CANCELLATION No 19 784 C (REVOCATION)

Iko Europe, NV, d' Herbouvillekaai 80, 2020 Antwerp, Belgium (applicant), represented by Arnold & Siedsma, Meir 24, 2000 Antwerp, Belgium (professional representative)

a g a i n s t

Recticel S.A., Avenue des Olympiades, 2, 1140 Brussels, Belgium (EUTM proprietor), represented by Djamila Mahlous (Recticel S.A.), Olympiadenlaan 2, 1140 Brussels, Belgium (employee representative).

On 30/08/2019, the Cancellation Division takes the following

DECISION

1. The application for revocation is rejected in its entirety.

2. The applicant bears the costs.

REASONS

On 08/02/2018, the applicant filed a request for revocation of European Union trade mark registration No 9 096 504 ‘POWERWALL’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 17: Insulation materials.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

Except for selecting the grounds of Article 58(1)(a) EUTMR in the application for revocation of 08/02/2018, the applicant did not submit any particular arguments.

On 08/05/2018, the EUTM proprietor filed written observations and evidence of use (several annexes which will be listed and assessed further down in the following section of the decision). It provides information on, inter alia, the context of the present revocation action (the parties are companies established in the same region of Belgium and they manufacture and sell rigid insulation panels for insulation purposes) and the oppositions it filed against the applicant’s EU trade mark applications where the same evidence of use was submitted. The proprietor further describes the items filed as proof of use and states, in the main, that the documents clearly show use of the contested EUTM for the registered goods. Moreover, in Belgium the mark has acquired an increased distinctive character in view of the intensive use made of it and of its commercial success.

In its observations in reply of 27/09/2018, the applicant individually assesses and challenges the items of evidence filed by the EUTM proprietor (as it will be detailed herein below, in the following section of the decision) and contends essentially that the contested EUTM should be revoked for all the contested goods. It also points out that ‘if the Office is of the opinion that ‘POWERWALL’ is genuinely used in the EU, the list of goods should be restricted to rigid insulation panels made of polyurethane foam as it is clear that the mark would only be used for this type of insulation and does not cover the whole of insulation materials in Class 17’.

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 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 05/10/2010. The revocation request was filed on 08/02/2018. 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 08/02/2013 to 07/02/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 08/05/2018 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

For Belgium

• Declaration of 10/06/2016 from Deloitte Reviseurs d’Entreprises (Belgium) showing the turnover and volume in the Benelux countries for, inter alia, ‘POWERWALL’ insulation products, for each of the years 2011 to 2015 (document in French).

• Selection of documents dated between 2010 and 2015 and relating to market research services ordered by the proprietor from Plus Point Marketing and Essencia (orders, invoices, extracts from interviews, report examples, extracts from the website essencia.be explaining the services rendered). Part of the Plus Point Marketing evidence contains explicit references to ‘POWERWALL’, such as for example an order dated October 2010, a questionnaire from April 2014 or two reports from May 2012 and May 2013. The proprietor explains that since 2005 it purchases the services of Plus Point Marketing in order to do market research with architects in Belgium and Luxembourg and to establish how familiar the architects are with Recticel’s insulation brands, specifically POWERWALL and POWERROOF. It is further shown, that since 2006 the proprietor also orders market research from Essencia, who visits 1000 building sites per year and drafts a monthly report for Recticel concerning relevant changes in the building industry.

• Selection of documents dated between 2013 and 2015 (invoices and extracts from publications, such as ‘be.passive’, ‘Architrave’, ‘Bouwnieuws’, ‘Fundamenten’, ‘Close Up News’, ‘Roof Belgium’ or ‘Renoscripto’) relating to advertising for ‘Powerwall’ insulation panels or mentioning the proprietor and/or ‘Powerwall’. Part of the evidence also shows that ‘Powerwall’ is part of the ‘ISO.finish’ concept (a cooperation of six well-established brands of building materials, where the POWERWALL insulation panels of Recticel are each time combined with one or other qualitative outer wall finishing, according to the information provided by the proprietor). The sign is shown mainly as ,  ,  ,  .

• Selection of documents dated between 2013 and 2015 (invoices, pictures, promotional leaflets, printouts from the website www.recticelinsulation.be/news section) relating to the proprietor’s participation in fairs, such as ‘Batibouw’ - Brussels, ‘Bisbeurs’ – Ghent or ‘Energie & Habitat’ – Wallonia. Part. Part of the evidence mentions ‘POWERWALL’.

• Printouts from www.recticelinsulation.be (the proprietor’s website), www.bativox.be and www.nieuwsblad.be dated between 2014 and 2015 (in French and/or Dutch). Part of the evidence mentions ‘POWERWALL’ insulation and the ‘IsoFinish’ concept.

• Selection of documents related to the ‘Keymark’ certificate (printouts from www.insulation-keymark.org, invoices dated in 2013 and 2014 for, inter alia, ‘Powerwall’ certificate). According to the evidence, the Keymark for thermal insulation products will assist users to differentiate between products conforming to the legally required minimum (safety) characteristics in the European Economic Area (CE Marketing) and products conforming to the complete European product standard (Keymark). It is further explained that Keymark is the result of voluntary certification scheme developed by the European standardisation bodies, which are member of the European Committee for Standardisation (CEN).

• Eight partly redacted invoices issued by N.V. Recticel S.A. between March 2016 and January 2018 and addressed to customers located in Belgium for the sale of (among others) ‘Powerwall’ goods.

For Poland

• Selection of partly redacted invoices issued by Recticel S.A./N.V. Recticel between 2011 and 2015 and addressed to customers located in Poland. There are two invoices (one of October 2014 and one of March 2015) related to the sale of ‘Powerwall’ goods.

For France

• Selection of partly redacted invoices issued by Recticel Insulation S.A.S. between 2013 and 2018 and addressed to customers located in France. There are four invoices (of March 2013, April 2016, October 2016 and January 2018) in relation to the sale of ‘Powerwall’ goods.

• Selection of press articles/extracts from publications (‘Bâtirama’, ‘Bati Distribution’, ‘Maison & Jardin L’Essentiel’, ‘Maires France’, ‘ACPress.fr’, ‘leblogdubatiment.com’, ‘Bati & Isolation’ or ‘Batiweb’) dated in 2013 and 2015 and mentioning the EUTM proprietor and ‘Powerwall’ insulation panels.

• A ‘Powerwall’ instruction manual of July 2013 (document in French).

• Two ‘Powerdeck’ brochures (documents in French).

• A ‘Powerwall’ ( , ) brochure of 2014 (document in French).

For the Czech Republic

• Two invoices (of March 2013 and August 2014) issued by Drukkerij Schaubroeck nv/sa (Belgium) and addressed to Recticel. The 2014 invoice refers to, inter alia, 200 ‘Powerwall’ Czech leaflets.

For Denmark

• Three partly redacted invoices issued by N.V. Recticel S.A. between January 2016 and October 2017 and addressed to customers located in Denmark for the sale of, inter alia, ‘Powerwall’ goods.

For the Netherlands

• Five partly redacted invoices issued by N.V. Recticel between February 2016 and November 2017 and addressed to clients located in the Netherlands for the sale of ‘Powerwall’ goods.

Preliminary remark

As mentioned above under the Summary of the Parties’ Arguments section, the applicant individually assesses and challenges each of the items of 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.

Assessment of genuine use – factors

Time and place of use

The evidence must show genuine use of the contested EUTM within the relevant period (from 08/02/2013 to 07/02/2018 inclusive) and in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

Part of the evidence is dated within the relevant time frame, as detailed above when listing the evidence of use. Furthermore, the documents submitted by the EUTM proprietor (and in particular the articles and extracts from French and Belgian press as well as the invoices showing sales of ‘Powerwall’ goods in Belgium and France), show that the place of use is, at least, these two Member States. This can be inferred from the language of the documents, the currency and the reference to customers located in these countries. Further indications as to the place of use can be inferred from the invoices showing sales of ‘Powerwall’ goods in Denmark, the Netherlands and Poland.

The applicant’s claims on some documents being undated or dated outside the relevant period and therefore ‘irrelevant’ or on the lack of evidence for a certain part of the relevant period (such as no invoices or other proof in the Netherlands for the first three years, no sales figures or number on volumes sold in Benelux or any other EU countries for the years 2016, 2017 or 2018 or no proof of attendance to any fair in the EU in the last three years) cannot succeed. Images of products 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. Finally, regarding the duration of use, it is important to remember that only trade marks whose genuine use was interrupted for a continuous period of five years are subject to the sanctions provided for in Article 18(1) EUTMR. Therefore, it is sufficient for avoiding these sanctions that a trade mark was genuinely used for only part of this period (16/12/2008, T 86/07, Deitech, EU:T:2008:577, § 52;09/07/2009, R 623/2008 4, Walzer Traum (fig.) / Walzertraum, § 28).

Against this background, it is considered that the evidence contains sufficient indications concerning the time of use and relates to the relevant territory.

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 argue that the contested EUTM was not genuinely used in the EU and criticised the evidence mainly on the grounds that: (i) the insulation market in the EU is huge (copy of the report ‘Competitive landscape of the EU’s insulation materials industry for energy-efficient buildings’ published by the European Commission in 2018 filed as Annex 1); Germany, France and Poland are the leading countries in the EU market for thermal insulation materials and the EUTM proprietor failed to prove use in any of these countries; (ii) there is proof of use filed for Belgium, which is not even mentioned separately in the report and falls under other EU country; furthermore, the Belgium insulation market is almost to be neglected in comparison with other EU countries; (iii) the invoices do not cover a particularly long time or a particularly large territory; (iv) there are no sales on a regular basis (i.e. every month in every year), the quantities sold are not known and there is no indication of turnover in the EU at all; (v) the proprietor does not mention the number of copies of the magazines per issue, number of reader per issue, the number of times the add was shown in the magazine etc. and (vi) the declaration from Deloitte is drafted upon the proprietor’s request and therefore should be given less weight than independent evidence; moreover, as it is not supported by further evidence, it is in itself of hardly any weight.

These arguments of the applicant cannot succeed for the reasons given herein below.

The documents filed by the proprietor, especially the advertising materials and press clips along with the invoices show the intensive media coverage (at least in Belgium and France) for the goods marketed under the sign ‘POWERWALL’, that such goods were offered for sale to consumers and that the use was public and the sign was exposed to the public with the aim of creating a market for the products on which it was applied. It is true that the materials submitted relate mainly to Belgium and France. 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 true that the invoices are not numerous and the information was partly redacted. Nevertheless, the quantities of ‘Powerwall’ goods are, contrary to the applicant’s claims, readable. While the invoices do not show impressive quantities, these documents have to be interpreted in conjunction with the remaining evidence on file, in particular the figures provided in the declaration from Deloitte and the publications mentioning ‘Powerwall’ goods which indicate that the physical volumes of sales were not merely token, and are sufficient for establishing a commercial scale of transactions related to some of the goods at issue. In addition, the invoices submitted by the EUTM proprietor are only samples and do not represent the total sales (which can be inferred from the non-consecutive numbering and dates of the respective documents). In this context it must also be remembered that the purpose of the requirement for genuine use of the contested mark is not to assess commercial success of the undertaking in question.

As for the lack of further information on the publications/magazines, it is noted that in some instances the proprietor did provide circulation figures (for example for ‘Bouw Nieuws’, Close Up News (FR or NL)). While this may not apply for all the publications, it is clear from the body of evidence before the Cancellation Division that the press coverage and advertising of ‘Powerwall’ goods in Belgium and France was intensive. The declaration from Deloitte, even if drafted following the proprietor’s request, it is supported by further evidence, in particular the invoices for Belgium and the Netherlands. Furthermore, as it can be inferred from this document, it was drafted following the International Standard on Related Services, Norme ISRS and as such there is no reason, prima facie, to doubt its accuracy. Finally, as already shown above, there is evidence of use related to France and, albeit very scarce, also for Poland.

Against this background, the Cancellation Division is of the opinion that in the present case, when assessing the evidence as a whole, it must be considered that the materials submitted 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 on the commercial volume, the territorial scope, the duration and the frequency of use.

Nature of use: 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 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 EUTM.

As regards use as a trade mark, the materials submitted show that the contested EUTM was used in such a way as to operate a clear link between the goods and the EUTM proprietor. The Cancellation Division considers, therefore, that the evidence, when assessed in its entirety shows use of the sign as a trade mark.

As regards use of the mark as registered, the contested EUTM is the word mark ‘POWERWALL’. It was either used as such (for example in the invoices) or in a figurative form (essentially as (1) , (2) and (3) ). The use of a different typescript and of colours for the signs (1) and (3) is acceptable and does not alter the distinctive character of the mark since the word ‘POWERWALL’ is clearly legible. The same conclusion has to be reached for the sign (2) since the stylisation of the second letter is not of such a nature as to impede consumers from perceiving and recognising it as such (the letter ‘O’). It is also noted that in some publications/leaflets the sign is shown as / . The additional verbal elements are being placed in a secondary position and, more importantly, will not be attributed any trade mark significance since they merely inform consumers on the nature of the goods. Therefore, it is concluded that use is shown of the contested EUTM either as registered or in a form which does not alter its distinctive character.

Nature of use: 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 for which the EUTM is registered.

The contested EUTM is registered for insulation materials in Class 17. The evidence shows use for insulation panels.

According to Article 58(2) EUTMR, where there are grounds for revocation in respect of 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 shown above, the applicant contends that the list of the EUTM should be restricted to rigid insulation panels made of polyurethane foam.

While it is true that the evidence shows use for insulation panels made from polyurethane only and these goods represent only one type of insulation material, it can be inferred from the documents on file that the goods are for exterior use, for thermal insulation and that they also have fire resistance properties. In addition it is recalled that the EUTM proprietor is not required to prove use of all the conceivable variations of the category of goods. Therefore, and bearing in mind 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 the entire category of the specification, namely insulation materials.

Conclusion

It follows from the above that the EUTM proprietor has proven genuine use for all the contested goods. Consequently, the application for revocation must be rejected as unfounded.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case, the EUTM proprietor did not appoint a professional representative within the meaning of Article 120 EUTMR and, therefore, it did not incur representation costs.

The Cancellation Division

Michaela SIMANDLOVA

Oana-Alina STURZA

Irina SOTIROVA

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.