CANCELLATION No 14 279 C (INVALIDITY)

Rica Levy International (Société Anonyme), Zone Industrielle, 1ère Avenue, 6001 Métres, 06510 Carros, France (applicant), represented by Cabinet Marek, 28 rue de la loge, 13002 Marseille, France (professional representative)

a g a i n s t

Ipekyol Giyim Sanayi Pazarlama ve Ticaret A.S., Merkez Mah. Kazim Orbay Caddesi No: 35 Şişli, Istanbul 34381, Turkey (EUTM proprietor), represented by Esquivel & Martin Santos European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative).

On 24/01/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 13 552 518 , namely against some of the goods and services in Classes 9, 14, 18, 25 and 35. The application is based on earlier French trade mark registration No 1 391 992 ‘TWIST’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that due to the similarity/identity of the goods and services and the similarity of marks there is a likelihood of confusion.

The EUTM proprietor requested the applicant to submit proof that the earlier mark has been put to genuine use in France. The EUTM proprietor argues that there is no likelihood of confusion because the goods and services in conflict are dissimilar.

The applicant submitted the requested proof of use (listed below) and provided information as to its content.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based French trade mark registration No 1 391 992.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 03/01/2017. The date of filing of the contested trade mark is 11/12/2014. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in France from 03/01/2012 to 02/01/2017 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested mark, use of the earlier mark had to be shown also for the period from 11/12/2009 to 10/12/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 25: Ready-made clothes of all kinds including work clothes; belts for clothing in all materials, including leather; headgear; footwear.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 08/06/2017, the Office gave the applicant until 08/09/2017 to submit evidence of use of the earlier trade mark.

On 05/07/2017, within the time limit, the applicant submitted evidence as proof of use.

The evidence is the following:

ITEM 1 33 invoices in French accompanied by a translation into English, issued by the applicant to various clients (retailers) in France during the relevant periods from 30/11/2011 to 08/03/2016. The trade mark ‘TWIST’ appears in relation to goods with the following description corresponding to model numbers identified in brackets:

• RL LIMITED STONE SA AHQ400 DAQXG MAN

100% COTON (QA101B7/62034235)

• RL LIMITED BLUE C1 SA AHQ400 DAQXG MAN

100% COTON (QA101B7/62034235)

• RL LIM BLUE C1 AHQ400 DAQXG MAN 100% COTON (QA101B7/62034235)

• RL. LIMITED. RAW LV AHQ400 A20ML MAN 100% COTON (QA101B3/62034231)

• LIMITED SW BRUSHED AIH700 DAOML MAN 100% COTON (QA101F7/62034235)

• JEAN OFF. SPE SW BRUSHED AIH700 DAOML MAN 100% COTON (QA101F7/62034235)

ITEM 2 A copy of a label representing the trade mark ‘TWIST’ in a slightly stylised typescript used in relation to jeans .

ITEM 3 Four undated pictures of pieces of clothing (jeans trousers, jeans jacket, jeans skirt) bearing labels showing the signs and . A paper label attached to what looks like a jeans skirt displays the following information: Mod. D36900, Tess.10XD, Col. 390, GONNA.

Having examined the material listed above the Cancellation Division finds that the evidence is insufficient to establish genuine use of the trade mark.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered (emphasis added).

It cannot be inferred from the presented invoices what are the goods displayed in the invoices. The description refers to the colour, to the material the goods are made of and possibly other characteristics of the goods but do not indicate their particular kind. Contrary to the explanation provided by the applicant the fact that they are made of 100% cotton does not necessarily lead to the conclusion that the goods are various types of clothing. These may well be other goods made of cotton such as fabrics, textile, towels, etc. which are not covered by the specification of the earlier mark. In the absence of a catalogue showing and identifying the particular goods by their model number it is impossible for the Cancellation Division to determine the particular kind of goods. The only indication of a real model shown on one of the pictures submitted as ITEM 3, namely Mod. D36900, Tess.10XD, Col. 390, GONNA does not match any of the model numbers displayed in the invoices (see the model numbers in brackets in the description of the documents submitted as ITEM 1).

The undated pictures and a label do not help the applicant’s case either since no link can be made between these goods and the description of the goods in the invoices.

The only items designated with the trade mark and displayed in the invoices that can possibly be identified by the description are the ones indicated as JEAN OFF. SPE SW BRUSHED AIH700 DAOML MAN 100% COTON (QA101F7/62034235). It can be assumed that ‘JEAN’ refers to or translates into English as ‘jeans’. However, in French ‘JEAN’ is also a popular given name and may designate a particular line of goods. Such an assumption is supported by the fact that many goods in the invoices are designated by names such as ‘GABRIEL’ (for instance in the invoice dated 24/12/2014), ‘MELISSA’ (invoice dated 26/02/2016), etc.

Even under the assumption in favour of the applicant (which does not prejudice the interests and rights of the EUTM proprietor) that ‘JEAN’ refers to or translates into English as ‘jeans’ there are just four sales of these goods (invoice dated 03/10/2013 for EUR 284.18 (26 items); invoice dated 24/12/2014 for EUR 369.60 (33 items); invoice dated 23/02/2015 for the amount of EUR 238.92 (22 items) and invoice dated 07/08/2015 for the amount of EUR 692.34 (66 items)) for the total amount of EUR 1585.04 (147 items) which is insufficient to justify the extent of use of the earlier mark, bearing in mind the particularities of the clothing market.

More importantly, only the first invoice for the amount of EUR 284.18 dated 03/10/2013 is issued within the first relevant period. A single sale of 26 pairs of jeans for less than EUR 300 is manifestly insufficient for proving the extent of use of the earlier mark.

Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

In the current case the Cancellation Division cannot opine conclusively on the use of the earlier trade mark in relation to the goods on which the application for a declaration of invalidity is based without resorting to probabilities and assumptions. No solid evidence has been presented proving the genuine use of the earlier mark for the relevant goods covered by the earlier mark.

Therefore, the application must be rejected pursuant to Article 19(2) EUTMDR in conjunction with Article 64(2) EUTMR.

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 applicant is the losing party, it must bear the cancellation fee as well as the costs incurred by the EUTM proprietor 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 representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Catherine MEDINA

Plamen IVANOV

Judit NÉMETH

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.