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CANCELLATION DIVISION |
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CANCELLATION No 13 514 C (REVOCATION)
Trademarkers Merkenbureau C.V., Amersfoortsestraatweg 33 B, 1401 Bussum, The Netherlands (applicant)
a g a i n s t
Olivier Chen, 17, allée de la noiseraie, 93160 Noisy le Grand, France, (EUTM proprietor), represented by CMS Debacker, Chaussée de La Hulpe 178 Terhulpsesteenweg, 1170 Bruxelles, Belgium (professional representative).
On 05/02/2018, 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 9 340 101 are revoked as from 22/08/2016 for some of the contested goods, namely:
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; chronometric instruments.
3. The European Union trade mark remains registered for all the remaining goods, namely:
Class 14: Horological instruments.
4. Each party bears its own costs.
REASONS
The applicant filed a request
for revocation of European Union trade mark registration No 9 340 101
(figurative mark) (the EUTM). The request is directed against all the
goods covered by the EUTM, namely
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested trade mark No 9 340 101 has not been put into genuine use.
The EUTM proprietor files evidence of use and argues that the contested mark has been continuously and genuinely used since its registration to designate jewellery and watches for men, women and children distributed by the French company CMC Diffusion SAS as a wholesaler to numerous retailers since 01/01/2006.
The applicant answers that it does not agree that there is evidence that trade mark has been put into genuine use. Goods such as bags, displays and business cards are not covered by the mark. Sometimes, the mark shown is ERNEST and not the figurative mark. There is no conclusive evidence that the goods were sold to end consumers. The information contained in Wikipedia lacks certainty. In the absence of evidence showing actual orders made, the evidence in itself merely shows that the goods bearing the subject mark “could be” delivered to customers in the EU but that they “were” actually delivered to end consumers in the EU. The evidence is inconclusive to show that there was sufficient extent of use of the subject mark during the relevant period. Gleaning from the evidence as a whole, it is apparent that the Owner offers watches, but the Owner has not given conclusive evidence pertaining to the technical specifications and the composition of the materials that those watches are made of. The sales figures provided are inconclusive to indicate that they are connected to goods which conform to Class 14 as specified.
The EUTM proprietor filed new evidence and argues that he has brought evidence that the mark is used for watches in France, Belgium and the Netherlands during the relevant period and even since 01/01/2006. The watches bearing the contested trade mark have been distributed via CMC Diffusion SAS (authorised use) to numerous customers throughout the European Union. Watches belong to the general category ‘horological and chronometrical instruments’ for which the mark is registered.
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 and 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 11/01/2011. The revocation request was filed on 22/08/2016. 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 22/08/2011 to 21/08/2016 inclusive, for the following contested goods:
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
On 09/12/2016 the EUTM proprietor submitted evidence as proof of use.
The evidence to be taken into account is the following:
1. Examples of products bearing the contested trade mark:
Examples of watches bearing the contested trade mark
Examples of packaging of watches bearing the contested trade mark
Examples of displays bearing the contested trade mark
Business cards bearing the contested trade mark
Article published on the website www.dlg-fashion.com on 18 March 2013 regarding the watches bearing the contested trade mark
Kbis extract of the company CMC Diffusion SAS
Extracts of the website www.priceminister.com
Presentation of’ priceminister.com on Wikipedia
Destination countries of deliveries for purchases made on the website www.priceminister.com
4.3 Official report from the bailiff establishing the website www.priceministrer.com on 9 August 2012, 16 October 2012, 21 January 2013, 26 June 2014 and 27 July 2014
4.4 Documents regarding the company Ferreira SARL selling watches bearing the contested trade mark on the website www.priceminister.com
Extracts of the websites www.ernest-horloge.nl and www.doorzo.nl
Calendar showing print screens of the website
Extracts of the website www.ernest-horloge.nl from 7 January 2014, 17 May 2014, 17 December 2014, 19 April 2015 and 21 May 201
Extract of the website www.ernest-horloge.nI re. client service for destination countries deliveries
Extracts of the website www.doorzo.nl from 26 February 2014 and 19 December 2014
Extracts of the website www.doorzo.nl re. client service for destination countries of deliveries
Orders from and invoices to customers of CMC Diffusion SAS for watches bearing the contested trade mark
6.1 Order from and invoices to ALPHA COUPE SARL dated December 2013/January 2014
6.2 Orders
from and invoices to MATIVAL SARL between 2013 and 2015
6.3 Orders
from and invoices MELI MELO FASHION SRL in 2014 and 2015
6.4 Order
from and listing, stickers and invoice to SHOWROOMPRIVE.COM in May
2015
6.5 Order from and invoice to SODB SARL dated April 2015
6.6 Orders from TOPLOOK.COM SARL between 2011 and 2016
6.7 Orders and invoices to VERT ANIS DISTRIBUTION between 2013 and 2016
6.8 Order by email from SOLAR dated November 2012 for an amount of 2850 EUR.
6.9 Order from GROUP LC dated February 2011
6.10 Bailiffs report containing orders and stating the correspondences between e-mails and attachments
7.
Bailiff’s report stating the correspondences between reference
numbers and the watches bearing the contested trade mark
8.
Affidavits from several customers of CMC Diffusion SAS selling
watches bearing the contested trade mark, one of them mentioning it
has purchased 457 079 EUR of ERNEST watches between 13/09/2011 and
17/08/2016 (SOLAR from the Netherlands).
9. Itunes application “ERNEST WATCH” updated 19/05/2016
10.
Advertising material representing watches bearing the contested trade
mark
10.1 Advertising for “LE CAM” magazine published in
2012
10.2 Posters representing watches bearing the contested
trade mark published in 2012