CANCELLATION No 32 121 C (REVOCATION)

Match Group, LLC., P.O. Box 25458, Dallas, Texas 75225, United States (applicant), represented by Barker Brettell Llp, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom, (professional representative)

a g a i n s t

Zynga Inc., 699 Eighth Street, San Francisco, California 94103, United States (EUTM proprietor), represented by Osborne Clarke Llp, One London Wall, London EC2Y 5EB, United Kingdom, (professional representative).

On 04/07/2019, 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 10 898 419 are revoked as from 24/01/2019 for all the contested services, namely:

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; online social networking services; providing on-line computer databases and online searchable databases in the field of social networking; providing information regarding social networking via the Internet.

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; computer game software; computer game programs; electronic game programs; interactive video game programs; computer software platforms for social networking; computer software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information in the fields of virtual communities, electronic gaming, entertainment, and general interest via the Internet or other communications networks with third parties; magnetic encoded gift cards.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment services, namely, providing online computer and electronic games, enhancements within online computer and electronic games; entertainment services, namely, providing online reviews of computer games, and providing of information relating to computer games; entertainment services, namely, providing virtual environments in which users can interact through social games for recreational, leisure or entertainment purposes.

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

REASONS

The applicant filed a request for revocation of European Union trade mark No 10 898 419 ZOMBIE SWIPEOUT (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely:

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; online social networking services; providing on-line computer databases and online searchable databases in the field of social networking; providing information regarding social networking via the Internet.

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

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.

According to Article 58(2) EUTMR, where the grounds for revocation of rights only exist for some of the goods or services for which the European Union trade mark is registered, the proprietor’s rights must be revoked for those goods and services only.

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 02/10/2012. The revocation request was submitted on 24/01/2019.Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 28/01/2019, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of two months to submit evidence of use of the EUTM for the contested services.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the specified time limit.

According to Article 19(1) EUTMDR, if the proprietor of the European Union trade mark does not submit proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for the contested services nor any indications of proper reasons for non-use.

Pursuant to Article 62(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.

Consequently, the EUTM proprietor’s rights must be partially revoked and deemed not to have had any effects as from 24/01/2019 for all the contested services. The EUTM remains valid for all the uncontested goods and services.

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 costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Arkadiusz GORNY

Sabrina SALVI

Ana MUÑOZ ODRIGUEZ

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 submitted in writing at the Office within two months of the date of notification of this decision. It must be submitted 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 submitted 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.