CANCELLATION No C 39 501 (REVOCATION) 

 

Hummel Holding A/s, Balticagade 20, 8000 Aarhus C, Denmark (applicant), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative)

 

a g a i n s t

 

Ac Brands Gmbh, Alte Papierfabrik 28-30, 40699 Erkrath, Germany  (EUTM proprietor), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative).

On 26/04/2021, 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 10 670 321 are revoked as from 04/11/2019 for some of the contested goods, namely:

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

3. The European Union trade mark remains registered for all the remaining goods (including uncontested ones), namely:

Class 25: Clothing, footwear, headgear.

4. Each party bears its own costs.

REASONS

 

On 04/11/2019, the applicant filed a request for revocation of European Union trade mark No 10 670 321 ‘Preach’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 25: Footwear.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant did not file other particular arguments together with its notice of revocation.

 

On 11/03/2020, the EUTM proprietor filed evidence of use which will be listed in the next section of the present decision.

The applicant submitted arguments and commented on the evidence. The applicant stated that 280 pairs of shoes which were in fact proven to have been sold by the proprietor do not qualify as sufficient extent of use for the EUTM. It criticized each attachment submitted by the proprietor. It stated that the trade mark PREACH is not in any way shown in connection with any of the shoe models that appears in the photos of attachment 4 and which bear the names GRINGO, HOBBIT, HORKO, HASIA, HEXE, ISTO and ICO, neither on the shoes, the inside the shoes, on packaging or on labels.

The applicant commented that the proprietor confirmed that PREACH was not displayed on the outside of the shoes or on packaging, but that is was displayed inside the shoe on the inner sole. However, this was not proven. Other documents (attachment 5) do not show the trade mark PREACH in connection with any of the shoe models displayed in the designs registration certificates and even if the design registrations showed the trade mark PREACH, the mere design registration of a product does not in itself constitute genuine use of a trade mark, nor does it imply that the products have in fact been marketed and sold within the European Union.

Other documents are dated out of the relevant period or do not bare any information about the time they were issued (attachments 6, 7, 9).

On 09/10/2020 the EUTM proprietor submitted a bunch of new evidence in reply to the applicant’s observations.

The applicant stated that it maintains and refers to the arguments set forth in its previous observations and reiterated the request that the effects of the revocation to be fixed at 07/06/2017 and the costs of the proceedings to be borne by the EUTM proprietor.

GROUNDS FOR THE DECISION

 

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

 

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

 

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the 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 04/11/2019. 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  04/11/2014 until 03/11/2019 inclusive, for the contested goods listed in the section ‘Reasons’ above.

 

On 11/03/2020 and subsequently on 09/10/2020 the  EUTM proprietor submitted evidence as proof of use. 

 

The evidence sent on 11/03/2020 is the following: 

 

1. Power of Attorney.

2. Certificate of trade mark registration for the contested mark dated in 2012.

3. Affidavit of Michael Gerlach, the managing director of Brand Masters, ‘Preach’ was in particular a clothing label. The proprietor explains that in order to complement the range of clothing articles and to present a complete, homogenous look, a selection of matching shoes was also included in the collection. Mr M.G. states that his company was the first owner of the contested mark between 2012 and 2017 and between 2015 and 2017 the company sold 280 pairs of shoes for a total amount of EUR 69.967,97, registered 19 German designs of shoes for the collection Autumn/Winter 2015/2016 in 2015. The mark was sold finally in March 2017 to ACTC GmbH, the last pair of shoes being sold in August 2017.

4. Selection of pictures of shoes designs.

5. Certificate of design registration from 2015.

6. Lookbook Autumn/Winter 2014 for the mark presenting clothing and footwear articles (boots).

7. Image booklet Spring/Summer 2015 for the mark presenting clothing and footwear articles (boots).

8. Mini lookbook Spring/Summer 2016 for the mark presenting clothing and footwear articles (boots and sandals).

9. Sample screenshots of the online shop www.preach-shop.eu.

10. Excel-sheet with sales list and turnover figures. The mark does not appear but the models of the shoes (for example Hobbit, Gollum, Horion) that appear in the lookbooks and invoices are listed in this document.

11. Selection of 15 invoices for footwear articles dated from 2015 until 2017 issued to clients from Germany, the Netherlands, Slovenia, Romania, and the United Kingdom (UK). The invoices show that 34 pairs of footwear were sold for prices ranging from EUR 69.90 until EUR 649 apiece.

12. Trade mark purchase and transfer agreement from 2017. According to § 1(3) of the agreement, all following domains registered for the trade mark were also passed on to ACTC: www.preach.eu, www.preach.at, www.preach-style (with the endings: DE/EU/COM/AT/CH), www.preach-fashion (with the endings: de/eu/com), www.preach-shop. (with the endings: de/eu/com), www.preach-store (with the endings: de/eu/com).

13. Screenshots of the current online shop https://preach.shop/. The proprietor explains that between 2017 and 2019, the trade mark was not used because the new owners initially developed a different concept for the trade mark. In summer 2019 the EUTM was launched on the market again and is used for a young streetwear and lifestyle concept for men. Corresponding screenshots of the current online shop are presented in this attachment.

14. Trade mark transfer agreement between ACTC GmbH and AC Brands GmbH

15. Recent extract from the trade mark register regarding the contested mark.

The evidence sent on 09/10/2020, in reply to the applicant’s criticism, consists of:

16. Pictures of the inside of the shoes depicting the mark as follows

17. Lookbook Spring/Summer 2016 showing some clothing and footwear.

18. Selection of invoices dated between 2014-2016 to clients mostly from Germany but also from Austria, France, Greece, Italy, Romania, Spain and UK for footwear and clothing articles. The invoices bear on top left corner the logo . The invoices contain around 266 pairs of footwear articles (boots, half boots and sandals) and the total amount is around EUR 54 300 only for such articles as the invoices contain also clothing articles for which the applicant did not contest the use of the EUTM.

19. Order confirmation with price recommendation.

20. Picture of an extravagant shoe model.

21. Invoice for a customer in New York City for 13 pairs of footwear articles for EUR 2 743.

 

PRELIMINARY REMARKS 

 

On the additional evidence

On 09/10/2020, after expiry of the time limit, the EUTM proprietor submitted additional evidence. 

 

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

 

The additional evidence is likely to be relevant to the outcome of the proceedings and the stage at which it was submitted does not preclude the evidence from being taken into account.

 

The fact that the applicant disputed the initial evidence submitted by the EUTM proprietor in particular doubting that the trade mark was affixed to the goods and as regards the extent of use, justifies the submission of additional evidence in reply to the objection (29/09/2011, T-8209;415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-8209;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.

 

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 09/10/2020.

 

On the evidence

 

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the EUTM is registered.

 

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.

Evidence relating to the United Kingdom

The EUTM proprietor has submitted, inter alia, evidence relating to the United Kingdom with a view to demonstrating use of the contested mark.

 

On 01/02/2020, the United Kingdom withdrew from the European Union subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the United Kingdom. Therefore, use in the United Kingdom prior to the end of the transition period constituted use in the European Union. Consequently, the evidence relating to the United Kingdom and to a period prior to 01/01/2021 is relevant with a view to maintaining rights in the EU and will be taken into account.

ASSESSMENT OF GENUINE USE – FACTORS

 

Time of use

 

The evidence must show genuine use of the contested EUTM 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.

 

Firstly, it is recalled that the EUTM proprietor does not have to prove use for an ‘uninterrupted’ period of five years counted back from the date of the revocation application. Regarding the 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 09/07/2009, R 623/2008-4, Walzer Traum (fig.) / Walzertraum, § 28). Secondly, even if the duration of use in some cases is not particularly long, it is recalled that the items of evidence are not assessed following a piece meal approach but in conjunction with each other and the Cancellation Division is satisfied in an overall evaluation of the documents on file that there are sufficient indications regarding the time of use. Against this background, the applicant’s claims have to be set aside as unfounded.

Place of use

 

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

The invoices show that the principal place of use is  Germany but items of footwear were sold also in other EU Member States as well as exported outside of the EU (in the USA). This can be inferred from the language of the documents (German, Italian and English), the currency mentioned (EUR) and some addresses in the mentioned countries. 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 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.

 

The materials submitted in the present case show that the contested EUTM was used as a trade mark to indicate the commercial origin of the goods. The sign is featured on the invoices, look books, brochures as well as inside the products. In addition, it is recalled that the various pieces of evidence must be assessed in conjunction with each other and not in isolation. In the present case, from a corroborated interpretation of the invoices with the advertising material and actual photos of the goods, it can be determined how the mark was actually used on the relevant products. It is therefore clear that the evidence illustrates a link between some of the registered goods 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 EUTM. 

 

The sign used shows use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the contested EUTM under Article 18 EUTMR.

 

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.

 

The EUTM was registered as a word mark. It was used mostly as in catalogues, invoices and also applied on the interior part of the products as . Although the use of the contested mark varies and in certain items of evidence takes a slightly figurative form from due to the stylised script especially of the stylised letter A which misses its horizontal line, this does not affect distinctive character of the mark, the name PREACH being clearly legible and the stylisation not being particularly fanciful. Furthermore, the additional elements “»” and “«” have no trade mark value being punctuation marks. Consequently, use is shown of the contested EUTM in a form which does not alter its distinctive character.

 

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 ‘use 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 condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).

The smaller the commercial volume of the exploitation of the mark, the more necessary it is for the EUTM proprietor to submit additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37).

The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the structure of the relevant market (30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53). Although the evidence indicates a relatively small quantity of footwear articles sold, it shows use of the EUTM  throughout the EU, mostly in Germany but also in small amounts in Austria, France, Greece, Italy, the Netherlands, Romania, Slovenia, Spain and UK, and for a relatively noteworthy turnover. Admittedly, despite being designer fashion items the proprietor’s goods cannot be considered as exorbitant goods; however, they cannot be considered mass consumption goods either, as long as their cost per pair is, in average, several hundred euros.

 

Nevertheless, it must be concluded that the materials submitted clearly show that the EUTM proprietor has seriously tried to maintain or create a commercial position in the relevant market and there is sufficient information concerning the commercial volume, the duration, and the frequency of use. However, this conclusion applies only in relation to some of the goods for which the EUTM is registered (as will be explained in detail below).

Use in relation to the registered goods

 

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 3, 18, 20 and 25 as listed above the ‘Reasons’ part. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the contested goods 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, concerning the contested goods, the evidence shows genuine use of the trade mark in relation to footwear articles in Class 25 only.

 

Therefore, the Cancellation Division declares the EUTM to be revoked for the remaining contested goods for which it is registered.

 

Overall assessment

 

In order to examine, in a given case, whether use of the 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, as mentioned above, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors only in relation to footwear in Class 25.

 

  

Conclusion

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

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

The EUTM proprietor has not provided any reasons for non-use for the abovementioned goods.

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 04/11/2019. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown sufficient legal interest to justify it.

 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(3) 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

 

Pierluigi M VILLANI

Ioana MOISESCU

Ana MUÑIZ RODRIGUEZ

 

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.