CANCELLATION No 18 808 C (REQUEST FOR ASSIGNMENT)

Craft Beer Importers Canada Inc., Unit 11, 1715 - 27 Avenue NE, Calgary, Alberta T2E 7E1, Canada (applicant), represented by Norton Rose Fulbright LLP, 3 More London Riverside, London SE1 2AQ, United Kingdom (professional representative)

a g a i n s t

Peter Reimann, Biberngasse 33, 5020 Salzburg, Austria (EUTM proprietor), represented by Zumtobel Kronberger Rechtsanwälte OG, Rainbergstr. 3c, 5020 Salzburg, Austria (professional representative).

On 22/07/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity with relief seeking the assignment of European Union trade mark No 14 100 911 pursuant to Article 21 EUTMR is rejected in its entirety.

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

REASONS

On 09/11/2017, the applicant filed a request for assignment of European Union trade mark No 14 100 911 ‘BIERADVENT’ (word mark), filed on 20/05/2015 and registered on 22/10/2015 in respect of the following goods: paper cardboard; gift-wrap; packing cardboard; boxes for packaging [paper]; printed matter; bookbinding material; photographs; stationery in Class 16, household or kitchen utensils and containers; bottle openers, electric and non-electric; corkscrews, electric and non-electric; unworked or semi-worked glass (except glass used in building); glass ware, porcelain ware, earthenware and beer mugs, not included in other classes in Class 21, games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees in Class 28 and beers in Class 32 (hereinafter the ‘EUTM’). The application is based on: (1) Canadian trade mark registration No TMA 872 533 ‘BEERADVENT’ (word mark), filed on 17/05/2012 and registered on 04/03/2014 for goods and services in Classes 16, 32, 35 and 41 (the ‘Canadian Mark’) and (2) US trade mark registration No 4 586 710 ‘BEERADVENT’ (word mark), filed on 19/06/2012 (and claiming the priority of the Canadian Mark) and registered on 19/08/2014 for goods and services in Classes 16, 32, 35 and 41 (the ‘US Mark’), (the Canadian and the US Marks, hereinafter collectively referred as the ‘Earlier Marks’). The applicant invoked Article 60(1)(b) EUTMR in connection with Article 8(3) EUTMR with relief seeking the assignment of the contested EUTM pursuant to Article 21 EUTMR (Article 18 EUTMR at the moment of filing the request).

In its further submissions of 12/09/2018, the applicant requests that the EUTM is ‘cancelled for invalidity in accordance with Article 60(1) EUTMR or, in the alternative, assigned’ to it in accordance with Article 21(2)(a) EUTMR.

Preliminary remark

As mentioned above in the ‘Reasons’ section, the applicant relied initially on the relief provided by Article 21 EUTMR, namely the assignment of the EUTM.

It is only in its subsequent observations of 12/09/2018 and in reply to the EUTM proprietor’s arguments, that it quotes under point 2 ‘Grounds for the cancellation of the Trademarks’ the provisions of Article 60(1)(b) EUTMR and those of Article 8(3) EUTMR and mentions under point 5 that the applicant is now seeking cancellation of the Trade marks under Article 60 of the EUTMR. Furthermore, under point 6 ‘Conclusion’, it requests that the EUTM is cancelled for invalidity in accordance with Article 60(1) EUTMR or, in the alternative, assigned to the applicant in accordance with Article 21(2)(a) EUTMR.

It is noted from the outset that a request for assignment pursuant to Article 21 EUTMR cannot be invoked cumulatively with a request for invalidating the EUTM under the same ground of Article 60(1)(b) EUTMR. In other words, the applicant has to choose one type of relief or the other and not rely on both by using a wording ambiguous and not unequivocal (is cancelled or in the alternative assigned) that leaves it up to the discretion of the Office to define the extent of the request and the relief sought.

In addition, neither the EUTMR nor the EUTMDR or EUTMIR contain any provision allowing the filing of further grounds in support of an application, for the extension of its scope, the change of the cause of action or of the relief sought after the date when the application has been submitted with EUIPO.

Against this background, as the applicant’s request of 12/09/2018 to have the EUTM invalidated on the grounds of Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR changes the nature of the relief initially sought, it has to be rejected as inadmissible.

The Cancellation Division will therefore examine the application only insofar as it is based on the grounds of Article 60(1)(b) EUTMR in connection with Article 8(3) EUTMR with relief seeking the assignment of the contested EUTM pursuant to Article 21 EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The Cancellation Division deems it necessary to address at this point the confidentiality request for the applicant’s submissions and evidence of 09/11/2017. In this regard, it is recalled that where a claim for confidentiality has been submitted by the party by use of a standard ‘confidential’ stamp on the cover page of the submission, or of a general statement that the document ‘contains confidential information’ or by ticking the ‘confidential’ tick-box when using the electronic communication platform, yet the documents enclosed contain no explanation nor indication of any special interest nor any attempt on behalf of the party to justify the confidential nature or status of the submission (as in the case at hand), the Office will remove this indication. This applies to all submissions where the party claims confidentiality ‘by default’, yet provides no justification in support of its claim. The party can at any time before the receipt of a request for inspection of files, invoke and sufficiently justify a special interest in keeping the document confidential. Based on the above, the Cancellation Division will remove the indication that the documents are confidential and proceed with the analysis of the evidence in this case accordingly.

In the statement of grounds of 09/11/2017, the applicant contends that the contested EUTM has been registered by its agent or representative and without the applicant’s consent and requests for the assignment of the mark.

The relationship between the parties and the chronology of events that led to the filing and registration of the EUTM, as presented by the applicant, can be summarised as follows:

• The applicant is a Canadian company established in 2011, as a craft beer import agency ‘to bring the best beers of the world to customers, amongst others in the form of ‘BEERADVENT’ calendars’.

• Kalea GmbH (hereinafter ‘Kalea’) is an Austrian company set-up in 2010 and specialising in beer related gifts, offering a platform to craft brewers to offer their beer specialities. The managing director of Kalea is the EUTM proprietor, Mr Reimann.

• In 2012, the applicant and Kalea began a cooperation to distribute their respective products. In the first year of their relationship, the applicant purchased beer calendars from Kalea and sold them in Canada. These beer calendars contained 24 bottles of beer, some of which were sourced and paid for by the applicant and some sourced by Kalea. The applicant ‘independently commissioned the artwork for the box of the ‘BEERADVENT’ beer calendar, registered ‘BEERADVENT’ as a trade mark in US and Canada and supplied its artwork in electronic form to Kalea, who then printed the calendar boxes, assembled and shipped the ‘BEERADVENT’ beer calendars’ to the applicant.

• The trade mark ‘BEERADVENT’ was developed by the applicant with no involvement from the EUTM proprietor.

• In 2013, the applicant made its own calendar, sourced all the beers, remunerated the breweries directly and had these beers shipped to Canada where the calendars were assembled.

• In 2014 and 2015, in addition to making ‘an own calendar with premium beer’, the applicant also bought and sold a calendar made by Kalea ‘containing cheaper, canned beer’. This ‘Kalea’ calendar was sold by the applicant under an exclusive agency agreement, pursuant to which the applicant was ‘the sole North American distributor of the Kalea calendar and placed its trade mark ‘BEERADVENT’ on these calendars’.

• On 23/06/2015, the applicant and Kalea entered into a trade mark license agreement, pursuant to which Kalea’s use of the ‘BEERADVENT’ mark was restricted to the United States.

• ‘Shortly after the relationship between Kalea and the applicant begun to sour in April 2015’, Kalea sold its calendar generically as a ‘Beer Calendar’ or ‘Bier Kalendar’ and ‘had never used the mark ‘BEERADVENT’ other than under the trade mark agreement’.

• In May 2015, Mr Reimann, ‘apparently acting as a straw man for Kalea’ sought to register the contested EUTM.

• In 2016, Kalea terminated all the agreements under which the applicant had distributed ‘Kalea’ calendars.

The applicant provides further detailed explanations as to why the requirements of Article 8(3) EUTMR are fulfilled in the case at hand and refers in supports of its arguments to the Office’s Guidelines.

In its observations of 12/09/2018 and in reply to the EUTM proprietor arguments, the applicant essentially maintains that the requirements of Article 8(3) EUTMR are met. It makes several references to the Office’s Guidelines, to previous decisions of the Office and to court judgements as well as to the evidence filed by the proprietor and requests either for the invalidation of the EUTM or for its assignment.

The evidence filed by the applicant in support of its observations consists of the following documents:

Evidence filed on 09/11/2017

Exhibit 1: Affidavit given on 20/07/2017 by Mr Don Tse, Chief Financial Officer of the applicant and providing information on the relationship of the applicant and Kalea and the events that led to the filing of the EUTM, essentially as these have been described above (hereinafter the ‘DT Affidavit’).

Exhibit 2: Trade mark license agreement effective as of 22/06/2015 entered into by the applicant and Kalea (hereinafter the ‘License Agreement’).

Exhibits 3 and 4: Extracts from https://euipo.europa.eu/eSearch detailing the particulars of the EUTM and the particulars of European Union trade mark registration No 14 100 952 ‘BEERADVENT’, covering goods in Classes 16, 21, 28 and 32, also in the name of Mr Peter Reimann.

Exhibits 5 and 6: Extracts from http://www.wipo.int/branddb with a printout date on 02/08/2017 and detailing the particulars of the Canadian Mark and respectively of the US Mark.

Evidence filed on 12/09/2018

Exhibit A: Email correspondence between Kalea (Mr Peter Reimann) and the applicant, partly in English and partly in German (no English translation provided). The messages date from 21/04/2014 to 02/06/2014 and relate to a contract between the parties. There is a reference to ‘die Bier Adventskalendar’ in a message of 14/05/2014 from the applicant to Kalea.

Exhibit B: Email correspondence between Kalea (Mr Peter Reimann) and the applicant (Mr Christian Finz) dated 23/02/2012 and detailing some conditions of their cooperation. There is no explicit reference to the EUTM. The message from Mr Reimann also includes information on Kalea having a registered design for the calendar under No 001624362-0001. In his reply Mr Finz specifies that ‘we may also be entering a registered design here. This is pending discussions with my intellectual property attorney. A patent may also be possible here; we will look at all possibilities next week and then let you know. In your interests (and, of course, in ours as well), we want to protect the project from imitation in North America as best as we can’.

Exhibits C to H: Selection of documents dated in 2012 and 2013 and more specifically: (i) selection of invoices from Kalea to the applicant in relation to ‘beer ordered from suppliers, shipped to Kalea for packaging into Calendars but not needed’, ‘KALEA Bierkalendar Design Craft Beer’, ‘KALEA Calendar Design Craft Beer’, ‘KALEA Bierkalendar Version Craft Beer – Canadian Version 2013’ or ‘down payment Bierkalendar ‘Top Produkt 2012’’, (ii) one document dated 20/07/2013 from Freinbichler Logistik Spedition to Kalea (in German, no English translation, no mention of the EUTM) and (iii) selection of wire confirmations from Cambridge Mercantile Group to the applicant (some confirm the initiation of transfer by wire for payment to Kalea only, whereas others to Kalea and to other companies, such as Cerveceria de Baja California, Ruckus Brewing Company LLC or Brouwerji de Molen BV).

The case for the EUTM proprietor

In his observations in reply of 09/05/2018, the EUTM proprietor disputes the applicant’s claims and requests for the application to be rejected since Mr Reimann was not an agent of the applicant, he never had any obligation to act in the interest of the applicant within the EU territory and he did not act unfairly.

It is explained that Kalea (whose owner and CEO is the EUTM proprietor) started business in 2010, creating and selling beer calendars that consists of a (design protected) paper box filled with different beers.

Already back in 2010 (before the applicant even started business), the proprietor and Kalea used and advertised the terms ‘Bier-Adventkalender’, ‘Bier Adventkalender’, ‘Bieradventkalender’, ‘Bierkalender’, ‘Beercalendar’ hence the terms ‘Bier’ or ‘Beer’ in connection with ‘advent’, ‘Kalender’ or ‘Calendar’ and also had them printed on the calendars (card boxes) and on different kinds of advertisement materials. Therefore, the proprietor gained title protection (copyright) and was entitled to file the contested EUTM.

The proprietor points out that in January 2012 it is the applicant who contacted Kalea and showed ‘high interest in buying calendars to distribute them on the Canadian market’. Although the applicant was ‘well aware that the beer calendars and the beer advent calendars were invented and already in use by the owner’, the applicant filed the Earlier Marks.

In May 2014, the parties concluded an agreement giving the applicant the right to distribute the calendars developed by and delivered from Kalea to the US only.

As for the License Agreement, this document bears no relevance to the present proceedings since it applies to trade mark use in the US only and, moreover, it shall not reduce any rights of Kalea that it already has anywhere else in the world, which would comprise therefore the rights Kalea derived from the EUTM.

In his last observations of 12/12/2018, the EUTM proprietor maintains that he and Kalea (as his licensee) used the terms concerned prior to the applicant and that it is the owner’s web presence that triggered the applicant’s interest. He further shows that it was the applicant who was an agent of Kalea and not vice versa.

The evidence filed by the EUTM proprietor in support of his arguments consists of the following documents:

Evidence filed on 09/05/2018

Exhibit A: Affidavit given on 05/03/2018 by Mr Christian Finz, previously President of the applicant and employed by Kalea since September 2015 (hereinafter the ‘CF Affidavit’). Mr Finz details how the applicant’s company was created, how he found out about the existence of the ‘Bier Advent Kalender’ in Europe and contacted the EUTM proprietor. Further information is provided on the applicant’s decision to create its own design for the Canadian market (initially named ‘Vidarr Samling’ and later renamed ‘The Craft Beer Advent Calendar’) and on how in 2014, Mr Tse (the applicant’s CFO) presented to the applicant’s staff the registration certificates for the Earlier Marks.

Exhibit B: Selection of documents dated between April and September 2010 relating to the use by Kalea of the terms ‘Kalea Bier-Adventkalender’, ‘KALEA-Bieradventkalender’, ‘Bier Adventkalender’, inter alia, a selection of invoices issued by Kalea to Billa Aktiengesellschaft, REWE International AG and BKS GmbH for ‘Kalea 2010 Kalea Bier-Adventkalender’. The same exhibit further includes a confirmation issued on 09/05/2018 by Mondi Grünburg GmbH (Austria) and attesting to the fact that since 16/06/2010 and in all following years ever since, Kalea produced exclusively via their company the Boxes (Cardboard) ‘BierAdvent’® ‘BEERADVENT’ Kalender in various forms and designs.

Exhibit C: Selection of documents, as follows: (i) email message of 25/01/2012 from the applicant (Mr Finz) to Kalea and the latter’s reply of 31/01/2012 (Mr Reimann). The thread email is in German (no English translation provided). There is an explicit reference to ‘Adventkalender’ in Mr Reimann’s reply. Furthermore, Mr Reimann’s reply shows as attachments two pdf documents titled ‘Offer_BeerAdventCalendar_general Information_KALEA2012’ and ‘Offer_BeerBox_individ_branding_Kalea2012’ and one jpg image titled ‘BeerBox_Summerstyle_KALEA2012’; (ii) advertising material related to Kalea ‘The Beer Advent Calender’ with time references to the year 2012 (most probably the ones attached to Mr Reimann’s reply); (iii) promotional materials (flyer, photographs) some dated in November 2011 and some undated in relation to KALEA (Bier) Adventskalender; (iv) press article of 14/11/2011 (in German, no English translation provided) mentioning KALEA, the ‘Bieradventkalender’ and Mr Peter Reimann as the creator of this idea (as can be inferred from the German wording ‘kreativer Kopf dieser Idee’) and (v) a document dated 23/10/2012 and titled ‘Kalea Bier-Adventskalender als TOP Produkt 2012’ (in German, no English translation provided).

Exhibit D: Email correspondence in German (no English translation submitted) between the applicant and Kalea dated between January and February 2012 and email correspondence (partly in German, no English translation provided and partly in English) between the same companies dated between April 2014 and May 2014. The email thread dated in 2014 appears to be essentially the same as the one filed by the applicant on 12/09/2018 as Exhibit A.

Exhibit E: Printouts from https://euipo.europa.eu detailing the particulars of the registered industrial design No 0016243262-0001 registered on 15/10/2009 by Mr Peter Reimann.

Exhibit F: Two purchase orders from the applicant to Kalea dated 27/04/2012 for ‘Kalea Calendar’, one email of 22/06/2012 from Mr Finz to Mr Reimann referring to a new purchase order from the applicant being enclosed thereto and one purchase order from the applicant to Kalea dated 10/07/2015 for ‘2015 COSTCO BEERADVENT CALENDAR’.

Exhibit G: Agreement of 29/30 May 2014 between Kalea and the applicant (hereinafter the ‘2014 Agreement’).

Exhibit H: Screenshots of the applicant’s Facebook page ‘The Craft BeerAdvent Calendar’ and showing posts dated in 10/10/2012, 05/10/2012, 25/07/2012, 02/04/2012 and 31/03/2012. According to the information provided by the EUTM proprietor, the evidence is aimed at showing that the applicant used on Facebook the proprietor’s advertisement materials (pictures, videos, press information). One post of 31/03/2012 titled ‘The European version of the calendar’ includes a link to a video on Vimeo ‘Kalea’s Bierflaschen Konzert’, a picture of ‘Original Kalea Der Bierkalender’ and a reference to Bier-Adventskalender. There is another post of 10/10/2012 showing that The Craft BeerAdvent Calendar updated their cover photo with a picture depicting an advertisement for ‘The Craft BeerAdvent Calendar’. The same exhibit further includes two photographs showing the same advertisement and including the handwritten text ‘Pictures from Kalea made for advertising purposes’.

Evidence filed on 12/12/2018

Exhibit I: Screenshots obtained via the WayBackMachine and showing the website http://kalea.at on 25/07/2010, 25/08/2010, 07/01/2011, 30/06/2011 and 31/07/2011. The evidence is in German (no English translation provided) and includes references to ‘Original Kalea Bierkalender’, ‘adventkalender/Bierbox Bierkalender’ and/or ‘Bier-Adventkalender’.

UNAUTHORISED FILING BY AN AGENT OR REPRESENTATIVE OF THE TRADE MARK OWNER — ARTICLE 60(1)(b) EUTMR IN CONNECTION WITH ARTICLE 8(3) EUTMR WITH RELIEF SOUGHT ASSIGNMENT OF THE CONTESTED EUTM – ARTICLE 21 EUTMR

According to Article 21 EUTMR, where an EU trade mark is registered in the name of the agent or representative of a person who is the proprietor of that trade mark, without the proprietor's authorisation, the latter shall be entitled to demand the assignment of the EU trade mark in his favour, unless such agent or representative justifies his action. The proprietor may submit a request for assignment pursuant to paragraph 1 of this Article to, inter alia, the Office, pursuant to Article 60(1)(b), instead of an application for a declaration of invalidity.

According to Article 60(1)(b) EUTMR, an EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where there is a trade mark as referred to in Article 8(3) and the conditions set out in that paragraph are fulfilled.

The grounds for refusal of Article 8(3) EUTMR are subject to the following requirements:

• the signs are identical or only differ in elements that do not substantially affect their distinctiveness;

• the goods and services are identical or equivalent in commercial terms;

• the EUTM proprietor is an agent or a representative of the owner of the earlier mark;

• the contested EUTM was filed without the consent of the owner of the earlier mark;

• the agent or representative fails to justify its acts.

These conditions are cumulative. Therefore, where one of the conditions is not satisfied, the application based on Article 60(1)(b) EUTMR in conjunction with Article 8(3) EUTMR with relief sough the assignment of the EUTM pursuant to Article 21 EUTMR cannot succeed.

a) The EUTM proprietor is an agent or a representative of the owner of the Earlier Marks

General principles

Article 8(3) EUTMR has its origin in Article 6septies of the Paris Convention (PC), which was introduced into the convention by the Revision Conference of Lisbon in 1958. The protection it affords to earlier trade mark proprietors consists of the right to prevent, cancel, or claim as their own unauthorised registrations of their marks by their agents or representatives, and to prohibit use thereof, where the agent or representative cannot justify its acts.

Article 8(3) EUTMR offers protection to the earlier trade mark proprietor where there is proof that a relationship exists and the trade mark proprietor never consented to the agent’s or the representative’s registering the proprietor’s trade mark in its own name. It is designed to prevent the misuse of a mark by the agent, as the agent may exploit the knowledge and experience acquired during its business relationship with the proprietor and therefore improperly benefit from the effort and investment which the proprietor himself has made (06/09/2006, T-6/05, First Defense Aerosol Pepper Projector, EU:T:2006:241, § 38).

In view of the purpose of this provision, which is to safeguard the legal interests of trade mark proprietors against the misappropriation of their trade marks by their commercial associates, the terms ‘agent’ and ‘representative’ should be interpreted broadly to cover all kinds of relationships based on any business arrangement (governed by written or oral contract) where one party is representing the interests of another, regardless of the nomen juris of the contractual relationship between the principal - proprietor and the EUTM proprietor (confirmed by judgment of 13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64).

Therefore, it is sufficient for the purposes of Article 8(3) EUTMR that there is some agreement of commercial cooperation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the EUTM proprietor, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the proprietor of the earlier mark(s). It follows that Article 8(3) EUTMR may also extend, for example, to licensees of the proprietor, or to authorised distributors of the goods for which the mark in question is used.

The material question should be whether it was the cooperation with the proprietor of the earlier mark(s) that gave the EUTM proprietor the possibility to get to know and appreciate the value of the mark and incited the EUTM proprietor to subsequently try to register the mark in its own name.

Even though the wording of Article 8(3) EUTMR does not refer to the territorial scope of the agreement between the trade mark proprietor and its agent or representative, an inherent limitation to relationships covering the EU or a part thereof must be read in this provision. This is more in line with the economic considerations underlying Article 8(3) EUTMR, which are to prevent agents or representatives from unduly exploiting a commercial relationship covering a given territory, by filing an unauthorised application for the principal’s mark precisely in that territory, that is, in the territory where the applicant will be more able to benefit from the infrastructure and know - how it possesses as a result of its prior relationship with the proprietor. Therefore, as the filing prohibited by Article 8(3) EUTMR is an application for the acquisition of trade mark rights in the EU, the agreement must also concern the same territory.

Hence, a purposive interpretation must be followed in this regard, according to which Article 8(3) EUTMR only applies to agreements that cover the territory of the EU, whether in whole or in part. In practice, this means that worldwide or pan-European agreements are covered by this provision, as are agreements extending to one or more Member States, or only covering part of their territory, irrespective of whether they also include third territories. Conversely, agreements exclusively applying to third territories are not covered.

The burden of proof regarding the existence of a cooperation relationship lies with the applicant (judgment of 13/04/2011, T-262/09, First Defense Aerosol Pepper Projector, EU:T:2011:171, § 64, 67).

Assessment of the agent or representative relationship

In the present case, the applicant contends that it developed the mark ‘BEERADVENT’ with no involvement from the EUTM proprietor or Kalea and that it is the owner of the Earlier Marks (both for the word sign ‘BEERADVENT’), applied for in 2012 and registered in 2014 in Canada and the US respectively.

In its initial submissions, it relies on the DT Affidavit and on the License Agreement as evidence for the agent/representative relationship. In particular, the applicant makes reference to several sections of the License Agreement (as it will be detailed hereinbelow) and points out that ‘a fiduciary relationship between Kalea as well as in turn Mr Reimann and Craft Beer Importers Canada was established’. It is further mentioned that even if the contested EUTM was not registered by Kalea directly, but by Mr Reimann, Article 21 EUTMR would still apply since Mr Reimann and Kalea are acting on the same economic interest.

In its further observations of 12/09/2018 and only after the proprietor referred to the 2014 Agreement and filed a copy thereof, the applicant also makes reference to this document and points out that there is a ‘level of trust and loyalty arising’ from this agreement. Under the 2014 Agreement, the applicant would have entrusted Kalea with protecting the product, including its intellectual property. It is further mentioned that ‘it was only through its ongoing commercial relationship with the applicant that Kalea got to know the trademarked terms ‘BeerAdvent’ or ‘BierAdvent’ and came to appreciate their value‘ and the License Agreement would in fact evidence Kalea’s acknowledgement of ‘BeerAdvent’ as the applicant’s trade mark.

In the context of the overall assessment of the present case, the Cancellation Division considers, however, that the facts and evidence submitted by the applicant are clearly insufficient for demonstrating that the EUTM proprietor was an agent or representative of the applicant in the EU.

It is worth noting from the outset that, as the applicant correctly pointed out, the mere fact that the contested EUTM was applied by and registered in the name of Mr Reimann and not Kalea, does not constitute, in principle, a bar to the applicability of Article 8(3) EUTMR with relief sought pursuant to Article 21 EUTMR, given that Mr Reimann is the owner and CEO of Kalea and thus shares the same economic interests as Kalea.

Nevertheless, the fact remains that the applicant neither proved a distributor relationship nor submitted evidence that would be capable of demonstrating that the relationship between the parties gave rise to a fiduciary relationship by imposing on the EUTM proprietor/Kalea a general duty of trust and loyalty as regards the applicant’s interest, for the reasons set out herein below.

In the first place, the applicant’s claims that it developed the mark ‘BEERADVENT’ with no involvement from the EUTM proprietor or Kalea, that it had independently commissioned the artwork for the box of the ‘BEERADVENT’ calendar, that it supplied its artwork in electronic form to Kalea and that it was only through their commercial relationship that Kalea got to know the trademarked terms ‘BeerAdvent’ or ‘BierAdvent’ and came to appreciate their value not only that do not find support in the evidence on file, but are in fact contradicted by the documents submitted by the EUTM proprietor.

In support of these arguments, the applicant filed the DT Affidavit and the extracts from WIPO’s database. The probative value of the DT Affidavit is however rather low given that it originates from the applicant’s CFO. It is well-established in the case-law that a declaration, even if sworn or affirmed in accordance with the law under which it is rendered, it must be corroborated by independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42). In other words, the final outcome depends on the overall assessment of the evidence in the particular case. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the DT Affidavit are supported by the other items of evidence and whether the latter documents furnished also provide further indications on the alleged agent or representative relationship.

It is true that the documents in Exhibits 5 and 6 show the applicant as owner of the Canadian and US Marks. However, the mere registration of these marks is not sufficient, in itself and in the absence of further relevant and reliable evidence, to permit the conclusion that the mark ‘BEERADVENT’ was created by the applicant independently from the EUTM proprietor or Kalea.

Moreover, in the context of the documents made available by the proprietor (in particular those in Exhibits B, C, H and I), the circumstances in which the applicant applied for the Earlier Marks in 2012 and subsequently registered them in 2014 appear as rather questionable.

It is clear from the invoices in Exhibit B that already in 2010 (before the applicant’s company was even created) Kalea marketed in Austria the ‘Bier-Adventkalender’. An article of November 2011 (see Exhibit C) mentions Kalea, the ‘Bieradventkalender’ and the EUTM proprietor as the creator of this idea. The extracts from Kalea’s website (Exhibit I) dated in 2010 and 2011 show references to ‘Original Kalea Bierkalender’, ‘adventkalender/Bierbox Bierkalender’ and/or ‘Bier-Adventkalender’. Moreover, as is apparent from the correspondence in Exhibit C, it is the applicant who in January 2012 contacted Kalea, acknowledging that the ‘Bierkalender’ is a genius idea and expressing its great interest in it. It is further worth noting that the EUTM proprietor’s reply to the applicant on 31/01/2012 included pdf documents titled ‘Offer_BeerAdventCalendar_general Information_KALEA2012’ and ‘Offer_BeerBox_individ_branding_Kalea2012’ and one jpg image titled ‘BeerBox_Summerstyle_KALEA2012’. The documents further included in Exhibit C (see point (ii) above) mention, inter alia, that ‘The Beer Advent Calendar – The Fancy Present for Customers Within the Beer Advent Calendar you’ll find different international beer specialties as well as accessories dedicated to beer which can be customized with the customer’s logo depending on the order size. Furthermore, the customer’s logo can be printed onto the front side of the Beer Advent Calendar. That makes the Beer Advent Calendar even more attractive and creates an additional advertising value’. Finally, the documents in Exhibit H further support the proprietor’s assertions that the applicant used Kalea’s advertising materials. As is apparent from the above, rather than developing the mark BEERADVENT with no involvement from the EUTM proprietor or Kalea, the applicant appears in fact to have exploited the knowledge gained from Kalea and to have laid its hands on a sign which was created and already in use in Austria by the latter company.

This fact topped with the absence of documentary evidence in support of the applicant’s claims (as detailed above) raises significant doubts for the Cancellation Division that the applicant has not been able to dispel. In its last submissions of 12/09/2018, the applicant did not put forward any further facts or submit further documents that could clarify these circumstances or prove its claims. It merely reiterated that both parties actively cooperated in the promotion of the product making reference to the DT Affidavit and the WIPO extracts. For the sake of completeness, it is noted that Mr Reimann’s message of 23/02/2012 to the applicant (Exhibit B of the applicant’s evidence of 12/09/2018), ends with ‘I am already looking forward to your graphic designer’s proposal: we look forward to a great cooperation’. This does not challenge the above conclusion. There is no conclusive evidence showing that the applicant supplied ‘its artwork’ to Kalea and more importantly in what this consisted of. In addition, this email thread is dated after the first correspondence between Kalea and the applicant, and in particular after Mr Reimann’s reply of 31/01/2012 (as mentioned above).

In the second place, and as regards the applicant’s allegations that the License Agreement would prove the agent/representative relationship, it is true that pursuant to Section 2.1, the applicant granted Kalea a non-assignable license to use the US Mark strictly for printing on the Calendar Box for sale through the Distributor in the United States during the Term, subject to the terms and conditions of the agreement. It is also true that, as the applicant claimed, the License Agreement provides for certain obligations for Kalea pursuant to Sections 2.3 (any use of the US Mark by Kalea other than as permitted under Section 2.1 shall be deemed an infringement of Craft’s rights), 3.1 (Kalea shall, when so requested by Craft, do all things and execute all documents deemed desirable by Craft for preserving the validity of any registration relating to the US Mark or for ensuring the tile of Craft thereto), 3.2 (Kalea shall use the US Mark only in a manner that protects and preserves Craft’s rights and title in and to the US Mark) or 3.3 (Kalea agrees that it shall not, directly or indirectly, contest in any manner whatsoever or add in contesting the validity or ownership of the US Mark or do anything whatsoever which might affect or prejudice the rights of Craft in and to the US Mark or the goodwill attached thereto).

That does not mean, however, that the License Agreement is apt to support the applicant’s claims. In this regard, the Cancellation Division points out that the provisions referred to by the applicant have to be interpreted in conjunction with the remaining clauses in the License Agreement and not in isolation.

It is clear from the preamble of the agreement that Craft is the exclusive North American distributor of a 24-pack of mixed beers created by Kalea for sale in conjunction with the Christmas season (the ‘Calendar Box’) and not the other way around. Furthermore, the document states that Kalea wishes to sell the Calendar Box in 2015 through International Distillers and Vinters, Ltd. (the ‘Distributor’) to Cosco Wholesale Corporation (‘Cosco’) in the United States of America (the ‘United States’) and that Craft agrees to waive its exclusive distribution rights to the Calendar Box for 2015 in the United States only to allow Kalea to sell the Calendar Box through the Distributor to Cosco.

In addition, of particular importance are the provisions of Section 2.5 (this agreement shall apply to the use of the US Mark in the United States only and shall not reduce any rights of Kalea that it already has anywhere else in the world) and of Section 3.4 (except as provided in this Agreement or otherwise with the consent of Craft, Kalea shall not use, adopt, register or apply for registration of any trade-mark, logo, trade-name, corporate name, business name, domain name or web-site address in the United States that incorporates the US Mark or any portion or feature thereof. This agreement does not interfere with Kalea’s use of its existing sites in Europe and other countries and applies specifically to the use of the US Mark in the United States. Craft holds the registered Trade-Mark for Canada and the registered Trade-Mark for the United States).

In this regard, the applicant claims in its initial submissions that the limitations in Sections 2.5 and 3.4 do not affect the contested EUTM, since at the effective date of the License Agreement, Mr Reimann had not yet filed for any of the EU marks. Such a statement is however in flagrant contradiction with the provisions of the License Agreement itself, which clearly show and define the Effective Date as being 22/06/2015, which is after the filing date of the contested EUTM (i.e. 20/05/2015). In its later submissions of 12/09/2018, the applicant limited itself to argue that in 2015 it licensed the US Mark to Kalea ‘to use when distributing calendar to the US through other companies’ and that this culminated in the negotiation and execution of the License Agreement, ‘although this agreement formally took effect after the filing of the trade marks on 20/05/2015’. However, such statements do not find support in the evidence on file, since aside from the License Agreement no other documents were produced before the Cancellation Division in this regard.

To sum up, while it is true that Kalea was granted a license to use the US Mark and that it undertook certain obligations related to the use of said mark (as detailed above), from a teleological interpretation of the License Agreement it results that there is nothing in that document that could be construed as proof of Kalea being an agent of the applicant in the sense provided for in the applicable provisions of the EUTMR, as explained above. Moreover, the agreement is explicitly limited to the territory of the United States and its effective date postdates the filing date of the contested EUTM.

In the third place, and as regards the 2014 Agreement further relied upon by the applicant (as mentioned above), this document is not sufficient either to prove that Kalea was an agent/representative of the applicant and/or that it had a duty of trust and loyalty towards the applicant, as the latter contends. As it is apparent from this document, it was Kalea who granted to the applicant certain rights and invoiced the applicant a license fee for each calendar. The first paragraph of the 2014 Agreement, according to the English translation provided by the proprietor, reads as follows: Kalea GmbH, a company specialized in producing ‘Beer Advent Calendars’ is ready to provide Craft Beer Importers Canada Inc., called ‘Craft Beer Import Inc’ in the following, until further notice, with the rights to promote, market [products of the same kind] products of their own production.

The Cancellation Division notes that there appears to be a discrepancy between the original German version of the 2014 Agreement and the English translation made available by the proprietor, in that the German version further contains a reference to die Rechte an der Nutzung der ‘Bierkalender’ which is not included in the English translation. Be that as it may, the fact remains that the 2014 Agreement explicitly mentions that Kalea is a company specialised in manufacturing ‘Beer Advent Calendars’. It is further clear that pursuant to this agreement it is Kalea who granted rights to the applicant and not the other way around. The clause in the agreement stating that ‘If any of these points should not be respected Craft commits to return, the temporarily awarded rights to the ‘Calendar’, also without withdrawal, starting from the breach of the contract, indemnifying Kalea, to Kalea GmbH’, further supports this conclusion.

In the fourth place, and as regards the remaining documents submitted by the applicant on 12/09/2018 (Exhibits A to H), admittedly they show that Kalea and the applicant were engaged in a business relationship. However, they are not conclusive, on their own or in an overall assessment of the remaining evidence on file, to support a conclusion that Kalea was the applicant’s agent or representative. In particular, from the invoices and the wire confirmations, it is apparent that in 2012 and 2013 the applicant purchased from Kalea goods identified in the main as ‘KALEA Bierkalender’. It is true that the invoices display the mention ‘Design Craft Beer’ underneath ‘KALEA Bierkalender’, however in the absence of further evidence this is not sufficient in itself to allow for a conclusion that Kalea was an agent of the applicant. Moreover, account should be taken of the fact that nowhere in these documents there is a single reference to the contested EUTM. Finally, the fact that most of the invoices are dated after the filing date of the Canadian Mark is not decisive either, having in view the considerations already exposed above on the circumstances that led to the filing and registration of the Earlier Marks. From the whole body of the evidence and the explanations provided by the parties it is clear that it was the EUTM proprietor who came up with the idea and the goods designated under the Beer Advent Calendar/Bier Adventkalender and the applicant initiated the contact and the business relationship to bring them over to Canada. Having this in mind and considering the evidence on file, it is clear that the relationship between the parties is not of such nature that could justify a claim of the applicant to the relief sought, namely the assignment of the contested EUTM.

Lastly and for the sake of completeness, it is noted that in its last submissions of 12/09/2018, the applicant makes reference to two judgments of the General Court (T-262/09 and T-184/12), one decision of EUIPO’s Opposition Division (B 1 818 791) and two decisions of EUIPO’s Boards of Appeal (R 1958/2013-1 and R 336/2001-2) that ‘illustrate the nature of the terms agent or representative’ and which would support the conclusion that 2012 and 2016 ‘Kalea acted within the definition of agent or representative’. It also quotes the Office’s Guidelines for Examination of EUTMs Article 8(3) EUTMR and contends that the applicant engaged in continue cooperation with Kalea from 2012 to 2016, as illustrated by various oral and written agreements, including email correspondence, purchase orders and invoice, the 2014 Agreement and the License Agreement. Merely quoting previous decisions of the Office, case-law and the Office’s Guidelines is not sufficient in itself to tip the balance in favour of the applicant, in the absence of solid and relevant evidence, which, as thoroughly explained above, the applicant failed to produce.

It is upon the applicant to adduce all necessary evidence to prove that the EUTM proprietor is an agent or a representative of the cancellation applicant. As illustrated above the applicant failed to put forward sufficient facts and evidence that would allow for a positive finding that such relationship existed other than resorting to assumptions and suppositions.

b) Conclusion

As at least one of the necessary requirements of Article 8(3) EUTMR is not met, the application under Article 60(1)(b) in connection with Article 8(3) EUTMR with relief sough the assignment of the EUTM pursuant to Article 21 EUTMR is not well founded.

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

The Cancellation Division

Liliya YORDANOVA

Oana-Alina STURZA

Denitza STOYANOVA-VALCHANOVA

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.