CANCELLATION No C 34 321 (REVOCATION)

 

Bolt Mobility Corporation, 9703 Collins Ave, 33154 Bal Harbour, Florida, United States (applicant), represented by Osborne Clarke (Hamburg), Reeperbahn 1, 20359 Hamburg, Germany (professional representative)

 

a g a i n s t

 

Bolt Technology OÜ, Vana-Lõuna tn 15, 10134 Tallinn, Estonia  (EUTM proprietor), represented by Patendibüroo Käosaar OÜ, Tähe 94, 50107 Tartu, Estonia (professional representative).

On 10/12/2020, 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 11 229 424 are revoked as from 26/03/2019 for some of the contested services, namely:

 

Class 35: Advertising; Business management assistance; Business management, business administration; Office functions; Business and sales support services; Import and export agencies; Professional business consultancy, procurement for other businesses; Business management of transport and logistics companies; Commercial information; Business information; Advertising consultancy, modelling for advertising or sales promotion; Public relation services; Marketing, marketing consultancy; Demonstration of goods; Sales campaigns, advertising; Rental of advertising space; Billboard advertising; Accounting; Invoicing; Administrative processing of purchase orders; Consultancy, advisory and information relating to the aforesaid services.

Class 36: Insurance; Financial affairs, monetary affairs and real estate affairs; Customs brokerage, customs declaration and brokerage services; Insurance consultancy; Consultancy relating to customs; Consultancy, advice and information relating to all the aforesaid services.

Class 39: Packaging and storage of goods; Travel arrangement; Transport brokerage; Transport brokerage; Unloading cargo; Storage; Storage of goods, freight forwarding; Rental of warehouses; Storage information; Bonded storage services; Consultancy, advice and information relating to all the aforesaid services.

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

Class 39: Transport; Transport; Transport agencies; Transport information; Transport reservation; Consultancy, advice and information relating to all the aforesaid services.

  4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark No 11 229 424 'BOLT' (word mark) (the EUTM). The request is directed against all the services, covered by the EUTM, namely: 

Class 35: Advertising; Business management assistance; Business management, business administration; Office functions; Business and sales support services; Import and export agencies; Professional business consultancy, procurement for other businesses; Business management of transport and logistics companies; Commercial information; Business information; Advertising consultancy, modelling for advertising or sales promotion; Public relation services; Marketing, marketing consultancy; Demonstration of goods; Sales campaigns, advertising; Rental of advertising space; Billboard advertising; Accounting; Invoicing; Administrative processing of purchase orders; Consultancy, advisory and information relating to the aforesaid services.

Class 36: Insurance; Financial affairs, monetary affairs and real estate affairs; Customs brokerage, customs declaration and brokerage services; Insurance consultancy; Consultancy relating to customs; Consultancy, advice and information relating to all the aforesaid services.

Class 39: Transport; Packaging and storage of goods; Travel arrangement; Transport; Transport agencies; Transport brokerage; Transport information; Transport brokerage; Transport reservation; Unloading cargo; Storage; Storage of goods, freight forwarding; Rental of warehouses; Storage information; Bonded storage services; Consultancy, advice and information relating to all the aforesaid services.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant considers that there has been no genuine use of the EUTM in relation to all the registered services in Classes 35, 36 and 39 during the five years preceding the invalidity application, or at all.

The EUTM proprietor filed evidence of use which will be listed and assessed further in the decision. It stated that it has used the trade mark ‘in transportation sector in relation to transportation (scooter sharing and ride-hailing), financial (payment mediating, operational lease), business management and consultancy services to maintain the market share established under its earlier trade mark TAXIFY and to grow the market share even more as a result of rebranding to BOLT. Considering the existing customer base the EUTM proprietor had before rebranding, and the fact that rebranding was done and the trade mark BOLT introduced to the public via the same online platform and mobile platform interface used by EUTM proprietor previously for making its services accessible under trade mark TAXIFY, the goodwill established in relation to EUTM proprietor’s earlier trade mark, its online platform and mobile platform interface has transferred to trade mark BOLT through continuity of services offering’. Connection between Bolt’s earlier trade mark TAXIFY, or in short TXFY, and the trade mark BOLT was also created, and customers’ attention was thereby drawn to this connection, by the use of addition “by Txfy” on the electric scooters bearing the trade mark BOLT and, after rebranding on 07/03/2019, by use of the wording “Formerly Taxify” next to the BOLT trade mark. The proprietor also claimed that the applicant was aware about the genuine use of the trade mark BOLT before the revocation application was filed and, thus, the application has been filed not only in bad faith and with the intentional purpose to cause damage to the trade mark proprietor, but also without merits.

The EUTM proprietor claims that the services provided under the trade mark BOLT can be summarised as follows:

 Ride-hailing service. Passengers can request a taxi or a private driver via Bolt’s mobile platform interface bearing the trade mark BOLT, ride to their desired destination and pay for the ride in cash to the driver or add credit card to the mobile platform interface which Bolt automatically charges when passenger arrives to destination. Cars are designated with the trade mark BOLT.

 Electric scooter sharing service. Passengers can ride with electric scooters by using the same Bolt’s mobile platform interface bearing the trade mark BOLT. Scooters are designated with the trade mark BOLT.

 Financial services, invoicing. For drivers and taxi companies operating through Bolt’s online platform and under agreements with Bolt, Bolt provides financial services (e.g. transfer of payments, operational lease), invoicing and other management services (e.g. Bolt Driver for drivers, Bolt Fleet and Bolt Dispatcher for companies) (evidence discussed in more detail below).

 Brokerage and reservation service. Bolt also offers transport reservation solution named Bolt Button for hotels and restaurants, whose clients often need transport.

 Business management services. Further, Bolt Business is Bolt’s service for business clients for the management of and payment for the rides taken by passengers authorised by the business client (e.g. work rides of an employee paid by his/her employer).

The applicant replied that when the EUTM proprietor became aware of the applicant's imminent market entry it started - in bad faith - to take advertising measures on 07/03/2019 to make it more difficult for the applicant to enter the relevant market. ‘The laboriously constructed inclusion of the use of the designation BOLT (1) after expiry of the grace period for use, (2) with recognizably little effort, (3) after knowledge of the applicant's planned use of the designation "BOLT" and (4) also in contradiction to its own marketing strategy, which used the sign TAXIFY in the long term, obviously did not serve to gain a serious economic position under this trade mark. Rather, it served the sole purpose of securing the rights from the trade mark with regard to the emerging use of the contested designation by the applicant.’ Thus, the alleged use of the EUTM - even if it is assumed to be correct - fulfils all characteristics of a merely symbolic use or fictitious use within the meaning of case-law. It criticised every piece of evidence in the sense that it is either irrelevant (e.g. Annexes 1, 2, 3, 4, or not relating to the relevant territory (Russia – Annex 4), or relating to the use of a business name, or not in English (Annexes 4, 6 etc) or it is dated within the relevant period and the financial data has been blanked out (the invoices in Annex 4), or that it does not relate to the relevant services (the alleged use of the contested trade mark for “Scooter rental services” which the applicant believes is no use of transport services in Class 39).

The applicant states that between the parties there is a trade mark conflict. It states that in April 2018 the idea of a new technology for e-scooter services developed through a collaboration of the applicant with an IT specialist. The name BOLT was given with the consent of the Olympic champion Usain Bolt who ‘granted the Applicant a worldwide exclusive licence to use its personality (”identification”), including images, videos, name, voice etc as well as its trademark rights, distinctive signs and naming rights “BOLT” and “USAIN BOLT” for the advertising and distribution of the E-scooters’ under these two names. The proprietor, which had knowledge about the applicant’s plans and collaboration, filed on 17/08/2018 for an EUTM registration No 17 944 575 for Classes 9, 35, 39 and 42 (EUTM currently under opposition), it allegedly presented an e-scooter rental service called "BOLT by TXFY" in Paris, France, in September 2018, and acquired in February 2019 the contested EUTM 'BOLT', filed on 01/10/2012, from the Finnish company 'Aslo Konsultatsioonid OÜ', in the style of a 'trademark grabber'.

The EUTM proprietor filed additional evidence on 18/05/2020.

The applicant did not file any observations in reply, despite having been expressly invited to do so by the Office.

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 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  16/04/2013. The revocation request was filed on  26/03/2019. 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  26/03/2014 until 25/03/2019 inclusive, for the contested services listed in the section ‘Reasons’ above.

On 01/08/2019 the EUTM proprietor submitted evidence as proof of use. 

As the EUTM proprietor requested to keep certain commercial data contained in the evidence under No 7 confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following: 

Annex 1 Affidavit signed by Bolt’s co-founder and member of the board, Mr M.V., who makes a history of the general business matters of Taxify and TXFY in the past, before the acquisition of the contested trade mark and its rebranding as “BOLT” in 2019.

Annex 2 Confirmation letter from the CEO of Bolt Logistics OY dated 10/07/2019 stating that the company used the contested mark ‘for its own business activities between 2014 and 2015 in Estonia, Finland and Russia’ and as of 09/12/2018 representatives of Bolt Logistics OY and the actual proprietor (formerly Taxify OÜ) ‘held negotiations over sale and purchase of the EUTM’ which concluded on 28/01/2019 with a trade mark assignment. From 09/12/2018 until the change of ownership in the EUIPO Register, the mark ‘was used by Taxify OÜ for services in Classes 35, 36 and 39 and Bolt Logistics OY accepted and consented to such use’. (emphasis added)

Annex 3 Extract from the Estonian General Part of the Civil Code Act.

Annex 4 Invoices issued by Bolt Logistics OY: the proprietor explains that these are invoices which have been submitted to and paid by the Estonian, Finnish and Russian clients of Bolt Logistics OY and that they show the coloured design of the trade mark as used by Bolt Logistics OY (on top of every invoice it appears the company name in big and coloured script as ). The proprietor also claims it proved the genuine use of trade mark BOLT during the years 2014 and 2015 in relation to logistics and transportation services. Every amount in these invoices was deleted.

Annex 5 Consisting of: (a) An extract from Bolt’s Presentation Q1 2019 to investors showing an increase from 16.3% (Q1 2017) to 49% (Q4 2018) in the CEE (Baltics, Slovakia, Poland, Romania and Hungary amongst others) and an increase from 0% to 17.1% in the Western Europe (France, Portugal, Malta and Austria); (b) Annual Report 2018: In the ‘Management Report’ it is mentioned that the report is for ‘Bolt Technology OÜ, previously Taxify OÜ, operating under the trade mark Bolt’. ‘As of 2019, Bolt provides ride-hailing services in more than 30 countries and 100 cities globally, as well as an electric scooter rental service that first launched in Paris’. ‘At the beginning of 2019, the company globally rebranded as Bolt. Rebranding preparations started in the first half of 2018 and the new trade mark was first used during the launch of electric scooters in Paris in September 2018. The update brought the brand identity in line with the company’s broader vision of transportation. The rebrand was widely covered in the media across all of Bolt’s markets as well as globally relevant business publications, including Bloomberg, TechCrunch, Quartz and Les Échos’; (c) Sample invoices dated between 07/03/2019-09/03/2019 for transport services provided in Latvia, Lithuania, Czech Republic, Poland and France. On top left of every invoices there is the sign ; (d) Printouts from www.bolt.eu from 07/03/2019 and Google Analytics data from 01/01/2019-11/07/2019 showing that between 03/03/2019 until 09/03/2019 there were 132 080 users; (e) Article titled “Taxify is now Bolt” published at www.bolt.eu on 07/03/2019 and print screens of the announcement in mobile platform interface; (f) Print screens from Bolt’s mass mailing system showing examples of scheduling mass e-mails in different countries between 20 and 26/02/2019 regarding the rebranding of Bolt from Taxify to Bolt on 07/03/2019; (g) Various news articles about Taxify rebranding to Bolt published in Austria, Croatia, Czech Republic, Cyprus, Estonia, France, Hungary, Latvia, Lithuania, Netherlands, Poland, Portugal, Romania, Slovakia and United Kingdom on 06/03/2019 and thereafter; (h) Photos of cars (taxi) bearing the trade mark BOLT.

Annex 6 Titled ‘Scooter Sharing Services’ and consisting of:

(a) Various news articles about the launch and provision of Bolt’s scooter sharing services in Paris (articles published between 05/09/2018-28/11/2018) and directed to the French, Portuguese, UK, Estonian, American, Dutch, Czech, German, Indian, Romanian, Polish, Latvian and EU public, the latter being an article published at tech.eu;

(b) Article published on 06/09/2018 at www.accelerista.com about the launch of electric scooters in Paris via Bolt’s mobile platform interface and stating, inter alia, that ‘Taxify has made its scooter service a separate sub-brand and named it Bolt. Taxify is now the first transport platform in the world to offer both ride-hailing and scooter sharing services. In order to use the new Bolt service, you need to download the Taxify application, which offers you the choice between ride-hailing and electric scooters. Green Bolt scooters are equipped with a GPS system that displays the location of free scooters in the application and monitors the route of travel’;

(c) Media report about the launch of Bolt’s scooter sharing services in Paris showing that from one day before the launching in Paris (i.e. 05/09/2018) and within 10 days there were a total of 111 mentions of the proprietor and its trade mark BOLT in various articles in the context of electric scooters; a total of 5,012 Facebook shares and 346 Twitter shares of the related coverage on respective platforms, and the aggregated number of readers of all the publications covering the news combined was 155,695,281. The media report includes references to specific articles published in Estonia, France, Netherlands, United Kingdom and Ireland;

(d) An overview of Instagram posts from Bolt’s French account presenting Bolt’s electric scooters and screenshots of people that reside in different countries who liked the posts or posted themselves information about these scooters, posts that were seen by their followers;

(e) Print screens from Facebook; an overview of Facebook posts showing the use of Bolt’s electric scooters bearing the trade mark BOLT by people that reside in different countries. The EUTM proprietor claims that these Facebook posts have reached people in different countries, including Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Ireland, Latvia, Lithuania, Netherlands, Poland, Portugal, Romania, Slovakia, Spain, Sweden, Ukraine and United Kingdom within the period from 05/09/2018 to 25/03/2019 and in relation to scooter sharing services;

(f) Print screens from Twitter; overview of Twitter posts showing the use of scooters bearing the trade mark BOLT by people that reside in different countries. The EUTM proprietor claims that these Twitter posts have reached people in different countries, including Belgium, Czech Republic, Estonia, Finland, France, Germany, Ireland, Italy, Latvia, Netherlands, Poland, Portugal, Romania, Slovakia, Switzerland and United Kingdom within the period from 05/09/2018 to 06/03/2019 and in relation to scooter sharing services as part of Bolt’s general transportation offering;

(g) A screenshot of a video from TF1 TV Show Chaouch Express: “Paris sains voiture mais en trottinette” about Bolt’s electric scooters bearing the trade mark BOLT being offered in Paris on 16/09/2018 as part of the car free day (the TV show was published on 17/09/2018), and screenshots of the Bolt scooters and signs being used in Paris on 16/09/2018;

(h) Examples of invoices dated between 13/09/2018-25/03/2019 for actual rides by Bolt’s clients ;

(i) Pictures of scooters taken by users and uploaded to the Bolt mobile platform interface;

(j) Article published on 04/04/2019 at www.thelocal.fr about electric scooters in Paris. According to the article, there were 9 electric scooter sharing service providers in Paris, operating an estimated 15,000 scooters, in April 2019. The EUTM proprietor claims that Bolt, as the third service provider in Paris, had an average 540 scooters (maximum of 1,138 scooters) during September 2018 – February 2019, which makes its market share cca 5% during this period;

(k) Print screens from a video ‘Taxify CEO: Safety is one of the key aspects of transportation’ showing the CEO of the proprietor riding a scooter bearing the trade mark BOLT at Web Summit in Lisbon on 05-08/11/2018 and an article about Taxify and the Lisbon Summit;

(l) Examples of investments made by Bolt in relation to scooter sharing services; example scooter purchase invoices and ‘IoT hardware for e-scooter sharing operations-scooter model Ninebot ES2’ or ‘Ninebot by Segway KickScooter – sharing (EU)’ dated between 07/08/2018 and 26/10/2018 for the abovementioned brands/models all sold to Taxify OÜ. The proprietor claims that before 07/03/2019, Bolt had invested into scooter sharing business over EUR 2,5 million. ‘In addition to the purchase of electric scooters, the investments include scooter collecting and warehouse costs, maintenance and charging costs, insurance, public relations and marketing costs, salaries (employees responsible for scooter sharing only) etc. The investments were made before 7 March 2019 (time) in relation to scooters sharing (i.e. transportation) services. The addressees where Bolt’s clients Paris, but also in other countries where Bolt planned to launch respective services soon after (e.g. Madrid).’

(m) Extract of the Application submitted on 13/12/2018 for the provision of scooters sharing services in Madrid and the license respectively granted on 12/02/2019 for the provision of scooter sharing services in Madrid;

(n) Various news articles about the launch and provision of Bolt's scooter sharing services in Madrid dated 02/04/2019;

Annex 7 – Titled ‘Use of the mark for services in Classes 35 and 36’ and consisting of: an affidavit signed by the EUTM proprietor’s financial controller confirming the number of fleet owners and drivers in the EU on 06/03/2019, and (a) Print screens of Bolt service platforms Bolt Fleet, the fleet owner portal https://fleets.bolt.eu login page for Bolt Fleet services, which is offered by Bolt to companies for management of drivers, vehicles and business documentation (e.g invoices), Bolt Driver (a login page for Bolt Driver services, which is offered by Bolt to individuals (drivers) who wish to provide transport services under the Bolt trade mark), Bolt for Business; (b) Extract from Annual Report 2018 showing Bolt’s net sales by operating activities (transportation platform services, operating lease (an agreement to use and operate an asset without ownership), rent of scooters and partner-sales) to its drivers in Estonia and printout from www.bolt.eu website which explains that drivers without a car can choose from Bolt’s own car fleet with possibility to purchase after the operating lease period; (c) Extracts from agreements with a contractual partner in Hungary (dated 01/05/2017) allegedly showing that Bolt provides financial and management services. The agreement is actually between Taxify OÜ and Taxify Hungary KFT. and the mark BOLT is not mentioned.

After the applicant commented on the first set of evidence the EUTM proprietor filed more evidence filed on 18/05/2020. The EUTM proprietor claimed confidentiality for all these documents explaining that they contain business secrets. As the EUTM proprietor requested to keep certain commercial data contained in the evidence and/or its written submissions of the same date, confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data. This does not apply however to data contained therein that are clearly within the public domain (e.g. in the form of press extracts or on the websites of the EUTM proprietor and/or third parties).

1. Printout and print screens from Internet archive archive.org showing the content of the website https://bolt.eu (list of cities and content in different languages) on 12/03/2019;

2. Evidence confirming the number of trips made by the proprietor's customers and the financial data of these trips:

2A. Print screen from Looker for Taxify.eu;

2B and 2C. Written statements from accounting expert K.T. and from M.V. (member of the management board of the EUTM proprietor) confirming that Bolt’s customers made more than 1.8 million trips in France, Poland, Estonia, Malta, Austria and Croatia during 07/03/2019-24/03/2019 and the proprietor’s sales for ride-hailing services in the said countries during the relevant period;

3. Information on the Bolt mobile application installations during 07/03/2019-24/03/2019:

3A. Print screen from Apple platform App Store Connect;

3B. Articles dated in January (mentioning Taxify), April, June (mentioning Bolt) 2019 by Sensor Tower about ride-sharing app download estimates;

4. Written statements and invoices:

4A. Written statements from the proprietor’s partners in Austria, France, Estonia, Poland and Malta confirming that during the period from 7 March to 25 March 2019 the respective partners have provided transportation services (taxi services) by using the trade mark Bolt under the licence of Bolt Technology OÜ; the statements which originate from different persons and companies provide specific information regarding the respective companies’ collaboration with the EUTM proprietor’s company and the same general information about the latter, mentioning that in addition to invoicing services, Bolt provides the respective partners with payment services and business management assistance services. All non-cash payments made by passengers are collected by Bolt and periodically transferred to the respective partner. Further, the partner has access to Bolt Fleet Partner Account at fleets.bolt.eu. This is a portal where Bolt provides its partners with relevant business information, statistics and documents, including accounting documents. Bolt compiles and provides the partners with overview of and access to: a) information on the respective partner’s drivers and cars; b) daily and weekly reports on the provided transport services by the respective partner. The reports include information on fares, fees, discounts, driver bonuses, refunds to passengers, overview and statistics of rides completed by drivers and their earned sums; c) invoices sent by Bolt to passengers on behalf of the partners;

4B. Various examples of invoices bearing the sign issued to customers in Austria, France, Estonia, Poland and Malta, dated in March 2019 before the revocation application. The proprietor states that they are aimed to prove that Bolt offers payment transfer, accounting, invoicing and business management services to its contractual partners through online platforms – Bolt Driver and Bolt Fleet;

5. Evidence on advertising campaigns:

5A. 43 pages invoice dated 02/04/2019 from Facebook Ireland Limited to Taxify OÜ for, the proprietor claims, ‘advertising services’ provided in March 2019; the mark BOLT appears in connection with, e.g. Driver, Estonia, All Cities - Remarketing (Bolt), Driver, Finland, Helsinki - Conversions (Bolt);

5B.-5D Print screens from Facebook Ads Manager on advertising campaigns in Facebook and Instagram social media platforms available in France, Poland, Lithuania during 07/03/2019-25/03/2019;

5E. E-mail advertising delivered to a customer in Estonia on 08/03/2019;

6. Wikipedia article “Scooter-sharing system”; the EUTM proprietor underlines that these services fall under the general category of transport. The EUTM proprietor claims that ‘the fact that the list of services of the contested mark does not explicitly include “vehicle rental” is irrelevant as it is very close and within the scope of the protected terms “Transport; Transport brokerage; Transport information”. Given the rapid developments in the transport business sector in recent years, the proprietor has legitimate interests that the general term “transport” provides protection for its scooter sharing offering.’;

7. Articles about the scooter sharing service as part of transportation services;

8. Printout from the EUIPO Similarity tool showing that the Office considers the services of transport to be identical with the rental of vehicles;

9. Print screens from Internet archive archive.org showing the web portal Bolt Fleet https://fleets.bolt.eu/ as of 08/03/2019.

PRELIMINARY REMARKS 

Additional evidence

Initially the EUTM proprietor was provided with a deadline of 01/06/2019 in which to submit the evidence of use of the EUTM. This deadline was later extended to 01/08/2019. The EUTM proprietor submitted evidence of use on 01/08/2019. On 18/05/2020, after expiry of the time limit, the EUTM proprietor submitted more evidence. 

Even though, according to Article 19(1) EUTMDR, the 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 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 all of the later evidence but did not file any observations.

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 18/05/2020.

Bad faith

Both parties accused each other of bad faith.

The EUTM proprietor stated that the applicant was aware of the use of the mark BOLT by the proprietor before the filing date of the revocation.

The proprietor’s claims on the alleged bad faith of the applicant bear no relevance to the present proceedings. Bad faith is an absolute ground for invalidity that can be invoked by a cancellation applicant against a registered EUTM/IR designating the EU. On the other hand, the scope of the present proceedings is concerned with the revocation of the proprietor’s EUTM on the grounds of non-use. Therefore, this point will not be further addressed.

For the sake of completeness, it is also recalled that Article 63(1)(a) EUTMR grants all natural and legal persons the right to file an application for revocation on the basis of Article 58 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision. In the present case, the EUTM proprietor did not provide convincing arguments and evidence of abuse of law from the part of the applicant which could call upon application of higher principles of law and question the admissibility of the application for revocation.

On the other hand the applicant accused the EUTM proprietor of starting the rebranding of its mark in bad faith. Again, the scope of the present proceedings is concerned with the revocation of the proprietor’s EUTM on the grounds of non-use. The EUTM Regulation gives the possibility to the applicant to file an invalidity request against the EUTM proprietor if it considers, and has proof, that the EUTM proprietor acted in bad faith.

ASSESSMENT OF GENUINE USE – FACTORS

Time of use

The evidence must show genuine use of the contested EUTM within the relevant period. The provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).

The majority of the evidence concentrates in the last six months (and mostly in the last three months) before the filing of the revocation request. There is also some evidence relating to the period 2014-2015 in which the former EUTM proprietor claims it used the contested mark as well as some evidence of use after the date of the revocation request.

The applicant criticised the evidence in the sense that either it refers to preparatory measures (before the revocation request), or that it is irrelevant (the evidence dated after the date of the revocation request or from 2014-2015 because of the use of the sign as a company name). First, the applicant claims, as detailed above, that the current EUTM proprietor bought the mark after its meeting with the applicant in which the parties discussed a possible collaboration and the applicant divulged its intentions to enter on the market with a service for e-scooters and the use of the name BOLT after obtaining the licence from Mr Bolt.

One of the applicant’s main criticism relates to the fact that the evidence mainly concentrates on the last few months before its revocation request and that this means that the mark was put to use on the sole basis of promotional and preparatory activities.

However, even in the case where an EUTM has not been put to genuine use in any continuous 5-year period after its registration, it cannot be revoked if genuine use commenced or was resumed before the filing of the application for revocation. Be that as it may, where this period is no more than 3 months and it can be established that the proprietor started or resumed genuine use of the mark in view of threatening revocation, evidence of this use cannot be taken into account, and the EUTM will have to be revoked. The burden of proof is on the applicant for revocation to prove that it made the EUTM proprietor aware of its intention to file an application for revocation.

In this sense the Cancellation Division notes that although the applicant claimed that the proprietor had knowledge about the applicant’s intentions to use the mark BOLT, since they met and discussed a possible collaboration, it filed no evidence to support such claims. In addition, there is no evidence to support the claim for the existing license from Mr Bolt and no other evidence to show that the EUTM owner was aware at any time prior to the date of revocation that such an action would be filed.

It is also reminded that the preparations intended to secure customers, particularly in the form of advertising campaigns, can constitute genuine use and that the EUTM proprietor’s advertising efforts had gone beyond mere preparatory tasks, to the extent that the EUTM proprietor had offered its services of transportation (scooter sharing) publicly and was ready to meet demand, so the preparatory acts in question were in fact imminent to the offer of services. Moreover, the proprietor of EUTM has changed its business name and also the name under which it has previously successfully provided its services in, amongst other countries, several EU Member States i.e. TAXIFY, with the new BOLT brand, and did so through an "aggressive" worldwide advertising campaign (through press articles, social media and the internet). In this way, the information about rebranding reached all its existing but also potential customers, very quickly. This implies that in a very short period of time, the public became aware of the new name BOLT and, moreover, could already, from the first moment of the rebranding, use the services provided; this is proven by invoices, press articles and excerpts from social media. Moreover in 2018 the EUTM proprietor was using already the name BOLT in connection with e-scooter services.

Regarding the use of the BOLT brand between 2014 and 2015 the main criticism of the applicant was that the name BOLT was not used as a trade mark but as a commercial name. This makes the object of another criteria which is ‘Nature of use - use as a trade mark’, that will be discussed further. In any case, even if a genuine use of the contested mark would not be acknowledged for the period 2014-2015, still there is sufficient information as regards the use of the mark in the last period of 3 months before the revocation action.

Evidence referring to use made outside the relevant time frame is in general immaterial, unless it constitutes conclusive indirect proof that the mark must have also been put to genuine use during the relevant period. The Court held in this context that circumstances subsequent to the relevant point of time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

As regards the materials dated outside the relevant time frame (such as for example some documents in Annex 5 of 18/05/2020 or under Annex 6 j) and n) of 01/08/2019), it is recalled that evidence dated outside the relevant time frame may serve to confirm or assess more accurately the extent to which the mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the evidence referring to use after 26/03/2019 confirms use of the mark within the relevant period, since the use it refers to is very close in time to the end of the relevant frame. Finally, as regards that part of the evidence that is undated (such as for example photographs), it follows from case-law that images of products, even if undated, may serve to show how the mark was used in relation to the relevant goods/services and to provide information regarding the type of goods/services the proprietor manufactures and markets, and therefore cannot be ignored in the evidence’s overall evaluation (13/02/2015, T-287/13, HUSKY, EU:T:2015:99, § 67-68). 

Taking all the above into account, the Cancellation Division considers that 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.

As seen above in the detailed listing of the evidence the sign BOLT was used in several EU Member States such as France, Estonia, Romania, Poland, Austria etc.

Consequently, the evidence submitted suffices to establish that the sign was present in the market in 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 proof of use must establish a clear link between the use of the mark and the relevant goods or services.

The use of a sign as a business or trade name cannot be regarded as trade mark use unless the relevant goods or services themselves are identified and offered on the market under this sign. The fact that a word is used as a company’s trade name does not preclude its use as a mark to designate goods/services (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 38).

Regarding the use of the contested sign between 2014 and 2015 the Cancellation Division notes that the invoices in Annex 4 bear the business name of the former proprietor BOLT LOGISTICS OY and the services provided are transport and freight forwarding services. Admittedly, there is no indication in these invoices under which name such services were provided and no other documents were filed by the EUTM proprietor except of a confirmation letter from the former proprietor which, however, only confirms that it used the mark BOLT in connection with its business activities between 2014 and 2015. However, it is also known that in the case of services, it is impossible to use the trade marks ‘on’ them, as they are immaterial. Usually, in the invoices it is customary to mention only the respective services and not also the name under which they are offered. The important thing is whether or not such services were offered on the market under the sign BOLT. Taking into account that in connection with transport services LOGISTICS is not distinctive and OY is the legal form of the company, BOLT remains the most distinctive element of the company’s name. In the absence of any evidence to the contrary the Cancellation Division assumes that the freight forwarding and transport services were provided under the name BOLT LOGISTICS OY which is satisfactory as it will be discussed further in the section ‘Nature of use - use of the mark as registered’.

The evidence submitted, when assessed as a whole, shows that the contested EUTM was used in such a way as to identify particular transport services in Class 39 thus making it possible for the relevant consumer to link the services to a certain commercial origin and to distinguish them from the services of other providers. The Cancellation Division considers, therefore, that the evidence, when assessed in its entirety, shows 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 EUTM.

The mark was registered as a word mark, BOLT. It was used as , or . The Cancellation Division considers all these forms acceptable.

The colour and stylised script do not alter the distinctive character since the word as such is clearly legible. The same applies to the additional figurative elements or words (the circle below the letter O, Logistics and OY or BY TXFY), since they are either decorative and will not be ascribed any trade mark significance by the relevant consumers (the circle), are descriptive of the nature of the services and the form of the company (LOGISTICS OY) or indicate other (previous) trade marks or business name of the EUTM proprietor (by TXFY). As such, these elements do not alter the distinctive character of the mark either. Against this background it must be concluded that the signs used constitutes use of the contested EUTM under Article 18 EUTMR.

Extent of use and Nature of use: Use in relation to the registered services

Concerning the 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.

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 contested EUTM is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation for 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. 

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)

It is clear from the entire body of evidence before the Cancellation Division that the contested EUTM has been used in relation to transport services, i.e. services of scooter sharing and ride-hailing.

Some invoices show also the use of the mark in relation to freight forwarding services in Class 39. Freight forwarder, forwarder, or forwarding agent, is a person or company that organizes shipments for individuals or corporations to get goods from the manufacturer or producer to a market, customer or final point of distribution. Forwarders contract with a carrier or often multiple carriers to move the goods. In relation to these services, the Cancellation Division notes that apart from those invoices referring to 2014-2015 no other information was filed to see to which extent these services were provided or if they were ever provided afterwards. Therefore it considers that the evidence is not sufficient to acknowledge a genuine use of the mark for these particular services.

The applicant claimed that the scooter sharing is in fact rental of scooters and this is not covered by the services of transport in Class 39. However, the Cancellation Division deems that they are, or at least they overlap, for the reasons given hereinbelow. Transport of anything or any person by any manner or means is classified in Class 39. From air transport to distribution of electricity, any service that has movement as its primary function is classified in this class. Rental of vehicles, under which scooter sharing and ride-hailing fall, means that a company is renting to an individual the means of transportation (scooter, bicycle, car etc.) for a short period of time and for a fee, without the driver. The operation of the respective vehicle is left to the individual who rents the vehicle instead of being the company the one in charge. The key factor in case of transport is the action as such and it is less important who is operating the vehicle (the person who rents the vehicle or the driver in case of a taxi) or who takes the decision of pick-up and drop-off (a company in case of a public transport or the customer in case of a taxi or a rented scooter).

The applicant argued that if at all, the submitted material indicates that the term “BOLT” is used as a brand for a scooter, named BOLT, but not for a rental service because the rental service is branded “Taxify”. The issue of rebranding from Taxify to Bolt has been explained above. The fact that the name BOLT is also imprinted on the scooters as such does not mean that the scooters bear that mark. The evidence shows that the mark/model of the respective scooters is ‘Ninebot ES2’ or ‘Ninebot by Segway KickScooter’ and the scooters are marked with the name BOLT only with the purpose to identify the respective vehicles as those objects used to provide the services under the mark BOLT, the same way as the vehicles that are rented by a car rental company bear different trade marks (e.g. Ford^®, Mercedes^®, Audi^®) but are all identified as belonging to the rental company.

It is true that the proprietor submitted (Annex 4 of 01/08/2019) partly redacted invoices, which display the date of issuance, the remitter’s address, the order/shipment/customer number, the contract in relation to which the services were provided. This is not, of its own and in the absence of evidence to the contrary, sufficient to raise significant doubts as regards the genuineness of these documents. Invoices are documents relevant in trade and with tax implications. In addition, it is common practice for certain data and information therein to be crossed out, for example for data protection or commercial related reasons. In addition, the indication of the city and the corresponding Member State allows for the inference that the documents relate to the relevant territory. Moreover, the proprietor also made available other invoices for the period before the revocation action disclosing the amounts received for its services and also corroborating evidence, in the form of press articles, which further supports the information given in the witness statements. Therefore, when assessing the evidence as a whole and in view of the period and frequency of use and the market concerned, it must be considered that the materials submitted are sufficient to show that the EUTM proprietor has seriously tried to maintain or create a commercial position in the relevant market and that there is sufficient information concerning the commercial volume, the duration, and the frequency of use in relation to transport services as well as for transport agencies.

Taking into account the evidence of use filed by the proprietor and bearing in mind that the holder is not required to prove use of all the conceivable variations of the category of services and also the principles set out in the above mentioned Aladin judgement and in particular the legitimate interest of the proprietor in being able in the future to extend his range of services, within the confines of the terms describing the services for which the trade mark was registered, the Cancellation Division deems that genuine use of the trade mark must be established also for the following registered services in Class 39 that are strictly connected with the main activity of transport: Transport information; Transport reservation; Consultancy, advice and information relating to all the aforesaid services.

As regards the remaining services in Class 39 and all the services in Classes 35 and 36 there is no evidence that the mark was used to identify such services provided by the proprietor to third parties as independent services. The services in Class 35 are those provided by persons or organisations that directly assist in the operation and management of another commercial or industrial enterprise. Simply because an enterprise conducts some kind of business, it does not mean that the activity of that enterprise is in Class 35. If that were the case, all businesses, regardless of their specific activities, would provide Class 35 services. Since invoices are issued in any sale transaction, any business issuing an invoice would provide these services in Class 35, which is not the case. Administrative services relating to the "invoicing" or to compilation of data for example belong to Class 35. If a service is administrative in nature, it is normally classified in Class 35 even if it is ancillary to services in other classes. The invoicing services the EUTM proprietor claims it is providing are ancillary to the main services of transport and they are not independently provided for other companies.

The EUTM proprietor neither provides services of business management of transport and logistics companies in Class 35.

The EUTM proprietor has an application named Bolt Driver which is directed at individuals (drivers) who wish to provide transport services under the Bolt trade mark. This forms part of the proprietor’s transport services.

As regards the other application Bolt Fleet, the EUTM proprietor states that the fleet owner portal https://fleets.bolt.eu login page for Bolt Fleet services is offered by Bolt to companies for management of drivers, and in connection with the transportation, financial, invoicing and business management and support services, and that Bolt Fleet is directed to owners of multiple vehicles who want to create their own fleet with BOLT. The evidence filed (e.g. Annex 4 of 18/05/2020) shows that the company that is a “partner” of the EUTM proprietor has access to Bolt Fleet Partner Account at fleets.bolt.eu. This is a portal where Bolt provides its partners with relevant business information, statistics and documents, including accounting documents. It is further explained that Bolt compiles and provides the partners with overview of and access to: a) information on the respective partner’s drivers and cars; b) daily and weekly reports on the provided transport services by the respective partner. The reports include information on fares, fees, discounts, driver bonuses, refunds to passengers, overview and statistics of rides completed by drivers and their earned sums; c) invoices sent by Bolt to passengers on behalf of the partners. Furthermore, in their statements, the partners of the EUTM proprietor affirm that they provide transport services by using the Bolt trade mark under the licence of the proprietor.

The Cancellation Division considers that there is not sufficient information on the exact nature of the services offered by the proprietor under the mark ‘BOLT’ on this platform or portal so that it can be determined with the required degree of certainty whether they fall under any of the registered services in Class 35 or not. Furthermore, in relation to such services the documents (e.g. those in Annex 7 of 01/08/2019) show data mostly referring to the period after the filing date of the revocation request. Admittedly the statements in Annex 4 of 18/05/2020 refer to 2016, 2017 or 2018 stating that, for example, ‘the Company operates as Bolt Fleet Partner since 02/12/2016 and provides transportation services by using the Bolt trade mark under the licence of Bolt Technology OÜ (previously Taxify OÜ …)’. All further state that ‘during the period from 7 March 2019 to 25 March 2019, the Company provided transportation services by using the Bolt trademark’. Once more, the use of the sign BOLT in 2016, 2017 or even before the date the former EUTM proprietor (Bolt Logistics OY) confirmed¹ that such use started with its consent (i.e. from 09/12/2018), cannot refer to the use of the contested EUTM BOLT.

Consequently, while it may very well be the case that the proprietor is also active under the contested EUTM in connection with some of the registered services in Class 35 the fact remains that, as detailed above, there is either no evidence at all or the one made available is clearly insufficient in supporting a conclusion of genuine use.

Finally in relation to the services in Class 36 there is no evidence of genuine use of the EUTM. In particular as regards the financial services it is noted that the EUTM proprietor filed Annex 7 c) which in fact refers to a contract under the name of Taxify who will be in charge of carrying out ‘Remote financial and other management services’, the trade mark Bolt not being mentioned.

In accordance with the case-law, genuine use of a mark cannot be proved by means of probabilities or suppositions but must be demonstrated by solid and objective evidence which demonstrate actual and sufficient use of the trade mark on the market concerned (15/12/2016, T-391/15, ALDIANO / ALDI, EU:T:2016:741, § 45 and the case-law cited therein).

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for part of the contested services for which it must, therefore, be revoked.

The EUTM proprietor has proven genuine use only for some of the contested services in Class 39: Transport; Transport; Transport agencies; Transport information; Transport reservation; Consultancy, advice and information relating to all the aforesaid services; 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 26/03/2019.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Oana-Alina STURZA

Ioana MOISESCU

Michaela SIMANDLOVA

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.