CANCELLATION No 25 764 C (REVOCATION)

Bam Life Limited, 6 Manor Park Business Centre, Mackenzie Way, Swindon Village, Cheltenham Gloucestershire GL51 9TX, United Kingdom (applicant), represented by Wiggin LLP, 72-74 rue de Namur, 1000 Brussels, Belgium (professional representative)

a g a i n s t

C.M.C. s.a.s. di Polo Claudio, Via San Giacomo, 40, 80133 Napoli (NA), Italy (EUTM proprietor), represented by Ing. C. Corradini & C. S.r.l., Via Dante Alighieri, 4, 42121 Reggio Emilia, Italy (professional representative).

On 03/02/2020, the Cancellation Division takes the following

DECISION

1. The application for revocation is partially upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 9 004 615 are revoked as from 26/07/2018 for some of the contested goods, namely:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice; Aromatic preparations for food; Propolis (bee glue) for human consumption; Flavourings, other than essential oils, for cakes; Capers; Essences for foodstuffs, except etheric essences and essential oils; Flavorings, other than essential oils; Flavourings, other than essential oils, for beverages; Flavourings, other than essential oils, for cakes; Glucose preparations for food; Gluten prepared as foodstuff; Ice cream (Binding agents for -); Malt extract for food; Maltose; Mint for confectionery; Powders for ice cream; Propolis (bee glue) for human consumption; Puddings; Royal jelly; Sandwiches; Rice-based snack food; Spring rolls; Starch for food; Sushi; Sweeteners (Natural -).

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit drinks and fruit juices; Syrups and other preparations for making beverages; all the aforesaid except energy drinks.

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 32: Energy drinks.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 004 615 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice; Aromatic preparations for food; Propolis (bee glue) for human consumption; Flavourings, other than essential oils, for cakes; Capers; Essences for foodstuffs, except etheric essences and essential oils; Flavorings, other than essential oils; Flavourings, other than essential oils, for beverages; Flavourings, other than essential oils, for cakes; Glucose preparations for food; Gluten prepared as foodstuff; Ice cream (Binding agents for -); Malt extract for food; Maltose; Mint for confectionery; Powders for ice cream; Propolis (bee glue) for human consumption; Puddings; Royal jelly; Sandwiches; Rice-based snack food; Spring rolls; Starch for food; Sushi; Sweeteners (Natural -).

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM has not been put to genuine use for a continuous period of five years.

The EUTM proprietor replies that the documents provided show uninterrupted use of the EUTM within the European Union in relation to the registered goods. Although some of the evidence refers to the goods as ‘energy drinks’, use has been proven for the entire category of non-alcoholic beverages in Class 32.

As regards the goods the EUTM is registered for in Class 30, the EUTM proprietor puts forward that coffee can be one of the ingredients of the non-alcoholic beverages for which use has been proven, as well as tea, cocoa, sugar, rice, artificial coffee, honey, spices, ice, ice cream, malt, mint, propolis, essences and flavourings. The latter are included in the list of ingredients of Enclosure A3. Most of the registered goods in Class 30 are, moreover, supplied in the same places where non-alcoholic beverages are sold and provided, and using the same items as shown in Enclosure A2. The EUTM proprietor therefore believes that the documents also prove use of the EUTM in relation to goods in Class 30.

The EUTM proprietor requests that the application be rejected in its entirety.

GROUNDS FOR THE DECISION

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37, 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use.

In the present case, the EUTM was registered on 24/08/2010. The revocation request was filed on 26/07/2018. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 26/07/2013 to 25/07/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 30/05/2019 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

A1: Extracts from the website drinkbam.com of 17/09/2018 showing the ingredients of the product sold under the EUTM (caffeine, B vitamins, taurine, sugars), as well as images of product packaging displaying the EUTM as follows:

A2: Product catalogue 2015/2019 showing promotional items, such as a barmat, an apron, caps, a container, t-shirts, cups, a key holder, bracelets, bearing the mark .

A3: Photograph of product packaging showing the list of ingredients.

B1: 14 invoices from the year 2013, issued by BAM s.r.l. to different customers in Italy, for ‘Energy Drink “BAM”’ in palettes of 24x250 ml, as well as some promotional items shown in the catalogue above. The number of items invoiced in each document amounts to wholesale quantities.

B2: 20 invoices from the year 2014, displaying the same characteristics as B1.

B3: 18 invoices from the year 2015, displaying the same characteristics as B1.

B4: 25 invoices from the year 2016, displaying the same characteristics as B1.

B5: 25 invoices from the year 2017, displaying the same characteristics as B1.

B6: 21 invoices from the year 2018, displaying the same characteristics as B1.

B7: English translation of the invoice structure in relation to enclosures B and C.

C: 8 invoices from the years 2013 and 2015 to 2017, issued to customers in France, Malta, the Netherlands Greece, Spain and possibly Romania (Arad), some showing the goods ‘energy drink “BAM”’, others referring only to trays and cans.

D1: Affidavit by Mr Alessandro Tramontano, sole administrator and legal representative of the company BAM s.r.l., of 27/05/2019. Mr Tramontano declares that the EUTM has been continuously used starting from 2013 to 2017 included for non-alcoholic beverages. He refers to turnovers made in those years, not mentioning any territory in this regard.

D2: Affidavit by Mr Polo Claudio, limited partner and legal representative of the EUTM proprietor, of 27/05/2019. Mr Claudio states that the EUTM has been used by his company since 2017 for non-alcoholic beverages. He refers to turnovers made in those years, not mentioning any territory in this regard.

E1: Photographs of the event ‘Superbike’, Misano 2015. An alleged participant can be seen wearing a cap bearing the EUTM.

E2: Photographs of the ‘Gay Pride’ 2015 in Rome. A can bearing the EUTM can be seen on the podium.

E3: Programme of the ‘NEWROZ’ music festival 2016 in Naples. The EUTM is shown at the bottom amongst other sponsors.

F1: Extract from the website whois.com of 22/05/2019 with information about the domain ‘drinkbam.com’.

F2: Extract from the website facebook.com of 27/05/2019, showing the ‘bam energy drink’ presence on this social media portal, including posts from 2018. The EUTM is displayed in several images.

F3: Extract from the website amazon.it of 24/05/2019, on which the energy drink ‘bam’ is offered as shown below. It is stated that the product has been available on amazon.it since 23/02/2018.

The applicant has not filed any observations in reply.

Preliminary remarks

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The fact that the EUTM proprietor submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by that other companiy was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period.

Most of the evidence is dated within the relevant period or refers to that period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The invoices, photographs of sponsoring activities and the extracts from the website amazon.it show that the place of use is mainly Italy. This can be inferred from the language of the documents (Italian), the currency mentioned (Euro) and some addresses in Italy. Therefore, the evidence relates to the relevant territory. Moreover, the EUTM proprietor has also presented some evidence, namely 8 invoices, showing that goods named ‘energy drink “BAM”’ have also been sold to other Member States.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

It has not been disputed by the applicant, and the evidence does not suggest otherwise, that the EUTM has been used as a trade mark.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The sign used shows use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the contested EUTM under Article 18 EUTMR. This is because the descriptive verbal elements ‘energy drink’ and the use of blue colour in the figurative element do not affect distinctive character of the EUTM (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 63).

Extent of use

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Although the evidence indicates a limited commercial volume of use, it shows use of the EUTM not only in Italy, but also in several other Member States, such as France, the Netherlands, Greece, Malta and Spain.

Moreover, it can be inferred from the product packaging and the invoices that wholesale quantities of goods bearing the EUTM have been sold continuously within the relevant period of time, and the EUTM is also shown in the framework of sponsoring activities. Although the evidence submitted is not particularly exhaustive, it cannot be considered showing only token use, but does reach the minimum level necessary to establish genuine use. The evidence corroborates the statements made in the affidavits and, as a whole, provides sufficient indications to conclude that EUTM was genuinely used during the relevant period in the relevant territory.

Use in relation to the registered goods and services

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

The contested EUTM is registered for the goods listed above in the section ‘Reasons’. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods for which it is registered. It shows exclusive use of the EUTM for energy drinks.

According to Article 58(2) EUTMR, where there are grounds for revocation for only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

Since consumers are searching primarily for a product or service to meet their specific needs, the purpose of the product or service in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods or services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 29).

The contested EUTM is registered for, inter alia, non-alcoholic beverages. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it. The evidence shows that the contested EUTM has been used for a certain energy drink. On the basis of the purpose of the goods used, the Cancellation Division finds that energy drinks form an own subcategory of the broad category of non-alcoholic drinks. The evidence thus proves use for the subcategory energy drinks.

The EUTM proprietor’s argument that use is also shown for the goods registered in Class 30, since they may constitute ingredients of the product sold, has to be rejected. The goods sold under the EUTM are clearly energy drinks, which may contain caffeine or other extracts from goods registered in Class 30, but none of those goods in class 30 can be considered the main ingredient of energy drinks. It follows that use of the EUTM for energy drinks does not show use of any of the other goods for which the mark is registered.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors in relation to energy drinks.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods, for which it must, therefore, be revoked:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, edible ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice; Aromatic preparations for food; Propolis (bee glue) for human consumption; Flavourings, other than essential oils, for cakes; Capers; Essences for foodstuffs, except etheric essences and essential oils; Flavorings, other than essential oils; Flavourings, other than essential oils, for beverages; Flavourings, other than essential oils, for cakes; Glucose preparations for food; Gluten prepared as foodstuff; Ice cream (Binding agents for -); Malt extract for food; Maltose; Mint for confectionery; Powders for ice cream; Propolis (bee glue) for human consumption; Puddings; Royal jelly; Sandwiches; Rice-based snack food; Spring rolls; Starch for food; Sushi; Sweeteners (Natural -).

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit drinks and fruit juices; Syrups and other preparations for making beverages; all the aforesaid except energy drinks.

The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 26/07/2018.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Judit NÉMETH

Natascha GALPERIN

Robert MULAC

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.