CANCELLATION No 12158 C (REVOCATION)
Julie Nguyen Van Than, 43, rue Saint Sauveur, 75002 Paris, France (applicant), represented by T Mark Conseils, Nicolas Debaisieux, 31, rue Tronchet, 75008 Paris, France (professional representative)
a g a i n s t
Domenico Bacci, Via A. Mario, 68, 40141 Bologna, Italy and Davide Levi, Piazza Farnese, 44, 00186 Rome, Italy (EUTM proprietors),
1. The application for revocation is upheld.
2. The EUTM proprietors’ rights in respect of European Union trade mark No 9 012 121 are revoked in their entirety as from 01/12/2015.
3. The EUTM proprietors bear the costs, fixed at EUR 1 150.
The applicant filed a request for revocation of European Union trade mark registration No 9 012 121 ‘Millefleurs’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested mark has not, within the period of five years, been put to genuine use.
The EUTM proprietors filed some evidence, listed in detail below, but no further arguments.
GROUNDS FOR THE DECISION
According to Article 51(1)(a) EUTMR, the rights of the proprietors of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.
Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37 and 43).
When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the 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 Rule 40(5) EUTMIR in conjunction with Rule 22(3) EUTMIR, the indications and evidence for the furnishing of proof of use must consist of indications concerning the place, time, extent and nature of use of the contested trade mark for the goods and 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(s) 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, the EUTM proprietor(s) must prove genuine use within the European Union, or submit proper reasons for non‑use.
In the present case the EUTM was registered on 10/08/2010. The revocation request was filed on 01/12/2015. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietors had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 01/12/2010 to 30/11/2015 inclusive, for the above mentioned contested goods.
On 04/03/2016, one of the EUTM proprietors submitted evidence as proof of use.
The evidence to be taken into account is the following:
www.hdunique.com-HD Creations Rings-2015 Collection Millefleurs showing a printout of Davide Halevim page that shows the rings creations of the “2015 Collection Millefleurs ®”.
www.hdunique.com HD Creations Rings-2015 Collection Millefleurs showing a printout of Davide Halevim page that shows the hearing creations of the “2015 Collection Millefleurs ®”.
www.hdunique.com HD Creations Rings-2015 Collection Millefleurs showing a printout of Davide Halevim page that shows the necklace creations of the “2015 Collection Millefleurs ®”.
www.hdunique.com Internet site print of the Boutique page of HD Rare and Unique Boutique located in London and in Porto Cervo (Italy), not displaying the trade mark.
www.frangrantica.com Internet commercial site print of perfume reseller Fragrantica in 2015 showing Parisian Millefleurs Crabtree & Evelyn for women perfume launched in 2015.
www.crabtree-evelyn.com Internet print of Global directory that shows the addresses of Crabtree among others in United Kingdom and Germany, not displaying the trade mark.
Assessment of genuine use – factors
The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (judgment of 05/10/2010, T‑92/09, ‘STRATEGI’, paragraph 43). Therefore, the EUTM proprietor is obliged to prove each of these requirements. The Cancellation Division will focus the present decision on the criterion of extent of use since, in its opinion, the evidence provided by one of the EUTM proprietor is insufficient to prove that this requirement has been met for the EUTM.
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 (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).
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.
The only relevant evidence submitted by one of the EUTM proprietor in order to prove genuine use of the contested EUTM is the one displaying the trade mark, namely evidence No 1 to 3 (for jewellery) and evidence No 5 (for a perfume). It is composed of just four printouts of websites dated 2015. There is not additional evidence in order to show that the goods offered for sale have been commercialized in member states to a certain extent. The EUTM proprietors should have submitted additional evidence in order to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37). Considering that all the evidence is concentrated in 2015 and that there is no additional evidence able to support genuine use, this is considered far from sufficient in term of extent of use.
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).
An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).
The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietors chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).
It follows from the above that the EUTM proprietors have clearly failed to prove genuine use. The evidence for the extent of use is insufficient because the evidence is exclusively composed of internet pages for one year and not accompanied by other elements in order to support extent of use.
It follows from the above that the EUTM proprietors have not proven genuine use of the contested EUTM for any of the goods for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietors are the losing party, they must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.