CANCELLATION No 32 745 C (REVOCATION)

Gemeente Enschede legal entity under public law, Hengelosestraat 51, 7514 AD Enschede, The Netherlands (applicant), represented by Inaday, Hengelosestraat 141, 7521 AA Enschede, The Netherlands (professional representative)

a g a i n s t

Volkswagen Aktiengesellschaft, Berliner Ring 2, 38440 Wolfsburg, Germany (EUTM proprietor), represented by Florian Freiberg, Brieffach 011/1770, 38436 Wolfsburg, Germany (employee representative).

On 28/05/2019, 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 11 792 017 are revoked in their entirety as from 08/02/2019.

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

REASONS

The applicant filed a request for revocation of European Union trade mark No 11 792 017 ‘STREET UP!’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 12: Motorised land vehicles and parts therefor; motors and engines and drive systems for land vehicles, drive mechanisms for land vehicles and parts therefor; couplings for land vehicles; chassis for land vehicles; vehicle chassis; bodies for vehicles; pneumatic tyres, inner tubes for tyres, non-skid devices for vehicle tyres, repair outfits for inner tubes, adhesive rubber patches for repairing tyre inner tubes, tyres for vehicle wheels, studs for tyres, anti-skid chains, snow chains, vehicle wheel rims, solid rubber tyres for vehicle wheels, vehicle wheels, wheel hubs for cars; suspension shock absorbers for vehicles, shock absorbing springs for vehicles; head-rests for vehicle seats; vehicle seats; rearview mirrors; anti-theft alarms for vehicles, anti-theft devices for vehicles; cigar lighters for automobiles; vehicles, motor-vehicles and parts thereof; motor buses; lorries; caravans; trailers and semi-trailers for vehicles, trailer hitches for vehicles; tractors; motorcycles; mopeds; omnibuses.

Class 28: Model vehicles, model cars and toy cars; scale model kits [toys]; vehicles for children (included in class 28), scooters (children's vehicles); playing cards; soft toys and other soft toy articles; entertainment and games equipment, video game equipment, portable games with LCD display.

Class 35: Retail and wholesale services in relation to motor vehicles, motor vehicle parts and motor vehicle accessories; retail and wholesale mail order services in relation to motor vehicles, motor vehicle parts and motor vehicle accessories; retailing and wholesaling via the internet of motor vehicles, motor vehicle parts and motor vehicle accessories; retail and wholesale teleshopping services in relation to motor vehicles, motor vehicle parts and motor vehicle accessories; collection (except transport thereof) of various motor vehicles, motor vehicle parts or various motor vehicle accessories, for others, enabling customers to view and purchase these goods conveniently in a retail sales outlet; arranging of contracts, for others, for the buying and selling of motor vehicles, motor vehicle parts and motor vehicle accessories; business administration and organisational administration of vehicle fleets, for others.

Class 37: Conversion, fix, maintainance services, disassembly, maintenance, care, purification and vehicle painting, motors and engines and all parts therefor, assembly of vehicles, motors and engines and all parts therefor, for others, vehicle breakdown assistance [repair]; custom conversion of motor vehicle bodies, chassis, motors and engines (tuning), included in Class 37.

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.

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 23/08/2013. The revocation request was submitted on 08/02/2019. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 22/02/2019, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit until 27/04/2019 to submit evidence of use of the EUTM for all the goods and services for which it is registered.

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 any of the goods and services for which it is registered 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 revoked in their entirety and deemed not to have had any effects as from 08/02/2019.

COSTS

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

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

Cindy BAREL

María de las Nieves CANTÓ SOLER

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 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.