CANCELLATION No 12843 C (REVOCATION)
Disney Enterprises, Inc., 500 South Buena Vista Street, Burbank, California 91521, United States of America (applicant), represented by Mitscherlich, Patent- Und Rechtsanwälte, Partmbb, Sonnenstraβe 33, 80331, Munich, Germany (professional representative)
a g a i n s t
Riffratz LLC, 160 Central Park South, New York, NY 10019, United States of America (EUTM proprietor), represented by Nixon Peabody International LLP, 32 Rue de Monceau, 75008 Paris, France (professional representative).
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 9 020 702 are revoked in their entirety as from 20/04/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed a request for revocation of European Union trade mark No 9 020 702 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:
Class 9 Audio and video recordings featuring music and animation featuring the adventures of a group of fictitious, mutated, hyper-intelligent, human-sized rats; computer and video software programs and video game software featuring entertainment relating to animated television programs and feature films; decorative magnets, mobile phone cases and mouse pads.
Class 16 Arts and crafts paint kits, photo albums, comic books, picture books, series of fiction books, coloring books, address books, address labels, appointment books, cook books, diaries, scrap books, book covers, book ends, book marks, printed postcards, trading cards, collector's cards, posters, greeting cards, gift wrapping paper, gift wrapping ribbons made of paper, paper party decorations, calendars, personal planners, notebooks, binders, decals, stickers, stationery, envelopes, pens, pencils, pens and pencil cases, note cards, bank checks, check book covers, bumper stickers, temporary tattoos and rubber stamps all featuring animated characters from a television series featuring mutated, hyper-intelligent human-sized rats.
Class 25 Embroidered and unembroidered clothing, namely sleep wear and pajamas, outerwear, namely, coats, jackets, hats and caps; sweat shirts, sweat pants, t-shirts, socks, head bands, underwear; halloween and masquerade costumes.
Class 28 Games and playthings, namely, card games, darts, dolls, toy action figures, jigsaw puzzles, plush toy figures; board games, bath toys, rocking horses, yo-yos, and toy musical instruments; paper party hats; masks sold in connection with Halloween and masquerade costumes.
Class 41 Entertainment services in the nature of an animated television series and feature films featuring the adventures of a group of factious, mutated, hyper-intelligent, human-sized rats and related music; entertainment in the nature of live theatrical production performed by characters in the likeness of the foregoing factious animated characters.
The applicant invoked Article 51(1)(a) EUTMR.
GROUNDS FOR THE DECISION
According to Article 51(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.
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 24/12/2010. The revocation request was filed on 20/04/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 28/04/2016, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the goods and services for which it is registered.
The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.
According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.
In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use.
Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.
Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 20/04/2016.
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 proprietor is the losing party, it 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 costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Agueda MAS PASTOR
María INFANTE SECO DE HERRERA
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.