CANCELLATION No 13 945 C (REVOCATION)

Italian Circus IP Limited, 37 Battersea Bridge Road, London SW11 3BA, United Kingdom (applicant), represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United Kingdom (professional representative)

a g a i n s t

Etike' International Srl, Via Gobetti, 3, Baronissi (SA), Italy (EUTM proprietor) represented by Vincenzo Fiorillo, Via Ss, Martiri Salernitani n. 31, 84123 Salerno, Italy (professional representative).

On 20/06/2018, 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 9 886 102 are revoked in their entirety as from 25/10/2016.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 886 102 ‘bunga bunga’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely

Class 25: Clothing, footwear, headgear.

Class 32: Beers; Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices.

Class 33: Alcoholic beverages (except beers).

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested trade mark has not been put into genuine use within the European Union in the last 5 years and shall be revoked.

The EUTM proprietor files evidence of use and argues that there are legitimate reasons for non-use of the trade mark. At the end of 2011, the EUTM proprietor placed on the market a soft drink branded ‘bunga bunga’, but then realized that this kind of beverage was already present on the Italian market (document no. 1) marketed by the company Hilton Pharma Spa. In 2012, the EUTM proprietor has attacked the Hilton Pharma Spa company before the Court of Naples for counterfeiting its trade mark. Hilton Pharma Spa declared itself to be the proprietor of an identical trade mark previously registered in Italy (document no. 2), and for this reason they requested the invalidity of the European Union trade mark ’bunga bunga’, which belongs to the EUTM proprietor. As a consequence, the EUTM proprietor has stopped marketing and advertising any product branded ‘bunga bunga’. Although the Court of Naples, at first instance, and the Court of Appeal of Naples, in the second degree, have rejected the invalidity application of Hilton Pharma Spa, (document no. 3), the decisions are not final, as Hilton Pharma Spa has lodged an appeal before the Italian Supreme Court of Cassation (document no. 4), still pending (document no. 5). It is clear that until the final decision of the appeal by the Court of Cassation, there are legitimate reasons for non-use of the mark ‘bunga bunga’ by the EUTM proprietor.

The applicant, in its final submissions, argues that the evidence filed should be disregarded because it was not in the language of proceedings. In addition, it mentions that the EUTM proprietor admits itself that the trade mark has not been put into genuine use during the relevant period. The reasons for non-use invoked shall be rejected as not founded (see 18/03/2015, T 250/13, SMART WATER, EU:T:2015:160; and R 997/2009-4 of 18/06/2010 MANPOWER) and the trade mark revoked.

The EUTM proprietor did not answer.

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 05/08/2011. The revocation request was filed on 25/10/2016. 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 25/10/2011 to 24/10/2016 inclusive, for the above mentioned contested goods in Classes 25, 32 and 33.

On 13/02/2017, the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• 6 pages of an Internet website http://www.bungabungaenergy.it in Italian displaying the trade mark Bunga Bunga on an energy drink dated 11/09/2015, accompanied by other documents in Italian (view-source and declaration) about the website

• 4 pages of an Internet website in Italian displaying the trade mark Bunga Bunga on an energy drink dated 09/07/2015 accompanied by other documents in Italian (view-source and declaration) about the website

• 3 pages of an Internet website in Italian displaying the trade mark Bunga Bunga on an energy drink dated 29/01/2015 accompanied by other documents in Italian (view-source and declaration) about the website

• 2 pages of an Internet website in Italian displaying the trade mark Bunga Bunga on an energy drink dated 15/10/2015 accompanied by other documents in Italian (view-source and declaration) about the website

• 2 pages of an Internet website in Italian displaying the trade mark Bunga Bunga on an energy drink dated 11/03/2014 accompanied by other documents in Italian (view-source and declaration) about the website

• 2 pages of an Internet website in Italian displaying the trade mark Bunga Bunga on an energy drink dated 21/05/2015 accompanied by other documents in Italian (view-source and declaration) about the website

• 2 pages of an Internet website in Italian displaying the trade mark Bunga Bunga on an energy drink dated 30/09/2014 accompanied by other documents in Italian (view-source and declaration) about the website

• 2 pages of an Internet website in Italian displaying the trade mark Bunga Bunga on an energy drink dated 15/10/2013 accompanied by other documents in Italian (view-source and declaration) about the website

Assessment of genuine use – factors

The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (judgment of 05/10/2010, T‑92/09, ‘STRATEGI’, paragraph 43). Therefore, the EUTM proprietor is obliged to prove each of these requirements. The Cancellation Division will focus the present decision on the criterion of extent of use since, in its opinion, the evidence provided by the EUTM proprietor is insufficient to prove that this requirement has been met for the EUTM.

Extent of use and overall assessment

The evidence for the extent of use is insufficient because the evidence provided only shows the mark affixed to an energy drink on a webpage at the best from October 2013 until October 2015 without indication of a price, of a single sale, of an advertising campaign or any other type of evidence able to show that the EUTM proprietor used the trade mark on the relevant market.

The standard applied when assessing evidence in the form of printouts from the internet is no stricter than when evaluating other forms of evidence. Consequently, the presence of the trade mark on websites can show inter alia the nature of its use or the fact that products or services bearing the mark have been offered to the public. However, the mere presence of a trade mark on a website is, of itself, not sufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided.

The extent of the use presents more difficulties if only evidence of internet use is provided, as in the present case. There is no additional evidence such as number of visitors of the website, orders, records relating to the hits attained at various points in time or, in some cases, the countries from which the web page has been accessed, presence in social media, etc.

It follows from the above that the EUTM proprietor has clearly failed to prove genuine use of its trade mark.

In its observations, it itself recognised that the mark has not been genuinely used due to pending court proceedings.

Reasons for non-use

In accordance with Article 58(1)(a) EUTMR, the EUTM proprietor may either prove genuine use of the contested European Union trade mark or prove that there are justifiable reasons for non-use. These reasons cover circumstances arising independently of the EUTM proprietor’s will which prevent use of the contested European Union trade mark.

The reason invoked is related to pending court actions against the contested trade mark. Nevertheless, pending court action against the contested mark should, in general, not exempt the proprietor from the obligation to use its trade mark in the course of trade (see by analogy judgment of 18/03/2015, T-250/13, SMART WATER, EU:T:2015:160).

Proper reasons for non-use are only those outside the sphere and influence of the trade mark proprietor, for instance national authorisation requirements or import restrictions. These are neutral with regard to the trade mark to be used; they concern not the trade mark but the goods and services that the proprietor wishes to use. Such national authorisation requirements or import restrictions apply to the type or properties of the product to which the trade mark is affixed, and cannot be circumvented by choosing a different trade mark. In the present case, conversely, the trade mark proprietor could have used its trade mark despite pending court actions.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods 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 25/10/2016.

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

Pierluigi M. VILLANI	Jessica LEWIS	Rhys MORGAN

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Article 109(8) EUTMR, such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.