CANCELLATION DIVISION



CANCELLATION No 15 841 C (REVOCATION)


Benetton Holdings Ltd., 46 Micoud Street, Castries, St. Lucia, West Indies, Saint Lucia (applicant), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative)


a g a i n s t


Canadian Tire Corporation, Limited, 2180 Yonge Street, M4P 2V8, Toronto, Ontario, Canada (EUTM proprietor), represented by Bird & Bird LLP, 12 New Fetter Lane, London EC4A 1JP, United Kingdom (professional representative).


On 20/11/2019, 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 9 052 903 are revoked as from 08/09/2017 for some of the contested goods, namely:


Class 12: Accessories related to car racing, namely covers for automobiles, seat covers, steering wheel covers and mirrors; accessories related to car racing namely shaped or fitted floor mats for motor and land vehicles; none of the aforesaid accessories being for use with motor-homes, caravans and camping cars; apparatus for locomotion by land, including motorcycles but excluding motor-homes, caravans and camping cars.


Class 18: Athletic bags for car racing and cycle sports accessories.


Class 25: T-shirts, shirts, pants, jackets, sweaters, socks, hats and caps all afore mentioned products all for car racing and cycle sports.


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


Class 25: Driving and walking shoes.


4. Each party bears its own costs.


REASONS


On 08/09/2017, the applicant filed a request for revocation of European Union trade mark registration No 9 052 903 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:


Class 12: Accessories related to car racing, namely covers for automobiles, seat covers, steering wheel covers and mirrors; accessories related to car racing namely shaped or fitted floor mats for motor and land vehicles; none of the aforesaid accessories being for use with motor-homes, caravans and camping cars; apparatus for locomotion by land, including motorcycles but excluding motor-homes, caravans and camping cars.


Class 18: Athletic bags for car racing and cycle sports accessories.


Class 25: T-shirts, shirts, pants, jackets, sweaters, socks, hats and caps all afore mentioned products all for car racing and cycle sports; driving and walking shoes.


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


SUMMARY OF THE PARTIES’ ARGUMENTS


In the application of revocation of 08/09/2017, the applicant only indicated the grounds of Article 58(1)(a) EUTMR, without submitting any particular arguments in support thereof.


On 12/10/2018, the EUTM proprietor submitted written arguments and evidence of use (four annexes, which will be listed and analysed further down in the following section of the decision). It provides a description of the items filed as proof of use and shows in the main that the ‘PILOTI’ brand ‘is certainly one of certain prestige and reputation’, well-known across the EU and extensively used since 1999, including within the EU.


In their further submissions (applicant on 13/02/2019 and EUTM proprietor on 20/06/2019), each of the parties puts forward arguments as to the insufficiency of the evidence of use (the applicant) and respectively the dismissal of the application for revocation (the EUTM proprietor), which will be detailed by the Cancellation Division further down, in the following section of the decision. The applicant also filed a witness statement given on 13/02/2019 by a director of Swindell & Pearson Ltd accompanied by exhibit KT001, namely internet printouts (two pages) from https://www.classicdriver.com aimed at showing that the company Richbrook International Ltd is the importer/distributor for the proprietor’s goods.


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 Rule 40(5) Commission Regulation (EC) No 2868/95 in conjunction with Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), 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 03/12/2011. The revocation request was filed on 08/09/2017. 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 08/09/2012 to 07/09/2017 inclusive, for the contested goods listed in the section ‘Reasons’ above.


On 12/10/2018 the EUTM proprietor submitted the following evidence as proof of use:


  • Annex 1: Internet printouts from (i) https://www.piloti.ca containing an overview of the history of Piloti Inc. (founded in 1999 by a sport shoe designer and racing enthusiast, the company quickly became a fixture in the car and racing world, gearing some of the world’s highest-profile drivers) and mentioning, inter alia, ‘Piloti’ driving shoes and from (ii) https://www.pilotiuk.co.uk containing a press release reporting on the partnership between Piloti and Le Mans 24 hour sports car race at the June 2017 race and the ‘Piloti’ Circuit Le Mans limited edition leather driving shoes (‘limited edition leather driving shoes specially designed for fans of the world’s most renowned sports car race’), available for purchase at 24 Hours of Le Mans boutiques (in Le Mans and Paris, France), in speciality motorsports boutiques world-wide and online at Piloti.com.

  • Annex 2: Press clippings from specialised UK publications (‘Ultimate Porsche’, August 2017; ‘Auto Express’, August 2017 and March 2016; ‘BMW Car’, no date is visible on the document, but the proprietor informs the issue is dated in April 2016; ‘BMW Performance’, April 2016, ‘Classic Cars’, June 2016; ‘Classic & Sports Car’, August 2017;’Classic Ford’, June 2016; ‘GT Porsche’, April 2016; ‘Performance Ford’, December 2015 and ‘Performance Vauxhall’, 2016) reporting on ‘Piloti’ driving shoes, including the ‘Piloti’ Le Mans edition.

  • Annex 3: Selection of invoices (around 32, out of which 3 submitted in duplicate) dated between 09/03/2016 and 26/09/2017. The documents are issued by the proprietor’s company (based in Canada) and addressed to Richbrook Int. Limited (based in the UK) in relation to the sale of men shoes, men T-shirts and polo shirts, pit crew cap and leather bags (laptop and respectively weekender bags). The invoices dated in 2016 are also accompanied by a pick/pack list. The sign is featured on the 2016 and some of the 2017 invoices, whereas the other invoices dated in 2017 show the sign . The same annex includes one invoice of 11/05/2017 issued by Richbrook International Ltd (UK) and addressed to the proprietor in relation to advertising Feb/Mar/Apr 2017 and 50% advertising contribution Classic Driver.

The proprietor’s submissions of 12/10/2018 further include a table outlining example sales/turnover data for sales in the UK for ‘Piloti’ branded goods:

  • Annex 4: A summary chart detailing goods referred to in the invoices filed as Annex 3 and internet printouts from the website www.piloti.com (including obtained via the WayBackMachine) showing ‘Piloti’ branded goods (men shoes and T-shirts) as referred to in the summary chart. The sign ‘Piloti’ is featured on the shoes (mainly as ) and on T-shirts ( / ).


Preliminary remark on the applicant’s criticism of the evidence


The applicant assesses and challenges the evidence filed by the EUTM proprietor, arguing in the main that the documents are not sufficient to prove that the use of the subject mark constitutes genuine use.


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.


The applicant further puts forward that the EUTM proprietor did not make available any evidence ‘that meets with Article 97(1)(f) EUTMR’ (statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up) and that there is no statement in writing from the EUTM proprietor or from any third party to confirm the truth or accuracy of the documents filed. Such arguments cannot succeed either. The Cancellation Division recalls that there is no limit on the methods and means of proving genuine use of a mark (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46) and no obligation on the part of the EUTM proprietor to file any such statements.


Therefore, these claims of the applicant must be set aside.


Assessment of genuine use – factors


Time of use


The evidence must show genuine use of the EUTM within the relevant period.


Part of the evidence is dated within the relevant time frame, as detailed above when listing the evidence of use.


The applicant’s claims on some documents being undated or dated outside the relevant period and therefore inadmissible as evidence cannot succeed. Even if indeed the date and year for the extract from the ‘Classic Cars’ magazine ‘appears to have been covered up by an overlapping article’, the article mentioning ‘Piloti’ shoes includes a reference to June 2016 (‘Win Piloti Driving Shoes worth £285’ [….] ‘The competition closes June 21, 2016’) which supports the proprietor’s claims that the respective issue is dated in June 2016. The images of products in Annex 4 (even if some showing just a printout date in October 2018 and even if from the proprietor’s US website) may serve to show how the mark was used in relation to the relevant goods and to provide information regarding the type of goods the proprietor manufactures and markets, and therefore cannot be ignored in the evidence’s overall evaluation (13/02/2015, T-287/13, HUSKY, EU:T:2015:99, § 67-68). In addition, the evidence dated outside the relevant time frame may serve to confirm or assess more accurately the extent to which the mark was used during the relevant period and the EUTM proprietor’s real intentions at the time.


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 EUTM has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).


Use of the mark by a client importing goods for which the mark is registered can be sufficient to demonstrate genuine use if it appears that importing is commercially justified for the proprietor of the mark (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 24).


In this regard, use of a trade mark for importing goods from another state does constitute use in the context of a commercial activity with a view to an economic advantage. Import-export is a normal, everyday activity for undertakings, necessarily involving at least two countries. It cannot be validly maintained that use of the mark when importing the goods at issue cannot be taken into account for assessing whether the contested EUTM has been genuinely used in the territory of that Member State in the context of a commercial activity with a view to economic advantage (09/07/2010, T‑430/08, Grain Millers, EU:T:2010:304, § 40 et seq.).


In the present case, the invoices in Annex 3 show that goods under the sign ‘Piloti’ were imported from Canada to the UK. This is further confirmed by the clippings from UK specialised press (see Annex 2 above) which report on ‘Piloti’ driving shoes, mention the price in GBP and indicate the website ‘www.piloti.co.uk’ as contact. Further indications relating to the place of use can be inferred from the press release in Annex 1 regarding the partnership between Piloti and Le Mans 24 hour sports car race in June 2017. Therefore, the evidence of use filed by the proprietor contains sufficient indications concerning the place of use.


Extent of use


Concerning the 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).


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.


The applicant went to great lengths to criticise the evidence filed by the proprietor. Its main arguments can be summarised as follows: (i) the relevant sales figures provided are only in relation to one UK company; the amounts are in U.S. Dollars rather than pounds sterling which suggests very strongly of sales in the USA with the goods imported into the UK by the customer; (ii) there is no evidence of use in the course of trade and it appears that Richbrook International Limited is actually economically linked to the EUTM proprietor; therefore, all of the sales to this company should be ignored; (iii) the sales figures only provide ‘very, very small volume of sales’, especially taking into account that the goods are ‘everyday mass consumption goods’; (iv) there is no information as to whether the goods purchased by Richbrook were actually kept or returned as unsold products or whether they were actually branded with the mark at issue and (v) there is nothing stated what the goods in the invoices actually are; often there is just a size and colour stated with no definitive proof as to the type of goods provided in the invoice. In addition, in its observations of 13/02/2019, the applicant provided a table containing a breakdown of sales from the proprietor to Richbrook International Ltd showing a total of 255 goods ordered (1 hat, 6 T-shirts, 2 leather bags and 246 shoes) for a total amount of USD 21,651.30 (respectively GBP 16,755.25 as of 13/02/2019). It further referred to a number of six cases (taken from the Office’s Guidelines) as examples of case law where evidence of extent of use was deemed insufficient and stated that many of them are ‘on a par with the evidence provided’ by the proprietor.


It is true that the amounts billed are not in GBP, that the invoices are addressed to one UK company only, which is the proprietor’s distributor and that there is no evidence that the goods were kept or returned. However, it follows from case law that use of the mark by a single client which imports the goods for which the mark is registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 24). Furthermore, it is recalled that the various pieces of evidence must be assessed in conjunction with each other and not in isolation. From a corroborated interpretation of the invoices with the clippings from the UK specialised press reporting on ‘Piloti’ driving shoes (which as mentioned, show the price of the goods in GBP and refer to the UK website of Piloti) it is clear that the shoes under the EUTM have been imported in the relevant territory and offered for sale to end consumers, that the use of the sign was public and the sign was exposed to the public at large with the aim of creating a market for the products on which it was applied.


It is also not disputed that with one exception (see press release in Annex 1 mentioning the availability of ‘Piloti Le Mans’ in French boutiques) the materials submitted by the EUTM proprietor in order to prove genuine use of the contested EUTM relate to the UK only. However, it is recalled that the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. Furthermore, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes and the appropriate approach in territorial terms is not that of political boundaries but of market(s). As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 30).


It is also worth noting that the EUTM proprietor is not under the obligation to submit detailed financial information, since the obligation incumbent to produce evidence of genuine use of a trade mark is not designed to monitor the commercial strategy of an undertaking (08/07/2004, T-334/01, ‘Hipoviton’, EU:T:2004:223). In the present case, as the numbers of some of the invoices are rather far apart, this allows for the inference that these documents are just examples of sales.


Furthermore, the evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the characteristics of the market in question. Contrary to the applicant’s arguments, the driving shoes are not ‘everyday mass consumption goods’. In this regard, the Cancellation Division agrees with the EUTM proprietor in that the goods at issue are not off-the-mill products. As can be seen from the evidence, that the proprietor markets under the ‘Piloti’ mark specialised driving shoes, with ‘patented Roll Control heal technology – rising spherically up the back of the shoe providing improved traction in the wheel well and cupping the driver’s heel for reduced foot fatigue’, designed first and foremost for competitive motorsport. Furthermore, as can be seen from the documents in Annex 2 their retail price starts at GBP 115 and up to GBP 335.


It is true that the shoes are identified in the invoices by ‘colour’ and ‘style’ (such as ‘Prototipo’, ‘Pistone’, ‘Spyder’, ‘Campione’, ‘Mille’ etc), however the vast majority of the invoices include at the end a summary where the nature of the goods is clearly specified (i.e. men’s shoes). Moreover, as mentioned already, the invoices have to be interpreted in conjunction with the rest of the evidence, in particular the table in Annex 4 and the printouts from the proprietor’s website, which provide information on, among other things, the nature of the goods concerned and which clearly show the shoe model mentioned in the invoice and the contested EUTM on the goods themselves. In addition, the ‘Piloti’ sign is also featured at the top of part of the invoices.


Finally, the six cases referred to by the applicant are not relevant for the present proceedings, either because they concern goods that are not comparable (for example water) or because, even if the goods are shoes or belong to the same or related trade sector, the circumstances were distinct and therefore not analogous to the present case. In particular, in opposition no 70 716 (the sole of the invoked cases where the goods concerned were shoes) there was only one invoice presented, whereas in the current proceedings, the EUTM proprietor made available several invoices which provide the Cancellation Division with sufficient indications as to the frequency of use.


Therefore, the Cancellation Division is of the opinion that in the present case, when assessing the evidence as a whole and in view of the period and frequency of use and the market concerned (specialised driving shoes, as explained) it must be considered that the materials submitted (albeit not particularly extensive) are sufficient to show that the EUTM proprietor has seriously tried to maintain or create a commercial position in the relevant market and that there is sufficient information concerning the commercial volume, the duration, and the frequency of use. However, this conclusion applies only in relation to some of the goods for which the EUTM is registered (as will be explained in detail in the following section of the decision ‘Nature of use’, subsection ‘Use in relation to the registered goods’).


Nature of use


In the context of Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation), the expression ‘nature of use’ includes evidence of the use of the mark as registered, or of a variation thereof according to Article 18(1)(a) EUTMR, evidence of the use of the sign as a trade mark in the course of trade and evidence of its use for the goods and/or services for which it is registered.


Use as a trade mark and use of the mark as registered


Nature of use requires, inter alia, that the contested EUTM 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.


Nature of use’ in the context of Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation) also 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 EUTM.


The materials submitted, when assessed as a whole, show that the sign ‘Piloti’ is clearly featured on the goods themselves as well as at the top of some of the invoices and therefore the contested EUTM was used in such a way as to establish a clear link between some of the registered goods and the proprietor.


As regards the use of the mark as registered, the contested EUTM is the figurative mark . It was used mainly as shown above when listing the evidence. The use of different colours does not alter the distinctiveness of the mark since the word ‘Piloti’ is clearly legible and, moreover, depicted in the same font as registered. For the sake of completeness it is noted that in some instances the mark is used together with other signs, such as for example , or which are also featured on the goods. As regards these additional elements, there is no legal precept in the European Union trade mark system that obliges the proprietor to provide evidence of the mark alone when genuine use is required and two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the registered trade mark (T-463/12,MB, EU:T:2014:935, §43). Indeed, it is common practice in trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). Therefore, it is considered that, in the context of the evidence as a whole, the documents submitted do show that the contested EUTM was used in such a way as to establish a clear link between the goods and the EUTM proprietor and in a form which does not alter its distinctive character.


Use in relation to the registered goods


Article 58(1)(a) EUTMR and Rule 22(3) Commission Regulation (EC) No 2868/95 (in the version in force at the time of filing the application for revocation) require that the EUTM proprietor proves genuine use for the contested goods for which the EUTM is registered.


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)


As seen above, the evidence shows that ‘Piloti’ is genuinely used only in relation to several types of driving shoes for men. It is further clear from the evidence that some of the goods (for example ‘Prototipo’ or ‘Spyder’ shoes) are part of a more casual range of shoes (‘styled to blend into any outfit’ and ‘despite the racing pedigree, the shoes are engineered for comfort – more for weekend driving than track days’; designed for everyday comfort and style both in and out of your car’) and to that extent there is a certain overlap with the purpose of characteristics of a walking shoe. The contested EUTM is registered in Class 25 for, inter alia, driving and walking shoes. Taking into account the evidence of use filed by the EUTM proprietor and bearing in mind that the EUTM proprietor is not required to prove use of all the conceivable variations of the category of goods and also the principles set out in the above mentioned Aladin judgement and in particular the legitimate interest of the proprietor in being able in the future to extend his range of goods, within the confines of the terms describing the goods for which the trade mark was registered, the Cancellation Division deems that genuine use of the trade mark must be established for driving and walking shoes in Class 25.


There are very few references in the invoices to other goods, namely 1 cap, around 6 T-shirts/polo shirts and 2 leather bags. However, the Cancellation Division agrees with the applicant that the quantities sold are clearly too modest to secure use for bags in Class 18 and respectively T-shirts and caps in Class 25.


For the remaining registered goods in Classes 12, 18 and 25, the proprietor did not submit any evidence of use and therefore, the EUTM must be revoked.


Conclusion


It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the registered goods in Classes 12 and 18 and for the vast majority of the registered goods in Class 25 (with the exception of driving and walking shoes) and therefore the mark must be revoked for said goods.


The EUTM proprietor has proven genuine use for the remaining contested goods, namely driving and walking shoes in Class 25; 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 08/09/2017.


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



Liliya YORDANOVA


Oana-Alina STURZA

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.



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