eggs, milk and milk products; Edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Noodles; Flour and preparations made from cereals, bread, pastry and confectionery, biscuits, ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 31: Agricultural, horticultural and forestry products and grains, not included in other classes; Live animals; Fresh fruits and vegetables; Seeds, natural plants and flowers; Foodstuffs for animals, malt; Nuts.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 33: Wine, rice wine, alcoholic beverages.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 21/07/2017 claiming that the EUTM proprietor has not put its European Union trade mark to genuine use for a continuous period of five years in relation to the goods for which it is registered.

The EUTM proprietor filed observations and evidence of use (Annex 1 to Annex 7, listed below). It argues that the contested trade mark has been used genuinely during the relevant time period in relation to rice. The revocation application should be dismissed.

The applicant did not file observations in reply.

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 25/06/2012. 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 contested goods listed in the section ‘Reasons’ above.

On 08/12/2017 the EUTM proprietor submitted evidence as proof of use.

The evidence consists of the following:

• Annex 1: Label for ‘MEGUMI’ rice, including information in several languages, names and addresses of JFC Group companies in Germany, the UK, Austria and France.

• Annex 2: Invoice dated 31/08/2012 issued by a Japanese company and addressed to the EUTM proprietor in relation to the creating and printing of ‘MEGUMI’ rice labels and packaging.

• Annex 3: Invoice dated 20/05/2016, issued by an Italian company and addressed to the EUTM proprietor. The invoice itemizes a large amount (in kilograms) of ‘MEGUMI’ rice. The EUTM proprietor explains that it sells Japanese and Asian food throughout Europe and that ‘MEGUMI’ is its rice brand. The rice sold under the trade mark ‘MEGUMI’ has been and is grown in Italy.

• Annex 4: Certificate by BioAgriCert s.r.l. issued to the EUTM proprietor on 09/05/2016 showing the certification of its rice as an organic product.

• Annex 5: Advertising leaflet for ‘MEGUMI’ rice. It is mentioned, inter alia, that the premium short grain rice is produced in northern Italy and that it is a EU-made new breed of Koshihikari rice. The leaflet is in German, English and French and also shows the names and addresses of JFC Group distributor companies in Germany, the UK, Austria and France.

• Annex 6: Table with sales figures of ‘MEGUMI’ rice (in units of 5kg or 20kg) for 2013, 2014, 2015 and 2016 for the UK, France and Germany.

• Annex 7: Selection of partially redacted invoices dated throughout 2016 and 2017, namely between June 2016 and March 2017. The invoices are issued by the EUTM proprietor and are addressed to different customers located throughout Germany. The invoices itemize the sale of various goods, including ‘MEGUMI’ rice.

Assessment of genuine use – factors

Time of use

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

All the evidence is dated in, or can safely be attributed to refer to use within the relevant period of time.

Regarding duration of use, it is important to remember that only trade marks whose genuine use was interrupted for a continuous period of five years are subject to the sanctions provided for in Article 18(1) EUTMR. Therefore, it is sufficient for avoiding these sanctions that a trade mark was genuinely used for only part of this period (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52 and 09/07/2009, R 623/2008‑4, Walzer Traum (fig.) / Walzertraum (fig.), § 28).

The Cancellation Division, therefore, considers that the requirements in this respect have been met and there are 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 evidence shows that the place of use is at least several different countries in the European Union (e.g. the United Kingdom, France, Austria and Germany). This can be inferred from the language of the documents, the currency and addresses (of distributors in the leaflet and label, client’s numbers and locations in the invoices). Therefore, the evidence relates to the relevant territory.

Nature of use: use as a trade mark

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.

In the present case, the evidence shows that the contested EUTM was used as a trade mark. The evidence filed by the EUTM proprietor shows a link between the goods in question and the use of the mark and that the EUTM was used in accordance with its essential function, which is to guarantee the commercial origin of the goods for which it is registered.

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 European Union trade mark.

In the present case, the registered mark is the word mark ‘MEGUMI’ and the EUTM proprietor uses it written in standard uppercase letters. Therefore, the evidence shows that the mark has been 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).

Furthermore, it must be recalled that 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.

Moreover, use of the mark need not be quantitatively significant for it to be deemed genuine.

The Cancellation Division is of the opinion that for part of the contested goods for which the contested mark is registered, the evidence (especially the invoices, but also the sales figures as well as the remaining evidence) gives sufficient information regarding the extent of use of the mark. The evidence shows that the EUTM proprietor has offered and/or sold its goods regularly, in several member states and to different consumers. Even though the quantity of goods evidenced in the invoices on file is not high, it must be recalled that the EUTM proprietor is not under the obligation to submit detailed financial information, since the obligation incumbent to produce evidence of genuine use of an earlier trade mark is not designed to monitor the commercial strategy of an undertaking (08/07/2004, T-334/01, ‘Hipoviton’, EU:T:2004:223). In this case, account is taken of the fact that the numbers of the invoices are rather far apart and that they are addressed to clients with different client numbers and residing in different locations in Germany, which allows for the inference that these documents are just examples of sales. Furthermore, as already mentioned, the evidence relates to several member states.

Taking all these facts revealed by the evidence in its entirety and in combination with each other, the Cancellation Division finds that the mark was used publicly and outwardly for the purpose of ensuring an outlet for the goods which it represents. As mentioned above, the purpose of Article 58(1)(a) EUTMR is not to assess the commercial success of the goods marketed under the EUTM.

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.

The contested EUTM is registered for goods in Classes 29, 30, 31, 32 and 33. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the contested 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.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 30: Rice.

In relation to all the remaining goods, the EUTM proprietor did not submit any evidence of use, arguments or any proper reasons for non-use of the contested EUTM. Therefore, the Cancellation Division declares the EUTM to be revoked for the remaining goods for which it is registered.

Overall assessment

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 for the relevant factors time, place, extent and nature of use for some of the contested goods in Class 30 for which the mark is currently registered, namely: rice.

Therefore, the EU trade mark remains registered for the abovementioned goods and the application for revocation is not successful in this respect.

However, the evidence submitted is insufficient to prove genuine use of the contested EUTM in relation to the remaining contested goods, for which it must, therefore, be revoked.

Conclusion

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

Class 29: Meat, fish, poultry and game; Meat extracts; Snacks; Preserved, dried, and cooked fruits and vegetables; Nuts (prepared); Jellies, jams and fruit purees; Eggs, milk and milk products; Edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, tapioca, sago, artificial coffee; Noodles; Flour and preparations made from cereals, bread, pastry and confectionery, biscuits, ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 31: Agricultural, horticultural and forestry products and grains, not included in other classes; Live animals; Fresh fruits and vegetables; Seeds, natural plants and flowers; Foodstuffs for animals, malt; Nuts.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 33: Wine, rice wine, alcoholic beverages.

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.

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

Plamen IVANOV

Liliya YORDANOVA

Boyana NAYDENOVA

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.