CANCELLATION No C 42 402 (REVOCATION) 

Punch Powertrain N.V., Industriezone Schurhovenveld 4 125, 3800 Sint-Truiden, Belgium (applicant), represented by Fencer BV, Esplanade 1 box 5, 1020 Brussels, Belgium (professional representative)

a g a i n s t

Punch Corporation N.V., K.L. Maenhoutstraat 49, 9830 Sint-Martens-Latem, Belgium (EUTM proprietor), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative).

On 10/06/2021, 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 11 852 118 are revoked in their entirety as from 23/03/2020.

 

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

 

REASONS

 

On 23/03/2020, the applicant filed a request for revocation of European Union trade mark No 11 852 118 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Class 40: Treatment of materials.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that for a continuous period of five years the EUTM has neither been used for the registered goods and services nor in the form as registered.

The EUTM proprietor submits the evidence listed in the section ‘Grounds for the Decision’ and argues that these documents prove continuous genuine use for fuels, machines and tools as well as transport and research thereof in the European Union throughout the relevant time period. It argues that the EUTM consists of the words BLU and PUNCH, the first element obviously referring to the colour blue. Considering that the invoices show use of the sign ‘PUNCH’ always in combination with the colour blue, they should be considered to prove use of the EUTM.

The applicant explains the existing history between the parties and background to this dispute and submits that no genuine use of the EUTM has been proven.

It argues that the evidence, exclusively comprised of invoices, is flawed in various aspects as it does neither show outward use of the EUTM as a trade mark nor in the form as registered or in an equivalent form. The invoices that are directed to companies belonging to the same group of companies as the EUTM proprietor itself reflect mere internal use and must thus be disregarded.

While the volume may at first sight seem impressive or genuine, the applicant also takes issue with the actual use in terms of volumes (quantitative aspect). In this regard, it contends first, that part of the evidence dates from outside the relevant period and second, that the goods or services concerned are not clearly identified and the EUTM proprietor has not provided the required explanations.

By reference to the Office’s Guidelines, the applicant stresses that the Office cannot take the place of the proprietor and dissect vast volumes of material to identify one or more documents that could potentially establish genuine use and for what specific goods.

Where the description of the goods or services does not seem to include a third party trade mark, the language used is either that general or that vague (referencing projects names like WOMBAT, GRIZZLY and a number of product or service codes) that is not possible for the Office nor the applicant to consider the exact nature of the goods or services offered in the absence of supporting materials or any clarifications from the EUTM proprietor. Even at a glance, the majority of goods is not branded with ‘BLUPUNCH’ but originates from third parties and is sold under those marks (e.g. LIEBHERR or SCHLEMMER).

In its reply, the EUTM proprietor does not respond to the points raised by the applicant except regarding the nature of use. In this regard, it merely reiterates its previous arguments and maintains that the evidence shows use of the EUTM in a form that does not alter its distinctive character.

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 22/10/2013. The revocation request was filed on 23/03/2020. 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 23/03/2015 until 22/03/2020 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 25/05/2020 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

 Item 1: Nineteen invoices issued in 2014 by Punch Metals NV, Punch Powerglide Strasbourg or PUNCH CORPORATION to different customers in Belgium, Slovakia, the Netherlands and Germany (all apparently third parties, including one invoice to the applicant). Part of the invoices only indicate article numbers that cannot be cross-referenced with any other material to determine the exact goods or services mentioned. The same applies where indications such as ‘LU AUTRITT RE’ or ‘VT5-Apoollo: A sample review workshops’ are added. The descriptions in the remaining invoices refer to the purchase of laser machines that are specified as ‘TRUMPF TLF5000’ or seem to refer to the rent or take over of certain equipment as e.g. ‘Huur equipment tankdivisie’ – ‘huurovereenkomst met koopoptie’ (translated: ‘rental equipment tank division - rental agreement with purchase option’) inter alia in invoices No. 2014-038 of 14/07/2014 and No. 2014-023 of 03/06/2014 or ‘overname equipment’ (translated: takeover equipment) in invoice No. 2014-060 of 28/11/2014.

 Item 2: Eighteen invoices issued in 2015 by Punch Metals NV, Punch Powerglide Strasbourg or PUNCH CORPORATION to different customers in Belgium, France, Germany, UK, Spain, Poland and the Netherlands. Except for six invoices to Punch Powerglide Strasbourg, Punch Wishes S.A.S. or Punch Metals Hamont NV and concern insurance and management services, the invoices are addressed to third parties. The latter refer to a variety of goods including robot welding cells AWL ZM-L 2+3 or ABB 54CPlus M2000, vertical machining center Chiron FZ125, drilling machines SerrMac TC032N or Syderic, Presses Remiremont PF63VA, LBM MBG630, LBM ELA80 or BLISS C100, sport welding machine ARO, grinding machine TACCHELLA Crossflex A 160 RAS-A, Gear hobbing machine Liebherr LC82, welding robot REIS RV16, welding units Schlemmer WS 40/4 SK, etc., welding machines CERDI Sammy 350, Dust & Fume collector Donaldson DFPRO-12, etc..

 Item 3: Twenty-five invoices issued in 2016 by Punch Motive International N.V. or Punch Powerglide Strasbourg to the applicant with address in Belgium, except for two invoices that are addressed to Punch Wisches S.A.S. and Punch Motive International. They concern specific tests (e.g. ‘LPH Tests @ Punch Powerglide’, ‘1st test for fuel and material’, ‘PPB-Y16-1 << Wombat/LPH test>>’). Although some invoices do not specifically mention the word “test”, they all use the same product code (103016), the descriptions are all similar and at least part of them indicate that the invoices relate to tests in smaller letters below as the following examples show: and .

 Item 4: Thirty-two invoices issued in 2017 by Punch Motive International N.V. or Punch Powerglide Strasbourg to the applicant with address in Belgium, except for one invoice that is addressed to Punch Powerglide Strasbourg SAS. Part of the invoices issued to the applicant explicitly refer to specific tests, others just use a similar product description and the same article code (103016).

 Item 5: Twenty-three invoices issued in 2018 by Punch Powerglide Strasbourg to the applicant which also seem to concern tests as the description is the same or similar to that of the invoices explicitly relating to tests and the article code used is always the same as used for tests (103016). In particular, where ‘fuel & transport’ are invoiced, there is always a reference that at least sometimes can be clearly linked to a test.

ASSESSMENT OF GENUINE USE – FACTORS

 

Use in relation to the registered goods and services

 

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 EUTM is registered for the goods and services set out above in the section ‘Reasons’ of this decision. The invoices that are addressed to third parties, mainly the applicant, largely seem to concern specific tests, at least in the years 2016-2018. Theoretically, such tests could have been industrial tests and as such could fall under the categories of industrial analysis and research services or technological services. However, in the absence of any further information it cannot be determined what kind of tests the invoices refer to and whether such use would accordingly fall under any of the registered goods or services.

As regards the few invoices from 2015 that seem to concern goods like drilling, grinding or welding machines, these seem to be marketed under third party product marks like Liebherr or Schlemmer, but not under (BLU)PUNCH, as the applicant has also pointed out. The EUTM proprietor has not provided any contrary explanation for the mention of such third party brands in the description of the goods.

While the sign PUNCH is depicted on the upper left corner of all the invoices, in relation to goods which are clearly branded with third party marks, the logo of the EUTM proprietor could at best be perceived as the brand relating to the corresponding retail services, but certainly not as the brand identifying the commercial origin of the goods sold.

Without any clarifications from the EUTM proprietor or supporting material, from the submitted invoices it cannot be deduced without resorting to probabilities and assumptions that the use shown actually refers to any of the registered goods or services.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR requires, inter alia, 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 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).

The EUTM proprietor submits that the verbal element ‘BLU’ refers to the colour blue and is perceived as such by the relevant public. Therefore, the EUTM proprietor argues that the use of the verbal element PUNCH in blue colour is an acceptable variation of the contested EUTM.

The applicant argues that ‘BLU’ is distinctive for the registered goods and services and the omission of this element therefore alters the distinctive character of the EUTM.

It is thus appropriate to consider whether the form in which the EUTM is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the EUTM have the same distinctive character. First, the distinctive character of the EUTM must be clarified. Then, it must be considered whether or not the mark as used alters this distinctive character.

Assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the trade mark (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 36).

The distinctive element of the EUTM is its verbal element which is represented in bold standard upper case letters in blue colour. Its stylisation and colour will be perceived as merely decorative. Even though the verbal element BLUPUNCH may be perceived as comprising a variation of the word ‘blue’ combined with the word ‘punch’, both elements BLU and PUNCH are equally distinctive for the goods and services at issue as their meaning has no direct relation to the goods and services as the applicant submits.

Therefore, the distinctive character of the EUTM arises from the verbal element BLUPUNCH as a whole, its components BLU and PUNCH being of equal relevance for that purpose. The EUTM proprietor has not brought forward any arguments to the contrary.

The evidence does neither show use of the EUTM as registered nor of its only verbal element ‘BLUPUNCH’ at all. It only shows use of the sign PUNCH as a word sign in the various company names and in blue colour as shown below, on its own, together with the sign ‘Powerglide’ or in combination with further elements such as ‘Motive International N.V.’ or ‘Corporation’:

The element ‘PUNCH’ is distinctive as mentioned above. A trade mark can be used independently, even if juxtaposed to another mark such as ‘Powerglide’ in this case. The addition ‘Corporation’ merely indicates the legal form of a company and the same applies to ‘International N.V.’, which further adds the international focus of the company. These additions do not add to the distinctive character of the above-mentioned signs. The element ‘MOTIVE’ (as an adjective) means ‘having the quality of causing or initiating movement; producing, or used in the production of, muscular or mechanical motion; bringing about a change of motion’ (www.oed.com/view/Entry/122713?rskey=Lvc2oV&result=2&isAdvanced=false#eid, accessed on 02/06/2021). As such, it may have a relation to some of the goods and services such as motors and engines or transport, but not for others such as treatment of materials for which it is thus distinctive. The standard font and the blue colour used in all these signs will be perceived as merely decorative.

In light of the aforesaid, the distinctiveness of the signs used only arises from the verbal element PUNCH, except for the sign PUNCH MOTIVE INTERNATIONAL N.V. where it may arise from PUNCH MOTIVE at least in relation to some of the relevant services. As the verbal element ‘BLU’ is distinctive in the EUTM, its omission in the use shown alters the distinctive character of the contested EUTM. In this regard, it is noted that the merely decorative use of the colour blue cannot be perceived as equivalent of the verbal element ‘BLU’ in the contested EUTM as the EUTM proprietor suggests. The evidence therefore only shows use of signs which significantly alter the distinctive character of the EUTM as registered which arises from the verbal element BLUPUNCH.

Consequently, the signs used do not constitute use of the contested EUTM within the meaning of Article 18(1)(a) EUTMR.

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).

It follows from the above that the EUTM proprietor has clearly failed to prove genuine use, since it has not submitted any suitable evidence of the nature of use. The invoices merely show use of signs that differs from the contested EUTM in a way that, for the reasons set out above, affects its distinctive character and can therefore not be considered as use of the contested EUTM. Furthermore, the evidence does also miss clear indications regarding the goods and services for which use is shown.

Conclusion

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

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 23/03/2020.

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

 

The Cancellation Division

Natascha GALPERIN

Elena NICOLÁS GÓMEZ

Martin LENZ

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.