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
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.
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.