CANCELLATION No 29 723 C (REVOCATION)

American Airlines, Inc., 4333 Amon Carter Boulevard, Fort Worth, Texas 76155, United States of America (applicant), represented by Taylor Wessing, Benrather Str. 15, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Advantage OPCO, LLC, 2003 McCoy Road, Orlando, Florida 32809 , United States of America (EUTM proprietor), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, London EC4Y 0DA, United Kingdom (professional representative).

On 09/04/2020, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 9 324 708 are revoked in their entirety as from 16/11/2018.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 324 708 for the figurative mark (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely the following:

Class 12: Vehicles.

Class 16: Printed matter.

Class 39: Vehicle rental services.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 16/11/2018, claiming that the EUTM proprietor has not put its EUTM to genuine use for a continuous period of five years in relation to the goods and services for which it is registered.

On 25/03/2019, the EUTM proprietor submitted observations and evidence of use, essentially consisting of revenue figures, website extracts and a photograph (listed further below). The EUTM proprietor argued that it had made genuine use of the mark in the territory of the European Union for the relevant goods and services during the relevant period. It claimed that although it is a US company, its business is active in the European Union, particularly through its partnership with French car rental agency Europcar.

In its observations of 22/07/2019, the applicant argued that the EUTM proprietor failed to adduce clear and objective evidence demonstrating that the contested trade mark was put to genuine use in the European Union during the relevant period. It contests the probative value of the revenue figures given in the proprietor’s observations as it considers that these are not supported by any external and objective evidence. It is of the opinion that it is unclear whether these figures refer to services offered exclusively under the contested mark and what the territory and the exact nature of the services provided are. The applicant also contests the reliability of the other evidence submitted and whether they refer to use of the contested mark and use by the EUTM proprietor. It considers that there are no sufficient indications of the place, time, extent and nature of use of the contested trade mark. It concludes that the evidence considered as a whole does not demonstrate genuine use of the contested trade mark.

In its final observations of 22/11/2019, the EUTM proprietor reiterates its arguments that it has made genuine use of the contested mark and submits again the screenshot from its partner’s website dated 15/03/2015 already submitted in its initial observations. It disagrees with the applicant’s arguments and points out that the Office should carry out an overall assessment of the evidence provided. The EUTM proprietor concludes that it has made genuine use of the mark in the territory of the European Union for the relevant goods during the relevant period.

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 28/01/2011. The revocation request was filed on 16/11/2018. 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 16/11/2013 to 15/11/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 25/03/2019 the EUTM proprietor submitted the following evidence as proof of use:

• Annex I: Website extracts:

• Three screenshots from the EUTM proprietor’s website http://www.advantage.com obtained using the Digital Internet Archive Wayback Machine and showing how the website looked on 03/05/2014, 03/05/2015 and 09/12/2015. They contain the sign at the top of each page and offer rent-a-car services in the US or internationally. A screenshot mentions an agreement with another company which will convert the EUTM proprietor into the fourth largest rental car company in the US. The company Europcar is mentioned as an international partner of the proprietor.

The last screenshot shows a list of international rent-a-car locations where a car can be picked up, including locations in Ireland and the United Kingdom.

• A screenshot from the EUTM proprietor’s partner’s website https://partner.europcar.com/advantage obtained using the Digital Internet Archive Wayback Machine showing how the website looked on 15/03/2015. It mentions a new partnership between Advantage and Europcar and offers rental of cars in Europe.

• A screenshot from the EUTM proprietor’s website http://www.advantage.com obtained on 25/03/2019 and showing international rental car locations with the clarification that ‘Advantage Rent a Car provides car rentals from convenient international airport locations for when you travel abroad’. The locations listed include places around the world and for each of them the name of the proprietor’s partner providing the services is listed (e.g. Europcar for the destinations in the EU, namely France, Germany, Ireland, Italy, Portugal, Spain and the United Kingdom).

• Annex II: An undated photograph showing the contested mark depicted on a vehicle:

Furthermore, in its observations the EUTM proprietor provided revenue figures (in USD) allegedly generated from its European business activities in the years 2014-2018, showing significant amounts.

Assessment of genuine use – factors

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.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, Strategi, EU:T:2010:424, § 43). This means that the proprietor is obliged not only to indicate but also to prove each of these requirements. Nevertheless, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

Extent of use and overall assessment

Having examined the material listed above, the Cancellation Division finds that the evidence is insufficient to prove that the requirements of the extent of use are met, even considering the evidence in its entirety.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

In the present case, the documents submitted do not sufficiently indicate the extent of use, as they do not provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The EUTM proprietor is a US car rental company. The proprietor stated that it provides services under the contested mark in the European Union through its partnership with the French car rental agency Europcar, and mentions some revenue figures ‘generated from European business activities’ concerning the period 2014-2018.

With regard to the revenue figures provided by the EUTM proprietor, Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. The probative value of such statements depends on whether or not they are supported by other types of evidence or evidence originating from independent sources.

Consequently, the Office makes a distinction between statements coming from the sphere of the interested parties themselves and statements drawn up by an independent source, following the established case-law. Such statements are not in themselves sufficient to prove genuine use (09/12/2014, T‑278/12, PROFLEX, EU:T:2014:1045, § 54). The extent of use claimed in the proprietor’s observations needs to be corroborated by additional documentary evidence.

However, these figures provided in the proprietor’s observations are not supported by any trade documents and do not seem to be extracted from an official accounting document, an annual report, etc. Given the unofficial character of this data, it is not sufficient to corroborate the assertions of the proprietor that it provides car rental services under the contested mark in the European Union.

The extracts from the websites of the EUTM proprietor and its partner and the photograph submitted do not give any information on the commercial volume of use of the contested mark as they do not contain any information about customers who resorted to the services offered under the contested mark through the aforementioned partnership in the EU or about contracts made for the relevant services during the relevant period in the relevant territory. Although the website extracts mention several airports in the EU where the ‘ADVANTAGE’ rent-a-car services are offered, on the basis of the evidence submitted it cannot be inferred if these services have actually been resorted to by any customers. Therefore, this information is of no avail for assessing the extent of use. Neither has the proprietor submitted any concrete evidence relating to preparations made by it to secure customers, such as any data referring to advertising campaigns in the EU and their intensity and the number of potential customers they may have reached, in order to demonstrate that it has seriously tried to acquire a commercial position in the European Union market during the relevant period.

Although the evidence submitted refers to the sign in connection with car rental activities, the EUTM proprietor did not produce evidence indicating the commercial volume, the territorial extent, the duration and the frequency of the exploitation of this sign to show genuine use during the relevant time period.

Consequently, the evidence does not prove the extent of use of the EUTM proprietor’s mark capable of amounting to genuine use of this mark for services in Class 39 in the relevant territory. The evidence contains no reference whatsoever to use in relation to the contested goods in Classes 12 and 16 either.

An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant services (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).

The Cancellation Division does not judge the commercial success of a business; however, it cannot make its assessment based on assumptions. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47).

The methods and means of proving genuine use of a mark are unlimited. Although the opponent has a free choice of the means of proving the extent of use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark in the relevant territory at least to an extent sufficient to dispel any possible belief that this use might be merely internal, sporadic or token.

The materials listed above do not alone enable the Cancellation Division to determine genuine use of the trade mark in the relevant territory. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

It follows from the above that the EUTM proprietor has failed to prove genuine use. The evidence of the extent of use is insufficient.

As one of the cumulative requirements is not fulfilled, there is no need to examine the evidence from the perspective of the remaining applicable factors.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 16/11/2018.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Jessica LEWIS

Boyana NAYDENOVA

Catherine MEDINA

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.