CANCELLATION No 12951 C (REVOCATION)
American Franchise Marketing Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (applicant)
a g a i n s t
Fetim B.V., Kopraweg 1, 1047 BP Amsterdam, Netherlands (EUTM proprietor), represented by NLO Shieldmark B.V., New Babylon City Offices 2ème étage Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative).
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 9 078 916 are revoked in their entirety as from 17/05/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 630.
The applicant filed a request for revocation of European Union trade mark No 9 078 916 ‘SANICI’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:
Class 6: Bathroom accessories included in this class, including hooks, bath grips and holders for glass plates; metal building materials.
Class 11: Sanitary installations, including toilets, toilet seats and lids, flushing tanks, washbasins, shower and bath cubicles and screens, bidets and bath linings; water taps, showers, shower kits, shower heads and other sanitary ware and devices, not included in other classes; sinks (parts of sanitary installations);apparatus for water supply and water treatment purposes; water heating installations; sauna installations and apparatus, and parts therefor; goods in the field of heating, including radiators, under-floor heating, infrared films, skirting board heating, thermostats.
Class 20: Furniture, including bathroom cabinets; mirrors; picture frames; coathooks, not of metal; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; wash mitt rails; towel rails; mirror holders; bathroom shelves included in this class; washstands (furniture); shower curtain rings and rails.
Class 21: Bathroom accessories, namely mugs and glasses, glass and mug holders, toilet-roll holders and holders for spare toilet rolls, holders for moist tissues and moist toilet paper;bathrrom shelves, toilet brushes, toilet brush holders, towel rings, drying racks (for laundry), towel holders not included in other classes, towel rings; sponge and soap dishes (including magnetic), buckets and toothbrush holders; window wipers, with or without holders; towel rails and rings.
Class 35: Retail and wholesale services in relation to sanitary, building and installation materials and DIY products, including sanitary, bathroom and toilet fittings, saunas and steambaths, goods for heating, including radiators, mirrors, furniture, furnishings, lighting, hanging and fastening devices and systems, shelf brackets, scaffolding, staircases and ladders, storage racks and devices; sales promotion; marketing; advertising; public relations; demonstration of goods.
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 07/12/2010. The revocation request was filed on 17/05/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 20/05/2016, 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 17/05/2016.
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
Daniel CAMPAGNE KOEK
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.