CANCELLATION No 30 683 C (REVOCATION)

About You GmbH, Domstraße 10, 20095 Hamburg, Germany (applicant), represented by Geistwert - Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Linke Wienzeile 4/2/3, 1060 Wien, Austria (professional representative)

a g a i n s t

Safe-1 Immobilieninvest GmbH, Amstettner Straße 34, 3362 Mauer, Austria (EUTM proprietor), represented by Martin Platte, Lothringerstrasse 3/12, 1010 Wien, Austria (professional representative).

On 16/01/2020, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 10 621 101 are revoked in their entirety as from 07/12/2018.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 621 101 ‘MAKES YOU REAL’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 25: Clothing.

Class 41: Entertainment; Sporting and cultural activities.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claimed that the EUTM was not put to genuine use in the European Union for a continuous period of five years in connection with all the goods and services for which it was registered.

The EUTM proprietor submitted evidence of use (listed and assessed below in the decision).

The applicant claimed that its company founded in 2014 and its trade mark ‘ABOUT YOU’ are well known in the entire European online and fashion world since ‘ABOUT YOU’ is one of the largest online fashion retailers in Germany. To support its claims, the applicant submitted some printouts from the following websites: https://corporate.aboutyou.de; https://de.wikipedia.org; https://www.aboutyoupangea-festival.de; https://www.wuv.de. It also stated that negotiations between the parties had failed and national proceedings between the parties are pending (on 30/11/2018); the proprietor filed an infringement action with the commercial court in Vienna against the applicant (these proceedings are suspended until, inter alia, a decision is taken in the present revocation proceedings). To support its claims, the applicant submitted an exchange of correspondence between the parties and the proprietor’s infringement action with the Commercial Court in Vienna.

Regarding the relevant period of time for assessing the evidence of use, it pointed out that according to Article 58(1)(a) EUTMR, the Cancellation Division should not take into account the evidence submitted by the EUTM proprietor after 07/11/2018 since on that date the applicant requested the EUTM proprietor to prove genuine use of the contested mark and therefore the EUTM proprietor was aware that the present request for revocation may be filed. The applicant submitted a copy of its request for proof of use sent on 07/11/2018 to the EUTM proprietor’s representative.

Regarding the evidence of use submitted by the EUTM proprietor, the applicant criticised each piece of evidence individually pointing out for each piece of evidence the missing factors. It further argued that the contested sign ‘MAKES YOU REAL’ is a pure marketing slogan which will not be perceived by the public as a trademark and, in any case, the documents do not refer to the sign ‘MAKES YOU REAL’ but to the sign which does not constitute a valid variation of the contested sign. Likewise, the slogan ‘MAKES Y/O/U REAL’ shown in some documents (exhibits 8, 10, 13) does not constitute a valid use of the contested sign ‘MAKES YOU REAL’.

In relation to the contested goods and services, the applicant considered that there is no use for the goods and services in Classes 25 and 41 except clothing in Class 25. However, in relation to the items of clothing mentioned in the invoices, there is no mention of the sign ‘MAKES YOU REAL’. Even if it was the case, the extent of use is insufficient and the goods shown (jeans, dresses, t-shirts, etc.) constitute independent subcategories and therefore use cannot be considered for the broad category of clothing.

In reply, the EUTM proprietor considered that the evidence submitted shows genuine use of the contested trade mark ‘MAKES YOU REAL’. It pointed out that Article 58(1)(a) EUTMR concerning the commencement or resumption of use within a period of three months preceding the cancellation request does not apply to the present case and therefore the documents dated after 07/11/2018 should be taken into account. The EUTM proprietor considered that the evidence must be assessed in its entirety, bearing in mind the interdependence between the factors to be taken into account. The EUTM proprietor considered that although clothing is a broad market, it cannot be dissected into the subcategories defined by the applicant. Regarding the extent of use, it pointed out that the market concerned is that of high-end, sustainable, eco-friendly and locally sourced clothing and the sales of 1050 items of clothing for EUR 14 640 is sufficient to constitute genuine use. Finally, it pointed out that the affidavit was supported by objective evidence, the contested sign was used as a trade mark and not as a company name and preparations to launch new products, such as advertising campaigns, have to be taken into account when examining genuine use.

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 26/04/2013. The revocation request was filed on 07/12/2018. 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 07/12/2013 to 06/12/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 21/02/2019, within the time limit, the EUTM proprietor submitted the following evidence as proof of use:

• Exhibits 1 and 2: excerpts of the Austrian company register, dated 21/02/2019, in relation to the company ‘Safe-1 Immobilieninvest GmbH’ and ‘Y/O/U Label GmbH’.

• Exhibit 3: affidavit signed by Dr. Philipp Marouschek, CEO of ‘Safe-1 Immobilieninvest GmbH’, dated 21/02/2019. According to the affidavit, the EUTM proprietor is the owner of the mark and its subsidiary ‘Y/O/U Label GmbH’ uses the trade mark with its consent. The trade mark was developed in 2012 in Austria and Germany with the manufacture of eco-friendly clothing. A lot of money was invested in the marketing campaign (billboards, free cards distributed in bars, restaurants, clubs, broadcast of TV-spots on ‘Youtube’ and on the Austrian youth-culture channel ‘GOTV’). Two stores were open in Berlin and Vienna on 13/07/2012 and these openings were preceded by media coverage in local newspapers. Unfortunately, the anticipated success failed to materialise and some adjustments were made in order to find distributors (the shops in Berlin and Vienna were closed in 2013). On 30/12/2013, 170 items of a limited capsule collection were sold to ‘Kleidungsladen’, an online shop focusing on eco-friendly fashion. The products were advertised and resold in local stores in Bavaria and on the website www.kleidungsladen.de. New business opportunities were sought but unfortunately in August 2014 a cooperation agreement with the Austrian company ‘He Brands Agency for Brand Management’ failed. In 2017, it was decided to focus on linen denim and jeans, distributed by third parties. In May 2018, a cooperation agreement was concluded with ‘Napalm Records Handels GmbH’ where ‘Napalm Records Handels GmbH’ would act as distributor and t-shirts would be supplied for their marketing and promotion activities. On 21/11/2018, the EUTM proprietor’s manufacturer (Leinenweberei Vieböck GmbH) sent newly produced linen-denim.

• Exhibit 4: undated leaflet with the sign presenting the concept behind the trade mark (eco-friendly and high quality clothing).

• Exhibit 5: undated designs of t-shirts with the depiction of the above mentioned trade mark.

• Exhibit 6: undated lookbook of clothing, headgear and shoes, with the depiction of the sign .

• Exhibit 7: picture of some skirts bearing an inside tag with the sign .

• Exhibits 8 and 9: two billboards with the sign ‘MAKES Y/O/U REAL’ and billboard placement invoice dated 18/06/2012 (EUR 66 981.60). According to the EUTM proprietor, billboards were used on a big scale in Vienna from 28/06/2012 to 25/07/2012.

• Exhibits 10 and 11: free cards with the sign ‘MAKES Y/O/U REAL’ (same visual as in the billboards in exhibits 8 and 9) and an invoice from ‘Boomerang Media’ dated July 2012 relating to these cards (EUR 2 760). According to the EUTM proprietor, free cards were placed in bars, restaurants and clubs in Vienna from 29/06/2012 to 12/07/2012.

• Exhibit 12: TV-advertisement invoices dated 04/06/2012 and 02/07/2012.

• Exhibits 13-15: press articles in German about the opening of ‘Y/O/U’ stores in Vienna and Berlin (Woman magazine dated 11/07/2012 including a picture with the sign ‘MAKES Y/O/U REAL’ (same as the first billboard in exhibit 8); Die Presse dated 15/07/2012 and Wiener Zeitung Online dated 21/08/2012).

• Exhibit 16: pictures of the opening event of the shops in Vienna and Berlin on 13/07/2012. The sign ‘MAKES Y/O/U REAL’ appears in some advertising materials and the sign is depicted in the t-shirt of a singer.

• Exhibit 17: invoice dated 30/12/2013 issued by the EUTM proprietor to ‘Kleidungsladen’, in Germany, relating to the sales of 170 items of clothing (capsule collection) for the total amount of EUR 12 000 (skirts, dresses, trench coats, jeans blousons were sold). The sign is depicted at the top of the invoice.

• Exhibit 18: usage statistics relating to the website www.you-label.com for the periods July-December 2012, 2013 and 2014.

• Exhibits 19 and 20: e-mail correspondence dated August 2014 with the Austrian company ‘He Brands Agency for Brand Management’ and delivery confirmation sent by the EUTM proprietor to ‘He-Brands’ dated 14/08/2014 relating to a sample delivery of three skirts and two trench coats.

• Exhibit 21: letter, dated 14/01/2017, sent by ‘Leinenweberei Vieböck GmbH’ relating to the manufacture of linen denim.

• Exhibit 22: excerpt of the Austrian company register, dated 21/02/2019, in relation to the company ‘Napalm Records Handels GmbH’.

• Exhibit 23: declaration letter from ‘Napalm Records Handels GmbH’ confirming that ‘Napalm Records Handels GmbH’ and ‘Y/O/U Label GmbH’ had concluded an agreement in May 2018 for the supply of t-shirts and that on 07/05/2018 ‘Napalm Records Handels GmbH’ bought a sample batch of 880 t-shirts for EUR 2 640. It is also mentioned that ‘Napalm Records Handels GmbH’ agreed to act as distributor for Y/O/U Label GmbH’s products’.

• Exhibits 24 and 25: undated picture of a meeting with ‘Napalm Records Handels GmbH’ and picture of a t-shirt sample bearing an inside label with the depiction of the sign . According to the EUTM proprietor, this t-shirt is the same as the ones sold to ‘Napalm Records Handels GmbH’.

• Exhibit 26: invoice sent by the EUTM proprietor to ‘Napalm Records Handels GmbH’ in Austria, dated 03/12/2018, relating to the sales of 880 t-shirts for a total amount of EUR 2 640. The sign is depicted in the invoice.

• Exhibits 27 and 28: undated screenshots from the EUTM proprietor’s new website www.youpster.com where the sign , ‘Y/O/U – YOUR ORIGINAL U!’ and ‘MAKES Y/O/U REAL’ are depicted in relation to clothing and usage statistics for www.youpster.com for November-December 2018.

• Exhibit 29: invoice sent by ‘Leinenweberei Vieböck GmbH’ (manufacturer) to ‘Y/O/U Label GmbH’, dated 21/11/2018, relating to the sales of 36 meters of linen-denim for EUR 1 213.92.

• Exhibit 30: screenshots from the website www.hm.at showing that ‘H&M’ sustainable mass products are much cheaper than the EUTM proprietor’s products manufactured in limited quantities.

Preliminary remarks

According to Article 58(1)(a) EUTMR, commencement or resumption of use within a period of three months preceding the filing of the application and beginning at the earliest on expiry of the continuous period of five years of non-use will be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application may be filed.

In the present case, the applicant argues that the Cancellation Division should not take into account the evidence dated after 07/11/2018 since from that date the EUTM proprietor was aware that the application was going to be filed. However, the provision mentioned above only applies to cases where commencement or resumption (after five years) of genuine use takes place during the three months preceding the filing and not to cases, such as the present one, where there is evidence of the mark being used before those three months and within five years of the filing of the application. As demonstrated above, the EUTM proprietor has filed evidence dated before those three months preceding the filing of the application and in particular before 07/11/2018. Consequently, the applicant’s argument is unfounded.

Assessment of genuine use – factors

Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22).

The indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the EUTM proprietor’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the proprietor is obliged not only to indicate but also to prove each of these requirements.

Nature and time of use

As detailed in the listed evidence, the documents submitted by the EUTM proprietor mainly concern the trade mark whereas the registered contested trade mark is ‘MAKES YOU REAL’.

‘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 sign used does not constitute an acceptable variant of the registered contested sign ‘MAKES YOU REAL’. The signs such as used and registered are completely different.

The sign ‘MAKES YOU REAL’, used as , only appears in two undated billboards (exhibit 8), in two undated free cards (exhibit 10), in a press article dated 11/07/2012 (exhibit 13), in some undated pictures of the opening event (exhibit 16) and in the undated screenshots of the EUTM proprietor’s website www.youpster.com (exhibit 27). According to the EUTM proprietor, the billboards were used from 28/06/2012 to 25/07/2012 and the free cards were distributed from 29/06/2012 to 12/07/2012. Furthermore, the EUTM proprietor pointed out that the opening event took place on 13/07/2012.

The evidence must show genuine use of the European Union trade mark within the relevant period, from 07/12/2013 to 06/12/2018 inclusive.

In the present case, the documents referring to the contested sign are either undated or dated before the relevant period. Therefore, the evidence of use filed by the EUTM proprietor does not contain any indication of time of use.

For the sake of completeness, the EUTM proprietor claimed that the new website www.youpster.com was published on 10/11/2018. However, even though the screenshots were dated within the relevant period, the extent of use has not been proved. The mere presence of a trade mark on a website is, of itself, not sufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.

In the present case, there is no information on the commercial volume, the territorial scope, the duration and the frequency of use of the contested trade mark.

The documents submitted do not prove the sales of goods or the provision of services to potential clients, nor can they prove the number of sales or contracts made for the relevant goods and services during the relevant period. The evidence does not show that the EUTM proprietor had seriously tried to acquire a commercial position in the relevant market for the relevant goods and services during the relevant period.

The evidence submitted by the EUTM proprietor merely shows that some preparations had been made in relation to the marketing of the goods, before the relevant period. Mere preparation to use the mark — such as the printing of labels, advertising material — is internal use and, therefore, not use in the course of trade for the present purposes (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37).

Although the proprietor is free to choose its means of proving the extent of use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark in the relevant territory, at least to an extent that is sufficient to dispel any possible belief that this use might be merely internal, sporadic or token. The materials listed above, taken as a whole, do not enable the Cancellation Division to determine genuine use of the trade mark for the relevant goods and services.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 07/12/2018.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Richard BIANCHI

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.