CANCELLATION No 20 133 C (INVALIDITY)

Warner Bros. Entertainment Inc., 4000 Warner Blvd., Burbank, California 91522, United States of America (applicant), represented by Allen & Overy LLP, One Bishops Square, London E1 6AD, United Kingdom (professional representative)

a g a i n s t

Kristof Darcon, Klaverheide 141, 2930 Brasschaat, Belgium and Hans Machiels, Roosekapellaan 8A, 2160 Wommelgem, Belgium (EUTM proprietors), represented by Van Innis & Delarue, Wapenstraat 14, 2000 Antwerp, Belgium (professional representative).

On 19/05/2020, 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 all the goods and services of European Union trade mark No 14 282 412 ‘RAMPAGE’ (word mark). The application is based on the non-registered trade mark ‘RAMPAGE’ (word mark) used in the course of trade for computer software, computer games, arcade games in all the Member States of the European Union (EU28). The applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that it owns unregistered rights in the trade mark ‘RAMPAGE’ in all the Member States of the European Union as a result of its use of the mark in connection with a computer game, which has been sold for decades throughout the European Union. The contested EUTM conflicted with those prior rights and must be declared invalid.

‘RAMPAGE’ was launched as an arcade computer game by Midway Games Inc. in 1986 and has been available in the European Union ever since. Later on, the game extended to home gaming machines and since 2012, to mobile phone applications. The applicant acquired a number of Midway Games Inc. assets in 2009, including all rights relating to the ‘RAMPAGE’ game, including throughout the European Union.

The applicant is the proprietor of the non-registered trade mark ‘RAMPAGE’ used in the course of trade in each of the Member States of the EU. The contested EUTM should be declared invalid according to the relevant provisions of the national laws of the Member States, including Germany (Act on the Protection of Trade Marks and Other Symbols), Italy (Italian Industrial Property Code), Austria (Federal Act Against Unfair Competition) and the United Kingdom (law of passing off).

In reply, the EUTM proprietors argued that the request for invalidity was only launched as an attempt to sabotage an infringement action and is without any merits. The applicant did not demonstrate that ‘RAMPAGE’ had been used in the course of trade before the filing date of the contested EUTM and the date of the request for invalidity. The applicant did not submit a single document to prove use. Consequently, the applicant did not prove the use of the earlier right in the course of trade of more than mere local significance and, therefore, the invalidity request must be dismissed. Furthermore, the applicant claimed to be the proprietor of an earlier non-registered mark in all the 28 Member States of the EU. However, several Member States do not even protect non-registered trade mark rights. The applicant referred specifically to the national laws in Germany, Italy, Austria and the United Kingdom. However, it did not provide any evidence to demonstrate that the earlier mark was used in a sufficiently significant manner to meet the national requirements. For example, in Germany, non-registered signs are protected only if they enjoy recognition by the relevant public (between 20 % and 50 % of the public). In Italy, the sign must be ‘notoriously known’ in order to be protected. Consequently, the request for invalidity must also be rejected for these reasons.

The applicant repeated its previous arguments and added that the invalidity application is part of a broader dispute between the EUTM proprietors and the applicant, which has been playing out before the Belgian courts. In essence, the EUTM proprietors sought to block the applicant’s release of its blockbuster film based on the ‘RAMPAGE’ video game.

The marks are identical. The goods and services are partly identical and partly similar. The applicant’s non-registered mark is reputed. ‘RAMPAGE’ is listed amongst the best arcade games in history. ‘RAMPAGE’ has been exploited in connection with a number of goods related to the computer game franchise, for example toys. Moreover, it is typical for computer games to be exploited in a number of different entertainment media, which might include books, films, television and related merchandising activities. In particular, video game adaptations have become increasingly commonplace and ‘RAMPAGE’ is another such computer game/film. Given the vast geographical and temporal exploitation of the ‘RAMPAGE’ game and related products around the world, including the European Union, alongside its commercial success, the earlier mark enjoys goodwill and reputation in the European Union. This is particularly due to the fact that ‘RAMPAGE’ has now been used as the basis of a blockbuster film, which was announced to the market in November 2011, nearly 4 years prior to the filing of the contested EUTM.

The applicant is the proprietor of the non-registered trade mark ‘RAMPAGE’, which enjoys a reputation and which has been used in the course of trade in all the countries of EU28. The extent of use is sufficient to confer on the proprietor the right to prohibit use of a subsequent trade mark in each of the countries concerned. The evidence submitted proves use of the earlier non-registered mark of more than mere local significance. The Belgian court, in proceedings brought by the EUTM proprietors against the applicant, acknowledged the extent of the applicant’s use of ‘RAMPAGE’. The earlier mark has been recognised extensively in the press in various countries of the EU and the applicant offered its goods and services to a wide range of customers at the national and international level. The applicant has generated substantial revenues under its earlier mark, as attested by the evidence. The earlier mark has been in use for over 30 years which also predates the filing date of the contested EUTM by almost 30 years.

Earlier rights under Article 8(4) EUTMR are protected if they confer on their proprietors the right to prohibit either use or registration of a later trade mark. The applicant then went on and explained in detail under which national law and which conditions the earlier non-registered trade mark will be protected against the contested EUTM in twenty-one out of the twenty-eight Member States of EU28, namely in Bulgaria, the Czech Republic, Denmark, Germany, Ireland, Greece, Croatia, Italy, Cyprus, Latvia, Lithuania, Hungary, Malta, Austria, Poland, Portugal, Slovenia, Slovakia, Finland, Sweden and the United Kingdom. Consequently, the contested EUTM should be invalidated under Article 8(4) EUTMR according to the applicant.

In support of its observations, the applicant filed the following evidence:

• Annex 1: a witness statement of Senior Vice President, Intellectual Property at Warner Bros. Entertainment Inc., dated 01/02/2019, with Exhibits 1-25.

• Annex 2: a copy of the opposition decision of the Office No 2194/2000 ‘MOMENTUM’ (McCann Erickson Advertising Limited’s application).

• Annex 3: copies of articles from the Federal Act Against Unfair Competition of Austria.

• Annex 4: a copy of Article 12(6) from the Bulgarian Trade Mark Law on Marks and Geographical Indications (2010).

• Annex 5: a copy of Article 64 of the Trade Act, Unfair Market Competition of Croatia.

• Annex 6: a copy of Section 35 of Civil Wrongs Law, Cap. 148 of Cyprus.

• Annex 7: Adidas Sportshuhfabriken Adi Dassler KG v The Jonitexo Limited (1987) CLR 383.

• Annex 8: a copy of Article 7(1)(g) of Law No 441/2003 on Trademarks and on Amendments to Act No 6/2002 of the Czech Republic.

• Annex 9: a copy of Section 3(1)(ii) of the Consolidate Trade Marks Act No 109 of Denmark of 24/01/2012.

• Annex 10: a copy of Section 2 of Trademark Act No 7 of 10 January 1964 (as last amended by Act No 1715 of 22/12/1995) of Finland.

• Annex 11: copies of articles from the German Trade Marks Act 1995.

• Annex 12: a copy of Article 124(3)(a) of the Greek Trade mark Law No 4072/2012 and Article 13(1) of Law 146/1914 on Unfair Competition.

• Annex 13: a copy of Article 5 of the Trademark Act of Hungary.

• Annex 14: a copy of Article 6 of Act LVII of 1996 on the prohibition of Unfair and Restrictive Market Practices (Hungarian Competition Act).

• Annex 15: a copy of the judgment of the Hungarian Supreme Court published under EH 2003.861.

• Annex 16: a copy of Section 10(4)(a) of the Irish Trade Mark Act.

• Annex 17: a copy of Article 12(1)(b) of the Italian Industrial Property Code.

• Annex 18: a copy of Article 9(3)(4) of the Law on Trademarks and Indications of Geographical Origin (as last amended on 08/02/2007) of Latvia.

• Annex 19: a copy of Article 7(1)(3) of the Law on Trademarks of Lithuania.

• Annex 20: a copy of Article 32 of the Maltese Commercial Code.

• Annex 21: a copy of Article 6(2) of the Maltese Trade Mark Act.

• Annex 22: a copy of Article 132(1)(ii) of the Polish Act on Industrial Property Law.

• Annex 23: a copy of Article 5 of the Polish Law on Combatting Unfair Competition.

• Annex 24: a copy of Portuguese Decree No 36/2003.

• Annex 25: a copy of Article 7(f) of the Slovak Trade Mark Act.

• Annex 26: a copy of Article 44(1)(d) of the Slovenian Industrial Property Act.

• Annex 27: a copy of Article 7 of the Swedish Trade Marks Act 2010.

• Annex 28: copies of articles for the UK Trade Marks Act 1994.

• Annexes 29-50: copies of case-law from the UK.

In reply, the EUTM proprietors argued that the applicant’s evidence does not prove use of the earlier non-registered trade mark in the course of trade of more than mere local significance at the time of filing of the contested EUTM and at the time of filing of the invalidity request.

The question whether the ‘RAMPAGE’ arcade game achieved an iconic status in popular culture or whether it has goodwill or reputation is irrelevant because the applicant has to prove that the earlier non-registered mark was still used at the two relevant dates (June 2015 and February 2018, respectively). The ‘RAMPAGE’ video game was last released in 2012, which is 3 years before the filing date of the contested EUTM. The applicant did not submit a single invoice proving the sale of the game. The evidence demonstrating offers of the ‘RAMPAGE’ video game for sale concerns only a limited number of second-hand sales on e-commerce sites, such as eBay or Amazon, dated after the date of filing of the invalidity request. The sale of second-hand products does not qualify as use made by the proprietor of the mark according to several decisions of the Office. The applicant claims that the ‘RAMPAGE’ video game has been included in a number of game compilations, such as ‘Midway Arcade Origins’ or ‘Midway Arcade’, released in 2012. However, the applicant did not prove the extent of sales of these compilations. The applicant claimed in its witness statement that there were many downloads of the ‘Midway Arcade’ application in Europe and that the sale of ‘Midway Arcade Origins’ generated significant revenues in European countries. However, the only proof to corroborate these figures is Exhibit PP-9 which contains a table of revenues made by the applicant itself and which thus has very little probative value, if any. Moreover, the use of the sign ‘RAMPAGE’ in the context of the aforesaid compilations does not qualify as use of a trade mark, namely as an indicator of commercial origin of these compilations. The free-to-play version of the ‘RAMPAGE’ video game was launched on the applicant’s website only in April 2018, which is after the filing of the contested EUTM and of the invalidity request. The YouTube videos, showing ‘RAMPAGE’ game footage, do not prove use of the mark at the relevant dates. Use of the mark for toys does not prove use of the mark for the relevant goods, namely computer software, computer games and arcade games. The evidence concerning the release of the film based on the ‘RAMPAGE’ video game has likewise no relevance for proving use in relation to the relevant goods.

To sum up, although it is clear from the evidence that the ‘RAMPAGE’ games were available on the market at some point and enjoyed some recognition amongst the gaming community, it is equally clear that the last game actually marketed under the ‘RAMPAGE’ sign was released in 2007, which is many years before the filing of the contested EUTM and of the request for invalidity. The well-known or ‘iconic’ status of the game under the ‘RAMPAGE’ trade mark is irrelevant, it is only the use of the mark that matters.

The reference made by the applicant to the decision of the Brussels Commercial Court in the case between the parties is misleading. The Court did not acknowledge the extent of the applicant’s use of ‘RAMPAGE’ for its goods and services.

In addition to all the above, the applicant’s evidence does not demonstrate that the national conditions of Article 8(4) EUTMR (i.e. ‘acquisition of a right’ and ‘entitlement to prohibit’) have been met.

The applicant argued that the EUTM proprietors admitted that the applicant has goodwill and reputation in ‘RAMPAGE’ and that the game is popular and iconic. Under the English law of passing off, this is enough. It is also enough under the EU law to demonstrate rights of more than mere local significance.

The earlier mark was sufficiently used in the European Union. Contrary to the EUTM proprietors statement, the judge in the Belgian court confirmed that there was evidence of use of the mark. The witness statement demonstrates that the game is available for purchase on Amazon, eBay and other websites as shown in Exhibit PP-8. Although the last version of the game was released in 2012, this was before the filing date of the contested EUTM and the version continues to be available. The evidence is acceptable to prove goodwill under the case-law relating to passing off. The lack of invoices is not decisive. Invoices are not required to prove sales.

The applicant also provided further arguments relating to the court case in Belgium and repeated that its mark enjoys goodwill and reputation which means that it is of more than local significance. The applicant also defended the probative value of the witness statement and of the attached exhibits. Moreover, the applicant reiterated that the Belgian judgment does acknowledge use of the earlier mark. The EUTM proprietors’ criticism of the resale of games is incorrect under the English passing off law and EU trade mark law. Resale is use with the applicant’s consent, so it counts.

In support of its observations, the applicant submitted Annexes 51-54 with further case-law related to passing off.

In their final observations, the EUTM proprietors claimed that the applicant’s reference to the title of the game ‘RAMPAGE’ under the English law of passing off is inadmissible because the invalidity request was based solely on an earlier non-registered trade mark. The applicant has never used the sign ‘RAMPAGE’ in accordance with the essential function of a trade mark. The alleged goodwill or reputation of the earlier mark are irrelevant. Under Article 8(4) EUTMR, the applicant must prove use of the mark in the course of trade which is an autonomous condition that must be interpreted in line with EU law. The fact that a sign satisfies the national conditions for protection is in itself insufficient for the purposes of Article 8(4) EUTMR. ‘Goodwill’ and ‘use’ are entirely different concepts. However, the applicant did not prove a sufficient use of the earlier mark at the two relevant dates. Contrary to what the applicant stated, the sales data and the number of downloads of the game mentioned in the witness statement are not backed up by third-party documents. Resale of second-hand goods does not constitute use by or with the consent of the trade mark proprietor (10/01/2011, R 246/2009‑4, CAN DO / CANDA II). The EUTM proprietors furthermore contested again that the Belgian court acknowledged use of the earlier mark.

EARLIER NON-REGISTERED TRADE MARK USED IN THE COURSE OF TRADE — ARTICLE 60(1)(C) EUTMR IN CONNECTION WITH ARTICLE 8(4) EUTMR

Earlier non-registered trade mark in Belgium, Estonia, Spain, France, Luxembourg, the Netherlands and Romania

According to Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR, upon cancellation action by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, a European Union trade mark will be declared invalid where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the application for invalidity based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR, if the application is based on an earlier right within the meaning of Article 8(4) EUTMR, the applicant must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the applicant to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the applicant ‘… to provide [EUIPO] not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the applicant must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR). The applicant must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the EUTM proprietors and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the applicant may provide such evidence by making a reference to that source (Article 16(1)(b) EUTMDR in conjunction with Article 7(3) EUTMDR).

In the present case, the applicant did not submit any information on the legal protection granted to the type of trade sign invoked by the applicant, namely a non-registered trade mark, in Belgium, Estonia, Spain, France, Luxembourg, the Netherlands and Romania. The applicant did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the applicant to be able to prohibit the use of the contested trade mark under the laws in the aforesaid Member States.

Therefore, the request for invalidity is not well founded under Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR with regard to the territories of Belgium, Estonia, Spain, France, Luxembourg, the Netherlands and Romania.

The assessment of the request for invalidity will now continue with respect to the remaining twenty-one countries of the EU28 for which the applicant did submit evidence of national law governing non-registered trade marks.

Earlier non-registered trade mark in Bulgaria, the Czech Republic, Denmark, Germany, Ireland, Greece, Croatia, Italy, Cyprus, Latvia, Lithuania, Hungary, Malta, Austria, Poland, Portugal, Slovenia, Slovakia, Finland, Sweden and the United Kingdom

As mentioned above, one of the necessary conditions for the application of Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR is the proof of prior use of the earlier right in the course of trade of more than mere local significance.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In invalidity proceedings, the invalidity applicant must show the earlier sign’s use in the course of trade of more than local significance before the filing date of the contested EUTM and also before the filing of the invalidity request. This condition stems from the wording of Article 60(1)(c) EUTMR, which states that an EUTM will be declared invalid ‘where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled’ (05/10/2004, 606 C; 03/08/2011, R 1822/2010‑2, BABY BAMBOLINA (FIG. MARK), § 15). The requirement of the ‘continued existence’ in the context of Article 8(4) EUTMR in invalidity proceedings is now explicitly set also in Article 16(1)(b) EUTMDR in conjunction with Article 7(2)(d) EUTMDR. In this case, the relevant dates are 23/06/2015 and 27/02/2018, respectively.

Therefore, the applicant was required to prove that the sign on which the application is based was used in the course of trade of more than local significance in Bulgaria, the Czech Republic, Denmark, Germany, Ireland, Greece, Croatia, Italy, Cyprus, Latvia, Lithuania, Hungary, Malta, Austria, Poland, Portugal, Slovenia, Slovakia, Finland, Sweden and the United Kingdom prior to those dates. The evidence must also show that the applicant’s sign has been used in the course of trade for computer software, computer games, arcade games.

On 01/02/2019 the applicant submitted evidence of use in the course of trade. As the applicant requested to keep certain commercial data contained in the evidence 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:

Witness statement of Senior Vice President, Intellectual Property at Warner Bros. Entertainment Inc., dated 01/02/2019, with Exhibits 1-25.

It is mentioned, in essence, that the applicant is one of the world’s leading entertainment companies. The ‘RAMPAGE’ video game began its life in 1986 as an arcade game developed by Midway Games Inc. and it quickly became very popular. It appears on the lists of the best arcade games of all time. Later on, the game was published several times in various videogame formats between 1997 and 2012. The applicant’s company acquired a number of assets of Midway Games Inc. in 2009, including all the rights to the ‘RAMPAGE’ video game. There is an established practice in the motion picture industry of basing films on popular videogames. The applicant chose the ‘RAMPAGE’ game as the basis of a major film. Plans for the film were announced in 2011 and the film was finally released in the European Union in 2018. The parties entered into a dispute over the title of the film in 2018, just weeks before its launch. The EUTM proprietors submitted a suit against the applicant before the Belgian courts for violation of their trade mark rights. The court ruled on staying the proceedings and, without taking a decision on substance, it also mentioned several examples of the applicant’s use of ‘RAMPAGE’ for video games.

The witness statement contains the following exhibits:

• Exhibit PP-1: website printouts with articles about the ‘RAMPAGE’ arcade game.

• Exhibit PP-2: an order of the Bankruptcy Court for Midway Games Inc.

• Exhibit PP-3: a website printout of an article reporting on the applicant’s purchase of Midway Games Inc., dated 2009.

• Exhibit PP-4: a copy of the Asset Purchase Agreement between the applicant and Midway Games Inc.

• Exhibit PP-5: articles from Wikipedia about the different games in the ‘RAMPAGE’ series, with dates of release between 1986 and 2012.

• Exhibit PP-6: a website printout of an article discussing the ‘Midway Arcade’ application for mobile devices, mentioning the ‘RAMPAGE’ game, dated February 2012.

• Exhibit PP-7: a website printout of a review of ‘Midway Arcade Origins’, mentioning the ‘RAMPAGE’ game, dated November 2012.

• Exhibit PP-8: printouts from Amazon, eBay and other websites, offering the ‘RAMPAGE’ video games for sale in various countries of the EU.

• Exhibit PP-9: a table with the revenue figures obtained from sales in various countries of the EU.

• Exhibit PP-10: a printout from www.microsoft.com, showing ‘Midway Arcade Origins’ available on Xbox One.

• Exhibit PP-11: website printouts with a number of articles relating to the ‘RAMPAGE’ game and the film from various EU countries.

• Exhibit PP-12: screenshots of YouTube videos of ‘RAMPAGE’ gameplay.

• Exhibit PP-13: a website printout of a review of the ‘RAMPAGE’ arcade game.

• Exhibits PP-14 to PP-25: a number of documents, relating to the applicant’s ‘RAMPAGE’ film.

The applicant had to prove use of the earlier mark in the course of trade for computer software, computer games and arcade games.

From the outset, it is clear that the applicant did not prove use of the mark in the course of trade for arcade games. The evidence demonstrates that the mark ‘RAMPAGE’ was used for an arcade game in the nineteen eighties but there is no evidence of use for these goods from the nineteen nineties onwards (i.e. for a period of approximately 25 years up until the relevant dates). Consequently, the applicant failed to prove use of the mark in the course of trade as of the filing date of the contested EUTM (23/06/2015) and also as of the filing of the invalidity request (27/02/2018).

Concerning the use of the mark for computer software and computer games, the documents filed do not provide the Cancellation Division with sufficient information concerning the commercial volume, the duration, and the frequency of use. While the evidence suggests that some use of the mark has been made, it does not meet the minimum threshold required for an earlier non-registered mark to obtain protection under Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

The EUTM proprietors are correct in stating that the issue is not to prove goodwill, reputation or knowledge of the mark ‘RAMPAGE’ on the part of the public but the effective use of the mark by the applicant in the course of trade. The evidence on file is not persuasive enough to prove a sufficient extent and intensity of use of the mark in the years immediately before the filing date of the contested EUTM (23/06/2015) and before the filing of the invalidity request (27/02/2018).

The table in the Exhibit PP-9 which allegedly demonstrates the revenues obtained by selling the ‘RAMPAGE’ video game in a number of EU countries is not a convincing piece of evidence. It is a mere list of countries and figures in US dollars on a blank sheet without any further information, explanations or breakdown by years. Moreover, the sums for some of the countries concerned are very low.

The applicant claimed that the ‘RAMPAGE’ video game was released as part of the ‘Midway Arcade’ app for mobile devices in 2012 (as mentioned in Exhibit PP-6) and that this app was downloaded many times in Europe according to the applicant’s records. However, the claimed number of downloads is merely a statement of the applicant which is not backed by any evidence.

Regarding the Exhibit PP-10 which demonstrates the offer of ‘Midway Arcade Origins’ (which includes ‘RAMPAGE’) for Xbox on the UK website of Microsoft, this does not prove any extent of actual sales of this collection of games.

The findings of the Belgian court illustrating the use of ‘RAMPAGE’ by the applicant are only preliminary observations resulting from the court’s own assessment of evidence presented to that court. It is not clear which evidence exactly was submitted to the court. Moreover, the Cancellation Division concurs with the court that some use of the mark has been made. However, it is considered that this use is not sufficient enough to meet the threshold of ‘use in the course of trade’ within the meaning of Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

Regarding the offers of the video games for sale on Amazon, eBay and other websites (Exhibit PP-8), although they come from a number of different websites and from a number of EU countries, they rather concern offers of isolated items of the game than a serious commercial scale of offers on the market. Moreover, as correctly pointed out by the EUTM proprietors, a large part of the items offered are used (second hand) ‘RAMPAGE’ games offered for resale by individuals. Such offers do not constitute ‘use in the course of trade’ attributable to the applicant because the applicant does not have any influence on these resales.

The YouTube videos of people playing the ‘RAMPAGE’ game (Exhibit PP-12) might have been viewed many times but this does not prove an effective use of the mark in the course of trade, in other words it does not prove any extent of sales of the game to the consumers in the relevant countries.

Finally, the evidence demonstrates that the last relevant releases of the game from 2012 were in the format of the ‘Midway Arcade’ collection where ‘RAMPAGE’ was only one of about thirty different games contained in this collection. This further undermines the intensity and impact of use of the mark in the course of trade because the product was actually offered on the market as ‘Midway Arcade’ and not as ‘RAMPAGE’.

Moreover, it appears from the Wikipedia articles (Exhibit PP-5) that the ‘Midway Arcade Origins’ collection from 2012 was released only in North America and Australia. There is no clear mention of a release in the European Union.

The evidence concerning the use of the word ‘RAMPAGE’ in relation to the applicant’s film is irrelevant because it does not concern use of the mark for computer software and computer games.

To sum up, the applicant did prove some use of the non-registered trade mark for the ‘RAMPAGE’ computer game software or computer games. However, the evidence does not prove a sufficiently important extent of commercial exploitation of the mark in any of the countries concerned. In accordance with the case-law mentioned above, the protection of an earlier non-registered trade mark is reserved only for signs with a real and actual presence on their relevant market. The earlier sign relied on must actually be used in a sufficiently significant manner in the course of trade. However, this is not the case here. Consequently, the applicant failed to establish use of the earlier non-registered mark in the course of trade of more than mere local significance prior to the relevant dates.

The alleged reputation of the ‘RAMPAGE’ video game which was apparently famous in the nineteen eighties as an arcade game and which is still known and remembered by the members of the gaming community nowadays does not change this outcome. The task of the applicant under the requirement ‘use in the course of trade of more than mere local significance’ was not to prove reputation, goodwill or knowledge of the mark by the public. Its task was to prove a sufficiently significant effective use of the mark on the market which the applicant failed to do.

As one of the necessary requirements of Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR is not met, the request for invalidity must be rejected as unfounded.

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 proprietors 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 proprietors are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Natascha GALPERIN

Vít MAHELKA

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.