CANCELLATION No 13 860 C (REVOCATION)

Fashion TV Brand Holdings C.V., Keizersgracht 62, 1015 CS Amsterdam, the Netherlands (applicant)

a g a i n s t

Zeenat Azwer, Al Ghozlaan 4/316, Dubai, United Arab Emirates (EUTM proprietor), represented by Abeln Advocaten, Herengracht 458, 1070 AV Amsterdam, the Netherlands (professional representative).

On 09/08/2018, 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 9 032 707 are revoked as from 06/10/2016 for some of the contested goods, namely:

Class 9: Spectacles, spectacle frames, spectacle lenses, sunglasses, lenses for sunglasses, fittings for sunglasses, including clip-on sunglasses and eye protectors.

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 25: Footwear, headgear.

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

Class 25: Clothing.

4. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 032 707 ‘MOGLIE’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely

Class 9: Spectacles, spectacle frames, spectacle lenses, sunglasses, lenses for sunglasses, fittings for sunglasses, including clip-on sunglasses and eye protectors.

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 25: Clothing, footwear, headgear.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 06/10/2016 and argues that the EUTM is due for cancellation for non-use according to Article 58(1)(a) EUTMR as the cancellation applicant could not ascertain any use by the proprietor from public sources in connection with all the goods within a continuous period of five years.

The EUTM proprietor submitted observations and evidence of use (listed below, Items 1-38) within the time limit granted. It argues that the trade mark ‘MOGLIE’ has been used since 2008. As of 2010 the proprietor granted a license to the Dutch companies Mell-Zone B.V. and Blue Butterfly B.V. to produce and sell goods under the contested trade mark. The evidence filed illustrates that both companies have made continuous and genuine use of the trade mark in the relevant period. The evidence as submitted should be enough to prove the genuine of the mark.

The applicant argues that the documents are inconclusive and insufficient to prove genuine use of the mark. It analyses in detail each of the pieces of evidence filed and argues, for example, that the catalogues submitted are undated and do not provide additional information to indicate whether they had been actually distributed; there is also no information on the price of the goods. Furthermore, the invoices, purchase orders and packing lists do not allow making a connection with the goods. The website screenshots provided are not accompanied by additional or supporting information in relation to data or statistics of visits by users or any sales information. The evidence does not provide conclusive information regarding the commercial volume, duration and frequency of use of the disputed trade mark. The information contained therein cannot be verified due to the redaction/deletion of information and absence of relevant information. All the evidence should be disregarded, as it is unable to clearly and sufficiently indicate that there was genuine use of the contested mark in relation to the relevant goods. According to the applicant, the proprietor did not submit any evidence for the goods in Classes 9 and 14 and the evidence for the goods in Class 25 is clearly insufficient. Therefore, the request for revocation should be accepted in its entirety and the trade mark registration should be cancelled.

The EUTM proprietor did not file observations in reply.

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 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 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 06/12/2010. The revocation request was filed on 06/10/2016. 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 06/10/2011 to 05/10/2016 inclusive, for the following contested goods:

Class 9: Spectacles, spectacle frames, spectacle lenses, sunglasses, lenses for sunglasses, fittings for sunglasses, including clip-on sunglasses and eye protectors.

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 25: Clothing, footwear, headgear.

On 13/01/2017 the EUTM proprietor submitted evidence as proof of use. Furthermore, on 23/01/2017 the EUTM proprietor submitted by courier a confirmation copy of the evidence filed by fax on 13/01/2017 as well as some additional documents, in particular copies of the complete original catalogues and three ballpoint pens. However, as the Cancellation Division already informed the parties on 11/04/2017 and pursuant to Article 64(2) EUTMDR (former Rule 79a Regulation (EC) No 2868/95, in force before 01/10/2017) this part of the evidence will not be taken into account, as it was not provided in two copies.

The evidence to be taken into account consists of the following:

• Item 1: Extract from a catalogue ‘Moglie SUMMER 2011’ showing various ‘MOGLIE’ garments. According to the information provided by the proprietor, the catalogue is distributed by Mell-Zone B.V./Moglie and shows the garments produced and sold by Mell-Zone B.V. in the summer 2011.

• Item 2: Copy of the front, back and centrefold pages of the catalogue ‘Moglie LOOKBOOK SPRING/SUMMER 2013’ showing several ‘MOGLIE’ goods as well as address details on the last page, including physical and e-mail address and the website www.moglie.nl.

• Item 3: Copy of the front, back and centrefold pages of the catalogue ‘Moglie COLLECTION AUTUMN/WINTER 2013/2014’ showing several ‘MOGLIE’ goods as well as address details on the last page, including physical and e-mail address and the website www.moglie.nl.

• Item 4: Copy of the front, back and centrefold pages of the catalogue ‘Moglie COLLECTION SPRING/SUMMER 2014’ showing several ‘MOGLIE’ goods as well as address details on the last page, including physical and e-mail address and the website www.moglie.nl.

• Item 5: Copy of the front, back and centrefold pages of the catalogue ‘Moglie COLLECTION AUTUMN/WINTER 2015/2016’ showing several ‘MOGLIE’ goods, including product identification codes, as well as address details on the last page, including physical and e-mail address, Facebook and the website www.moglie.nl.

• Item 6: Copy of the front, back and centrefold pages of the catalogue ‘Moglie COLLECTION SPRING/SUMMER 2016’ showing several ‘MOGLIE’ goods, including product identification codes, as well as address details on the last page, including physical and e-mail address, Facebook and the website www.moglie.nl.

• Item 7: Invoice dated 10/06/2010 showing the sale of various goods to a client in Belgium. Some of the information such as the name of the client, as well as the price and final amount of the invoice are blacked out for confidentiality.

• Item 8: Packing list of the goods sold with the invoice of 10/06/2010. The document shows the transport of the products sold with the invoice mentioned as Item 7.

• Item 9: Invoice dated 30/07/2010 showing the sale of various goods to a client in Belgium. Some of the information such as the name of the client, as well as the price and final amount of the invoice are blacked out for confidentiality.

• Item 10: Invoice dated 23/04/2012 showing the sale of various goods (such as t-shirts, tops, boleros, tank tops, blazers, dresses, etc.) to a client in Germany. Some of the information such as the name of the client, as well as the price and final amount of the invoice are blacked out for confidentiality.

• Item 11: Packing list of the goods sold with the invoice of 23/04/2012. The document shows the transport of the products sold with the invoice mentioned as Item 10.

• Item 12: Printout showing the backside of invoices and packing lists. According to the proprietor’s explanations, the backside of each order form shows products under the trade mark ‘MOGLIE’. The printout displays several ‘Moglie’ clothing items (tops, dresses, a skirt and trousers), including product codes and there is a text in Dutch at the bottom which reads ‘Bezoek onze webshop: www.moglieb2b.nl om gemakkelijk uit de actuele voorraad (bij) te bestellen’ (which translates in English as: Please visit our webshop: www.moglieb2b.nl for easy ordering from our current stocks).

• Item 13: Order for the production of goods dated 22/01/2013. The order is made by the company Blue Butterfly B.V. and is for the production of ‘MOGLIE’ tank tops.

• Item 14: Packing list of produced orders dated 06/03/2015. The proprietor explains that the packing list is an example of the weekly shipments made by the producing company of goods with the trade ‘MOGLIE’ that have been shipped to Blue Butterfly B.V. in 2015. The top of the packing list indicates that the goods are ‘MOGLIE’ and the table includes information such as size, quantity, colour as well as product/style number of the goods, which correspond to the style numbers in the catalogues included as evidence Items 4 through 6.

• Item 15: Packing list dated 06/03/2015 by the producing company addressed to the company Blue Butterfly B.V. regarding shipment of ‘MOGLIE’ goods. The packing list indicates information such as order number, style number, colour, size and quantity of the goods. The style numbers refer to the numbering used in the catalogues.

• Item 16: Invoice dated 06/03/2015 issued by the producing company and addressed to the company Blue Butterfly B.V. confirming the order of clothing goods (vests and tops) as per the packing list of Item 15.

• Item 17: Overview of production details of a ‘MOGLIE’ shirt. The document shows information such as a product picture, article number and a detailed size chart and refers to the brand ‘MOGLIE’.

• Item 18: Print screens from the website www.moqliefashion.nl showing the web shop for ‘MOGLIE’ goods and various goods available for sale, including prices. There are references to ‘Autumn Winter 2016’ and ‘Spring Summer Collection 2016’ as well as address details information of Blue Butterfly B.V.

• Item 19: Print screens showing the results from a search for the word ‘MOGLIE’ in Google. In particular, it can be seen that the URL of mogliefashion.nl is the first result and there is a referral to Blue Butterfly B.V./Moglie fashion as a pop-up in the screen, including address details.

• Item 20: Print screen showing the results from a search for ‘blue butterfly b.v.’ in Google. In particular, it can be seen that the first result is a referral to the web site mogliefashion.nl.

• Item 21: List of the names and VAT numbers of all distributors/agents of Blue Butterfly B.V. for ‘MOGLIE’ products in Belgium, Germany, England and the Netherlands.

• Item 22: Customer order document dated 11/03/2015 issued by Blue Butterfly B.V. in relation to various goods. The watermark in this document is the sign ‘MOGLIE’.

• Item 23: Invoice dated 20/05/2013 issued by Duynstee B.V.B.A., an agent in Belgium of Mell-Zone B.V., for the sale of ‘MOGLIE’ products. The invoice reads: ‘Voorlopig voorschot provisie Moglie april’ (which translates in English as: ‘Preliminary deposit for provision of MOGLIE April (2013)).

• Item 24: Invoice dated 17/02/2015 addressed to Blue Retail B.V. (a sister company of Blue Butterfly B.V.) by the company Pronto Moda in relation to the payment of a deposit for the commission for January 2015 for the sale of ‘MOGLIE’ products by the agent Pronto Moda in 2015.

• Item 25: Several invoices dated in 2015 addressed to Blue Retail B.V. by the German agent company Burkhard Noever regarding the monthly sale commissions for the sale of ‘MOGLIE’ products by the agent in Germany.

• Item 26: E-mail dated 04/05/2015 by the agent company Burkhard Noever addressed to Blue Retail B.V., with a copy to info@mogliefashion.nl. The e-mail contains, inter alia, an order form referring to ‘MOGLIE’ goods.

• Item 27: Order form dated 16/04/2015 referring to ‘Moglie’ products ordered in Germany.

• Item 28: E-mail correspondence dated 05/12/2013 between info@moglie.nl. and a customer in relation to a return delivery of a ‘MOGLIE’ product.

• Item 29: E-mail correspondence dated 21/01/2014 between a customer and Blue Butterfly’s agent Mr. J.P. Besseling in relation to conditions and sale of a number of ‘MOGLIE’ products.

• Item 30: Packing lists (‘Pakbon’) and attached order confirmations referring to the sale of ‘MOGLIE’ products in May 2016.

• Item 31: Several purchase orders, including invoicing and packaging instructions, made by the company TJX Europe from the UK, all dated 29/11/2012 in relation to the sale of ‘MOGLIE’ products (dresses, T-shirts, tops) in 2012 to TJX Europe.

• Item 32: Invoices dated 06/12/2012 corresponding to the orders mentioned as evidence Item 31.

• Item 33: Freight bill of lading dated 07/12/2012, showing ‘MelI-Zone B.V./Moglie, NL’ as a shipper, for the shipment of the goods corresponding to the order mentioned as evidence Item 31.

• Item 34: Invoice dated 18/12/2012 by the company Peeters Vervoercentrale in relation to the transport of the orders mentioned as evidence Item 31.

• Item 35: Remittance Advice dated 16/05/2013 by the company TJX UK referring to several invoices dated 17/04/2013 by the vendor ‘Blue Butterfly B.V.’

• Item 36: E-mail correspondence titled ‘New colours of hangtags and labels’ dated 13/11/2013 between Blue Butterfly B.V. and its producing company in relation to the new colours of ‘MOGLIE’ hangtags and labels.

• Item 37: Picture of three ballpoint pens displaying the address details of Blue Butterfly B.V., www.mogliefashion.nl and showing the ‘MOGLIE’ trade mark.

• Item 38: Pictures of Blue Butterfly’s showroom displaying clothing items. The sign ‘MOGLIE’ is visible as well as a variety of clothing goods, for example: , .

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 (such as Mell-Zone B.V. and Blue Butterfly B.V.) implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Consequently, it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was with its consent.

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

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the EUTM is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

In its observations, the EUTM proprietor mentions that in December 2016 it wrote a letter to the applicant in order to obtain more evidence on its motivation and reasons for the application for revocation. However, it did not get any reaction or response from the applicant.

In relation to this, the Cancellation Division notes that Article 63(1)(a) EUTMR grants all natural and legal persons the right to file an application for a declaration of invalidity on the basis of Article 58 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, in the present case, from 06/10/2011 to 05/10/2016.

Indeed, as stated by the applicant, there are a couple of pieces of evidence, namely Items 7, 8 and 9 that are dated in 2010, i.e. slightly before the relevant period and cannot be taken into account. However, the large majority, and a sufficient amount of the evidence, is dated within the relevant 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 (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The evidence, such as the invoices, customer order documents and e-mail correspondence, shows that the place of use is several member states of the European Union (Belgium, the Netherlands, Germany and the United Kingdom). This can be inferred from the language, currency and addresses included in the documents. Therefore, the evidence relates to the relevant territory.

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.

In the present case, the evidence shows that the contested EUTM was used as a trade mark. The evidence filed by the EUTM proprietor shows a link between the goods in question and the use of the mark and that the EUTM was used in accordance with its essential function, which is to guarantee the commercial origin of the goods for which it is registered.

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 purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In the present case, the registered mark is the word mark ‘MOGLIE’ and the proprietor uses it in the following manner , i.e. in slightly stylised letters. However, this does not alter the distinctive character of the mark, since the word ‘Moglie’ is clearly legible. Consequently, 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.

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 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).

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 applicant argues that the evidence does not provide conclusive information regarding the commercial volume, duration and frequency of use of the disputed trade mark. Having examined the evidence, the Cancellation Division is of the opinion that for part of the contested goods for which the EUTM is registered, the evidence (especially the invoices and packing lists, but also the remaining evidence such as the catalogues, purchase orders, website screenshots, list of agents, etc.), viewed in combination and as a whole, gives sufficient information regarding the extent of use of the mark. The evidence shows that the EUTM proprietor has offered and sold its goods uninterruptedly throughout the whole relevant period, in sufficient quantities and in several different EU member states.

Although part of the information in the evidence is blacked out (the names of the addressees or the price of the goods and the total amounts), the invoices and purchase orders nevertheless confirm, either directly or indirectly, the sale of ‘MOGLIE’ products, to companies in the relevant territory during the whole relevant period. Furthermore, some of the documents show that the quantity of goods itemised reaches several thousand items. Together with the remaining evidence (catalogues, website print screens, e-mail correspondence, packing lists and photographs), it can be concluded that use was regular, throughout the whole period, to different customers and in several member states.

The applicant criticizes each and every piece of the evidence. In particular, it argues that the catalogues are undated and do not provide additional information to indicate whether they had been actually distributed; there is also no information on the price of the goods. In this regard, the Cancellation Division reminds that a piecemeal approach to the evidence is not appropriate and that the evidence must be considered in its entirety. In the present case, all the catalogues are actually dated. Furthermore, some of them show product codes of the goods that correspond to the coding used in the other items of evidence, such as the invoices and order confirmations. The prices of the goods can be ascertained, as they are indicated in some of the invoices and order forms and on the proprietor’s website. Although, as noted by the applicant, there is no information in relation to the actual distribution of the catalogues, or information such as website visitor statistics, this does not make this evidence unsuitable. It is clear in this case, that the ‘missing’ information in some of the pieces of evidence can be safely found or corroborated by other documents. The lack of information on sales through the website or statistics on website visits is compensated by the fact that there are other items of evidence that doubtlessly show that sales of the goods took place and that the proprietor had customers in several EU countries. Taking into account all the relevant factors be viewed as a whole and not in isolation, such as the territorial scope of use, the frequency of use shown throughout the whole relevant period, it is deemed that actual use of the trade mark at issue took place to a sufficient extent.

Consequently, considering the evidence in its entirety and based on an overall assessment, the Cancellation Division considers that the evidence gives sufficient information regarding the extent of use of the mark for part of the registered goods (see next section).

Use in relation to the registered goods

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 goods in Classes 9, 14 and 25. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the contested goods.

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)

Use for the goods in Class 25

In relation to the goods in Class 25, the EUTM is registered for the following goods in this Class: Clothing, footwear, headgear. The evidence (such as invoices, catalogues, order forms, website extracts, etc.) shows that the proprietor used the mark for various clothing items (such as T-shirts, tops, dresses, skirts, trousers, blazers, etc.). In view of this, the Cancellation Division finds that sufficient evidence was filed to prove the use of the EUTM for clothing. Although the term Clothing is broadly defined and may include a wide variety of goods, the EUTM proprietor is not expected to prove use in relation to all conceivable variations of the goods concerned. This is also, in order to respect the legitimate interest of the proprietor in being able in the future to extend its range of goods, as reflected in the above-cited Aladin judgement.

In relation to the remaining goods in this Class, namely: footwear, headgear, the EUTM proprietor did not submit any evidence of use or any proper reasons for non-use of the contested EUTM.

Use for the goods in Classes 9 and 14

Apart from claiming that the evidence proves use in relation to all the contested goods, the EUTM proprietor did not submit any evidence of use or proper reasons for non-use of the contested mark in relation to the contested goods in Classes 9 and 14. Therefore, no genuine use was proved for these goods.

As regards the argument of the applicant in relation to Item 37 of the evidence, consisting of a picture of three ballpoint pens displaying the address details of Blue Butterfly B.V., www.mogliefashion.nl and showing the ‘MOGLIE’ trade mark, it is clear that these items were included as an example of promotional/merchandise items and not in order to claim use in relation to ballpoint pens, which are not even covered by the contested trade mark registration list of goods.

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 time, place, extent and nature of use for some the contested goods in Class 25 for which the mark is currently registered, namely:

Class 25: Clothing.

Therefore, the EU trade mark registration remains registered for the abovementioned goods and the application for revocation is not successful in this respect.

However, the evidence submitted is insufficient to prove genuine use of the contested EUTM in relation to the remaining contested goods, for which it must, therefore, be revoked.

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 9: Spectacles, spectacle frames, spectacle lenses, sunglasses, lenses for sunglasses, fittings for sunglasses, including clip-on sunglasses and eye protectors.

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 25: Footwear, headgear.

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 06/10/2016.

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 NEMETH

Liliya YORDANOVA

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.