CANCELLATION No 18 281 C (REVOCATION)

Beiersdorf AG, Unnastr. 48, 20253 Hamburg, Germany (applicant), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Diffulice Sàrl, Place Chauderon 18, 1003 Lausanne, Switzerland (EUTM proprietor), represented by Jones Day, 2, rue Saint Florentin, 75001 Paris, France (professional representative).

On 19/06/2020 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 10 599 017 are revoked as from 07/12/2017 for some of the contested goods and services, namely:

Class 3: Soaps; Parfum; Perfumery products; Essentials oils; Hair lotions; Dentifrices; Cosmetics; Cosmetic preparations for depilation; Nail care preparations, except for nail varnish.

Class 8: Depilation appliances, electric and non-electric, Hair removing tweezers, Nail nippers and Nail files, Electric and non-electric nail clippers.

Class 44: Hygienic and beauty care for human beings, except for nail care services; Beauty salons, except for manicure salons; Hairdressing salons; Massage.

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

Class 3: Nail varnish.

Class 44: Nail care services; manicure salons.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 599 017 (the EUTM) for the figurative sign shown below:

The request is directed against all the goods and services covered by the EUTM, namely:

Class 3: Soaps; Parfum; Perfumery products; Essentials oils; Hair lotions; Dentifrices; Cosmetics; Cosmetic preparations for depilation; Nail care preparations.

Class 8: Depilation appliances, electric and non-electric, Hair removing tweezers, Nail nippers and Nail files, Electric and non-electric nail clippers.

Class 44: Hygienic and beauty care for human beings; Beauty salons; Hairdressing salons; Massage.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant argues that the contested EUTM has not been put to a genuine use for a continuous period of five years. In reply to the evidence of use submitted by the EUTM proprietor, the applicant argues that it does not show genuine use. In particular, it argues that there is no evidence of use for any of the goods in Class 3 except for nail polish bearing the sign in some images but there is no evidence of any actual sales of these goods. It states that it does not see any references to goods under the sign in the purchase orders or invoices. The applicant further argues that if the Cancellation Division does hold that use has been shown for nail vanish then a sub-category of nail care preparations should be established and defined as nail varnish. The applicant states that no evidence of Class 8 goods has been submitted and as such the EUTM must be revoked for the entire class. Finally, in relation to Class 44 the applicant claims that at best the EUTM proprietor has shown use for the sub-category of manicure services; nail care salons but its rights should be revoked for all other services.

The applicant, in reply to the second set of evidence submitted by the EUTM proprietor confirms its previous arguments. It also contests the EUTM proprietor’s argument that as goods bearing different marks were sold on the same shelves as, or next to, products that did bear the EUTM it shows use of the sign for those products. It further rejects the EUTM proprietor’s argument that use for nail varnishes could show use of the broad category of cosmetics and the references in the evidence to nail care or hand care products is insufficient to prove genuine use and the invoices do not reference the EUTM. It further contests the arguments of the EUTM proprietor in relation to the aforementioned goods as the proprietor initially states in its observations that the reference in the invoices to goods bearing the sign is ‘NM’ but then names some goods which bear different references such as ‘BMC’ and which are marketed under different signs and that the sign is only used in association with such goods or at the same merchandising display. The applicant argues that the purchases of these goods in France are in extremely low quantities and, bearing in mind the nature of the goods concerned, it is insufficient to prove genuine use. Much of the evidence refers to other marks, or does not mention the EUTM. In relation to Class 8, the applicant argues that there is no evidence for any of the goods and that there is only a single image of a scissors and nail clippers set priced at EUR 3.90 and one offer, which it believes was made to franchises to buy a manicure set for promotional purposes to be given out for Christmas presents, but that this does not show any genuine use of the goods. The applicant also insists that there is no use for the services in Class 44 and that one mention of a hand massage in a blog does not show use for massage services. If anything, the applicant argues that use has been shown for manicure services; nail care salons but not for the broader categories of hygienic and beauty care for human beings; beauty services. However, it then argues that the evidence submitted is insufficient to prove actual use of these services as the sign is used as a trade name or shop name rather than a trade mark and proof has not been shown for the actual goods and services. Therefore, it insists that the EUTM must be revoked in its entirety.

The case for the EUTM proprietor

The EUTM proprietor missed the deadline to submit its evidence of use but later requested a continuation of proceedings and submitted evidence of use of its EUTM which will be listed in detail below. Moreover, after receiving the applicant’s arguments the EUTM proprietor submitted further evidence to prove use. It also submitted an index of the Exhibits and an explanation of their relevance. The EUTM proprietor contests the arguments of the applicant. It insists that the evidence shows use of the sign as registered and points out that a change in colour does not alter the distinctive character of the sign, the word and figurative elements coincide and constitute the main distinctive elements; the contrast of shades is respected; the colour or combination of colours does not have distinctive character in itself; and the colour is not one of the main contributors to the overall distinctiveness of the sign. Therefore, it argues that the addition or removal of figurative elements does not alter the distinctive element of the mark. Although the sign as used over time underwent some modifications or variations, they did not alter the distinctive character of the sign as registered.

It argues that the first set of evidence shows sales of nail care products to its franchises in Germany and Luxembourg. It now submits further invoices to its franchises in France and all of the invoices are dated within the relevant period. It states that the goods sold include nail polishes and removers with the code ‘NM’ (nail minute abbreviation) or ‘SOS Mains & Ongles nail care products under the reference ‘BMC’. The EUTM proprietor points out that ‘Nail Minute’ is mentioned in the purchase orders and their references are clear on the invoices under ‘NM’. It argues that there is other evidence of the advertising of these nail products and the evidence overall shows use of these goods. Moreover, the EUTM proprietor argues that the broad category of nail care preparations has been proven as it has shown products like ‘soothing base (base égalisante)’ or ‘top coat’ in the evidence as well as for hand and nail care products under ‘SOS Mains & Ongles’ as well as polish, top coats and soothing base and that they are all exhibited and sold together in the points of sale. It also claims that the evidence in relation to these goods can also show use for the goods cosmetics. The evidence in relation to the other products in Class 3 and those in Class 8 show that these goods are exhibited on the same product display next to the products bearing the EUTM and in the same points of sale and these products are directly related to nail polish and nail care products and this also shows genuine use. The manicure set, it argues, is offered for sale or as part of promotional offers regularly.

The EUTM proprietor also insists that it has carried out the services in Class 44 under the contested sign. It claims that use of the sign for services can be on business papers, in advertising or in some other way directly or indirectly related to the services and the use its shown is valid. It argues that nail care services and manicure salons belong to the category of beauty care and beauty salons so it shows use for these services. Furthermore, the ‘Body Minute’ network has beauty and hairdressing services and the ‘Nail Minute’ is part of that network and have an immediate connection and thus show use of these services also. Moreover, the customers can buy a multi-care pass card for nail, hair and body care services. The nail care services also include a massage as it shows from an extract from a blog in France. Therefore, it concludes that it has shown use for all of the contested goods and services and the application must be rejected in its entirety.

After submitting another continuation of proceedings request the EUTM proprietor submitted its final submissions in which it strongly contests the applicant’s arguments. It also confirms and expands its previous arguments. It insists that the ‘NM’ code identifies the ‘Nail Minute’ goods and that other goods bear this and another sign ‘Hand Minute’ but they still show use of the sign but have a different reference. The EUTM proprietor states that it sells to independent franchises and this shows genuine sales. Most of the evidence is dated within the relevant time period and it is sufficient to show use. The sign has been advertised intensely and there have been many seminars for the franchisors. It argues that there is extensive evidence of the ‘Nail Minute’ beauty institutes. It repeats many of its arguments and insists that it has proven use for all of the contested goods and services.

Preliminary remark

Initially the EUTM proprietor was provided with a deadline of 24/02/2018 in which to submit the evidence of use of the EUTM. This deadline was later extended to 24/04/2018. The EUTM proprietor did not submit any evidence in response to the application. Therefore, on 24/05/2018 the Office notified a decision to revoke the EUTM in its entirety to both parties. However, on 19/06/2018 the EUTM proprietor submitted the evidence of use of the EUTM and on 22/06/2018 the EUTM proprietor submitted a request for a continuation of the proceedings and duly paid the required fee. On 23/07/2018 the Office notified the parties that the request for a continuation of the proceedings had been accepted and forwarded the evidence of use to the applicant for its comments. Therefore, the evidence of use is accepted as having been filed on time.

The applicant argued that when the EUTM proprietor submitted the evidence initially, there was no index or description of the evidence provided. However, in response to this argument the EUTM proprietor submitted an index and description of the evidence, and the applicant has had the opportunity to further comment on the evidence having received said information. Therefore, this argument can be set aside.

It is further noted that the EUTM proprietor had another deadline of 27/07/2019 in which to submit further observations which was later extended until 27/09/2019. However, it did not reply within the relevant time limit so on 07/10/2019 the Office closed the adversarial part of the proceedings. On 26/11/2019 the EUTM submitted new observations and on 27/11/2019 it submitted a request for a continuation of proceedings which was accepted by the Office on 10/02/2020 and the observations were accepted and forwarded to the applicant who had the possibility to comment thereon. Therefore, these observations are taken into consideration in the present proceedings as they were deemed to be filed on time.

GROUNDS FOR THE DECISION

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37, 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use.

In the present case, the EUTM was registered on 07/06/2012. The revocation request was filed on 07/12/2017. 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 07/12/2012 to 06/12/2017 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 19/06/2018 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Exhibit 1: Presentation of the umbrella and guarantee mark Body’minute in which the Challenged Mark is mentioned as a sub-brand.

• Exhibit 2: Sales Volumes information, comprising of an affidavit signed by the General Director of JCDA (company which is the franchisor of the BODY MINUTE network) relating to the volume of sales of products under the Challenged Mark to BODY MINUTE franchisees from 2014 to 2017 and a certificate signed on 11/06/2018 by the JCDA’s auditor Ernst & Young attesting to the accuracy of the amounts indicated in the above-mentioned affidavit. It also submits a table indicating the number of subscription cards subscribed by consumers. This table makes this inventory by distinguishing three subscription cards (“cartebody”, “cartemultipass” and “cartenail”) in the different institutes on the French territory and the years of subscription (from 2013 to 2018).

• Exhibit 3: Network information which consists of pre-contractual information documents describing the BODY MINUTE institutes franchise network, in Belgium, France, Germany, Luxembourg and Portugal between 2012 and 2016. Each pre-contractual information document describes, in particular, the concept of beauty institutes BODY MINUTE in relation to which the contested sign is intended to be used, and lists all the BODY MINUTE institutes existing in the relevant year in France and abroad, with an indication of their addresses.

• Exhibit 4: 4.1: Advertising / Promotion information which consists of extracts from well-known general-audience magazines (such as “Glamour”, “Voici”, “Public” and others) and from online websites promoting and advertising nail care products and services under the contested sign between 2013 and 2017.

• 4.2: Network Communication which consists of:

i. communication budgets for 2012 – 2016 specifying amounts spent by the BODY MINUTE franchisor (JCDA) on the advertising, promotion and communication related to the products and services offered in BODY MINUTE institutes, including cosmetics and cosmetic preparations for depilation bearing the contested sign, in particular via press publications, promotional leaflets and posters, SMS, web, TV and radio;

• ii. a brochure dated March 2013 presenting nail polish products bearing the contested sign and photographs of the franchise exhibition showing a NAIL’ MINUTE display.

• 4.3: Network Seminars. It contains two presentation documents distributed at the occasion of the national seminars organized by the BODY MINUTE franchisor (JCDA) for its franchisees in Paris (France) in 2015 and 2017 regarding the evolution of the packaging of beauty, depilation and nail care products bearing the contested sign, as well as the marketing strategy to promote said products.

• Exhibit 5: Designs. It contains one promotional document dated 2013 for nail polishes bearing the contested sign and a promotional offer of a nail polish bag and numerous screenshots from the BODY MINUTE website for different years obtained via WayBack Machine) dated between 2013-2017 presenting a range of nail polishes and manicure kits (nail clippers, nail scissors) which are promoted on its website. It also contains subscription cards bearing the sign and photographs of outdoor and indoor displays of the sign in France.

• Exhibit 6: Purchase Orders/ Invoices: It contains examples of purchase order templates and invoices dated 2013-2017 and related to the purchase, by BODY MINUTE franchisees in France, Germany and Luxembourg of nail care preparations offered under the contested sign and it states that they were purchased by the franchises for resale to their clients.

In response to the applicant’s arguments the EUTM proprietor then submitted further evidence on 22/01/2019 which consists of the following:

• Exhibit 7: Not applicable for this application.

• Exhibit 8: Communications sent by the franchisor to franchisees in relation to the promotion and commercialization of its products and services which consists of emails, informative documents and promotional materials dated from 2010 to 2017 in relation to nail care preparations, beauty and manicure services.

• Exhibit 9 : Emails sent by franchisees to the franchisor to provide photographs of

their BODY MINUTE and NAIL’ MINUTE institutes and products in 2015, 2016 and 2017 and promotional materials related to such products.

• Exhibit 10 : Attendance sheets for national seminars organized by the franchisor for its franchisees in 2015 and 2017.

• Exhibit 11: Invoices relating to the purchase of products bearing the challenged

mark by franchisees located in France in relation to nail care preparations, some of which refer to ‘NAIL’ MINUTE’.

• Exhibit 12: Affidavit signed on 18/01/2019 by the General Director of the franchisor to attest the accuracy of the amounts indicated in the communication budgets for 2012-2017 mentioned in the observations.

• Exhibit 13: Not applicable for this application.

• Exhibit 14: Pre-contractual information document 2017 describing the BODY MINUTE institutes franchise network in 2017, including institutes in France and in Luxembourg.

Preliminary remarks

Additional evidence

On 22/01/2019, after the expiry of the time limit, the EUTM proprietor submitted additional evidence.

In this regard, the Cancellation Division considers that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

The 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, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

The additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

The Cancellation Division notes that the applicant had the possibility of commenting on the evidence submitted on 22/01/2019.

Therefore, for the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division decides to take into account the additional evidence submitted on 22/01/2019.

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 of the evidence is dated within the relevant period. 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 purchase orders/invoices, franchise contracts, advertisements and network information show that the place of use is Belgium, France, Germany, Luxembourg and Portugal. This can be inferred from the language of the documents (French, English), the currency mentioned (EUR) and some addresses in Belgium, France, Germany, Luxembourg and Portugal. 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.

The evidence shows use of the EUTM as a sign to indicate the commercial origin of the goods. Therefore, the evidence contains sufficient indications of the use of the sign as a trade mark.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The contested sign as registered is a figurative sign as shown below:

However, the evidence of use shows many different versions of the sign such as the following:

1. 2)

3) 4)

5) 6) 7) 8) Nail’minute

9) 10)

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

It is appropriate to consider whether the form in which the contested trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the contested EUTM have the same distinctive character. First, the distinctive character of the contested EUTM must be clarified. Then, it must be considered whether or not the mark as used alters this distinctive character.

Assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the trade mark (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 36).

The sign as registered contains a large white circle outlined in black with the word ‘Nail’ in large standard black title case typeface placed towards the top of the sign and underlined by a thin black line. This word is followed by a stylized straight white apostrophe outlined in black which partially intersects, and is superimposed on top of the circle. Underneath this is the word ‘minute’ depicted in somewhat smaller white standard lower case typeface. The word ‘Nail’ in English refers to ‘a horny covering on the upper surface of the tip of the finger and toe in humans and other primates’ (definition extracted from the Oxford English Online Dictionary on 10/06/2020). In relation to some of the registered goods and services, for example, nail products and related services, this word is descriptive for the English speaking public. However, this word would not be descriptive or lacking distinctiveness in relation to other goods and services which are not related to nails, such as perfumery products, depilation appliances, massage services and therefore, for for the public who will not understand English, it would be normally distinctive.

The word ‘minute’ in English refers to a period of time equal to sixty seconds or a sixtieth of an hour. This word will be understood by nearly all consumers in the EU as either identical words exists in some languages like French or very similar words exists in most EU languages like ‘minuto’ in Spanish and Italian, ‘minuté’ in Lithuanian etc. Therefore, it could be seen as referring to the amount of time it takes to use the product or in which the service will be provided. Therefore, this word on its own also could be descriptive and non-distinctive for most consumers in the EU. Although, it is noted that in some languages, like Hungarian, the corresponding word is very different and therefore, it cannot be ruled out that this word would be meaningless and, as such, distinctive to an average degree for a small part of the consumers in the EU. The applicant argues that the apostrophe represents one minute and reinforces this concept. However, it is noted that the term ‘Nail‘minute’ as a whole does not have any exact meaning and although it can allude to the fact that the goods and services are related to nails and can be done in relatively quick time frame, it is not a clear conceptual unit. Therefore, this term is distinctive to a below average degree for the consumers understanding the terms contained therein and to an average degree for those who will not understand this element.

The circle included in the sign is a basic geometric shape and in itself is non-distinctive and the figurative layout of the mark is not particularly fanciful or original and plays a secondary role within the sign.

Therefore, the most distinctive and dominant element of the contested sign is the verbal element ‘Nail’minute’ which is included in signs Nos 1) – 8) above, the only exception being in sign No 7) above in which the apostrophe is not included but which only appears in pictures of one shop front, while the other signs appear on most of the relevant documentation. Although the black text is striking in contrast to the white background, the contrasts between the white letters on the darker background colour of the circle is still consistent in signs Nos 3), 4) and 6) and the use of different colours on different backgrounds is acceptable, as it serves merely to highlight the sign.

Some of the evidence, like the franchise documents and purchase orders refer to the sign 8) above ‘Nail’minute’ (as a word sign). The distinctive element Nail’minute’ appears completely with only the secondary or non-distinctive elements omitted. Moreover, it is normal that in a word document a figurative sign may be referred to by a word representation only. Furthermore, this evidence cannot be viewed in isolation, but when combined with the product images provided it can be determined that at least for some of the goods being described in these documents the sign as used on the actual packaging does not alter the distinctive character of the sign as registered.

However, signs 9) and 10) concern signs ‘Body’minute’ and ‘Hand’minute’. The evidence submitted by the EUTM proprietor shows that the umbrella brand is ‘Body’minute’ which is used for many of the services and ‘Hand’minute’ is used on hand creams. These signs contain one different word in the place of ‘Nail’, different colours and figurative elements that alter the distinctive character of the sign as registered and as such they cannot show use in relation to the EUTM as registered.

It is noted from the invoices, purchase orders and product details, and especially in the seminar document, that the EUTM proprietor is also using a number of other signs to denote other product lines, for example:

None of these additional signs are being used in combination with the ‘Nail’minute’ sign but are in fact used on different products and cannot show use of the sign as registered for analogous reasons as laid out above in relation to signs 9) and 10).

However, as can be seen above, the evidence of use does show use as registered of signs 1) – 6) and 8) above and as such, the evidence contains sufficient indications of use of the mark as registered or in a form essentially the same as that registered under Article 18 EUTMR.

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 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.

The EUTM proprietor submitted overall promotional figures spent on its brand and a small sample of advertising carried out. However, the figures have not been broken down to show how much was actually spent on the goods marked with the signs 1) – 6) and 8) shown above or whether they also include the products which were marketed under a different sign, like those in signs 9) and 10). However, the EUTM proprietor also submitted purchase orders and invoices which show sales, at least in relation to some of the contested goods and services, and this will be discussed further below in the following section. These sales span the majority of the relevant period, although they are not extremely high.

Although the evidence indicates a somewhat low commercial volume of use, it shows use of the EUTM in several Member States, namely, Belgium, France, Germany, Luxembourg and Portugal and that promotional activities and franchise agreements are in place. Therefore, the EUTM proprietor has provided sufficient indications of the extent of use, at least in relation to some of the goods and services.

Use in relation to the registered goods and services

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

According to 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)

Since consumers are searching primarily for a product or service to meet their specific needs, the purpose of the product or service in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods or services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 29).

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

Class 3: Soaps; Parfum; Perfumery products; Essentials oils; Hair lotions; Dentifrices; Cosmetics; Cosmetic preparations for depilation; Nail care preparations.

Class 8: Depilation appliances, electric and non-electric, Hair removing tweezers, Nail nippers and Nail files, Electric and non-electric nail clippers.

Class 44: Hygienic and beauty care for human beings; Beauty salons; Hairdressing salons; Massage.

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.

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 different types of nail polishes or vanishes. All of these goods fall within the broad category of the following goods: nail care preparations. The EUTM proprietor does not have to show use for every conceivable type of cosmetic that would fall into that category; however, it has only shown this specific type of good. The EUTM proprietor argues that it has shown use for nail polishes, remover, top coats, soothing base coats and hand and nail care products under ‘SOS Mains & Ongles’. However, the Cancellation Division notes that the later goods ‘SOS Mains & Ongles’ are branded under a different sign, namely sign No 10) above ‘Hand’minute’ which alters the distinctive character of the sign as registered and have the code ‘BMC’ and therefore, cannot show genuine use of the registered sign.

The other products have the code ‘NM’ for ‘Nail’minute’. The evidence of use shows different types of nail polishes or varnishes; the fact that they are top coats or base coats does not show use for different goods but that merely they serve to equalise the coat of varnish or allow it to go on smoothly. Although the EUTM proprietor claims to sell nail polish remover, the Cancellation Division has been unable to identify any sales of these goods in the invoices and therefore there is no extent of use in relation to these goods. Therefore, a clear sub-category of goods can be drawn for nail varnish as no evidence for use of the contested sign has been shown for any remaining goods.

The EUTM proprietor argues that nail varnish is a type of cosmetic and that the hand and nail creams are also cosmetics so that use has been shown for the broad category of goods cosmetics. However, firstly it is noted that the hand and nail creams were not branded under the contested sign but under the sign ‘Hand’minute’ which alters the distinctive character of the sign as registered. The fact that the EUTM proprietor has shown use of nail polishes cannot show use of the broad category of goods cosmetics but only the sub-category as defined above, namely, nail varnish. Therefore, these are the only goods for which genuine use has been proven in Class 3.

The EUTM proprietor argues that it sells goods (albeit bearing different signs than the EUTM) on the same Exhibit stands side by side with goods marked with the EUTM sign and in stores where the marks are exhibited together and this shows use in relation to the remaining goods in Class 3. The Cancellation Division cannot agree with this argument as the goods are clearly branded under a different sign and there is no indication that the contested sign is a house brand or umbrella brand but that it is merely placed on nail varnishes in the same store or on the same stand. This cannot show genuine use in relation to the remaining goods bearing other signs than the EUTM. Therefore, this argument must be rejected and the EUTM must be revoked for the remaining goods in this Class.

In relation to Class 8 the EUTM proprietor argues that it sells manicure sets which consists of nail clippers and nail scissors under the EUTM. To this end it submitted an image of the goods and information to show that these goods were being sold as promotional items at Christmas. However, there is no evidence of actual sales of these goods and promotional items cannot show genuine sales of the goods. The EUTM proprietor also argues that these goods are related to and associated with nail varnish and that it is offering electric and non-electric, hair removing tweezers in the same stores and in the same displays. However, as noted before, in the previous paragraph, the fact that goods bearing different trade marks are sold in the same store or side by side or in association with the other goods does not show genuine use of the sign on the registered goods and therefore, this argument must be rejected and the EUTM must be revoked for these goods.

In relation to the services in Class 44 the EUTM proprietor has submitted evidence that it owns a franchise in which many different salons have the right to use its signs. However, the signs used for many of the services themselves is the ‘BODY’MINUTE’ signs as shown under sign 9) above. This sign alters the distinctive character of the sign as registered and as such, it cannot be accepted that use for these services under that sign can show use of the contested EUTM for these contested services. There are a number of photos in which the salons or shops are marked with the figurative sign ‘Nail’minute’ as the store name. The applicant argues that this cannot show use of a trade mark but only as a shop sign. However, a sign cannot be directly applied to services and therefore evidence of use in relation to these services can show use of the sign. In the present case there are a number of photographs of the outside of stores marked with either ‘BODY’MINUTE’ or ‘Nail’minute’ or both to mark two different areas of services. Moreover, the EUTM proprietor has submitted further evidence to show that it is offering nail care and manicure services under the contested sign. The EUTM proprietor argues that this use should be sufficient to prove the general categories of Hygienic and beauty care for human beings; Beauty salons. However, the services shown cover only one type of these services, namely, those related to nails and as such this is insufficient to prove the general categories as mentioned above. Nevertheless, there is sufficient evidence to show the clearly definable categories of nail care services; manicure salons and the applicant also stated that that use was shown for these services, even if it still contested that genuine use had been demonstrated.

The EUTM proprietor further argues that the salons marked with ‘BODY’MINUTE’ offer different corporal and facial treatments and there are hairdressers and other beauty treatments offered in the salons and that passes can be bought for different areas to be used together and they are associated with each other being in the same salons. Again, for similar reasons as already outlined above, this argument must be rejected. Use must be shown under the contested sign in relation to the contested goods and services and therefore, the EUTM proprietor has not shown use for the remaining services in this class but only for the sub-categories of nail care services; manicure salons.

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 a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors of time, place, nature and extent of use only in relation to some of the contested goods and services, namely, the following:

Class 3: Nail varnish.

Class 44: Nail care services; manicure salons.

Conclusion

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 3: Soaps; Parfum; Perfumery products; Essentials oils; Hair lotions; Dentifrices; Cosmetics; Cosmetic preparations for depilation; Nail care preparations, except for nail varnish.

Class 8: Depilation appliances, electric and non-electric, Hair removing tweezers, Nail nippers and Nail files, Electric and non-electric nail clippers.

Class 44: Hygienic and beauty care for human beings, except for nail care services; Beauty salons, except for manicure salons; Hairdressing salons; Massage.

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 07/12/2017.

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 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

Janja FELC

Nicole CLARKE

Ioana MOISESCU

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.