CANCELLATION No 14 596 C (REVOCATION)

Linde Aktiengesellschaft, Klosterhofstr. 1, 80331 Munich, Germany (applicant), represented by Becker Kurig Straus, Bavariastr. 7, 80336 Munich, Germany (professional representative)

a g a i n s t

Nel Hydrogen A/S, Industriparken 34b, 7400 Herning, Denmark (EUTM proprietor), represented by Dahl Lawfirm P/S, Kaj Munks Vej 4, 7400 Herning, Denmark (professional representative).

On 19/05/2021, 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 9 926 502 are revoked as from 09/03/2017 for some of the contested goods and services, namely:

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting, and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting.

Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Pumps [parts of machines, engines or motors].

Class 37: Building construction; Repair; Installation services (except installation services of vehicle refuelling stations); Vehicle service stations [maintenance].

3. The European Union trade mark remains registered for all the remaining services, namely:

Class 37: Installation services of vehicle refuelling stations; vehicle service stations [refuelling].

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 926 502 ‘H2Station’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting, and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting.

Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Pumps [parts of machines, engines or motors].

Class 37: Building construction; Repair; Installation services; Vehicle service stations [refuelling and maintenance].

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The EUTM proprietor, in response to the revocation action, filed evidence to prove use of the contested mark (listed below) and argues that the documents show genuine use of the mark. Furthermore, it points out that the applicant did not put forward any arguments or submit any evidence regarding the claim that the mark has become a common name within the meaning of Article 58(1)(b) EUTMR. It concludes that the application should be rejected in its entirety.

The applicant analyses the individual documents and contends that they do not show use for the contested goods and services, that they do not show public use of the mark and that they do not show sufficient extent of use.

GENUINE USE - ARTICLE 58(1)(a) EUTMR

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 05/12/2011. The revocation request was filed on 09/03/2017. 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 09/03/2012 to 08/03/2017 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 29/06/2017 the EUTM proprietor submitted the following evidence as proof of use:

• Item 1: A photograph of a car bearing the contested mark together with a document showing that the picture was taken in 2015.

• Item 2: A photograph of a construction site showing a sign that bears the contested mark together with a document showing that the picture was taken in 2013.

• Item 3: A document entitled ‘References – H2Station’, dated in 2015, that contains references to the hydrogen fuelling stations (referred to as ‘H2Station’ as from 2012) built or pending to be built in various countries of the EU such as Denmark, the United Kingdom, Germany, Belgium and Finland, between 2007 and 2015. The document contains 16 texts, out of which 10 refer to the relevant period and the contested trade mark. They contain a specific description of the particular station, including its location and characteristics, and a photograph of the particular station.

• Item 4: The Operator manual for ‘H2Station’ located at a Shell gas station in Hamburg, dated in 2014. The hydrogen refuelling station is referred to as ‘H2Station®’ and it is described as a fully automatic refuelling station for hydrogen vehicles. It refers to the specific station provided for the specific customer.

• Item 5: A brochure regarding the product ‘H2Station® CAR-100’ describing the hydrogen refuelling station, dated in 2012.

• Item 6: Operator Manual for ‘H2Station® MH-100 Isle of Wight’, dated in 2016.

• Item 7: A budgetary quote for a Hydrogen Solution for Shell Europa, dated in 2016, that includes installation of H2Station®.

• Item 8: A document entitled ‘Scope of Plant’ regarding ‘H2Station®’ in Hamburg, dated in 2013.

• Items 9 and 10: Two articles from the EUTM proprietor’s website informing about the opening of the eighth and the ninth hydrogen fuelling stations in Denmark. The articles inform that the stations are based on ‘H2Station®’ technology.

• Item 11: Website printouts using the internet archive services WayBack Machine showing the contents of the website www.nelhydrogen.com in 2016, which include the description of the new generation of ‘H2Station’.

• Item 12: A statement of Mikael Sloth, Vice President Business Development of the EUTM proprietor, dated in 2017. Mr Sloth declares that the EUTM proprietor has been using the contested mark for hydrogen filling stations during the last five years in several countries within the EU.

Preliminary remarks

The evidence largely relies on documents originating from the EUTM proprietor itself such as the witness statement, articles from the EUTM proprietor’s website and other EUTM proprietor’s website printouts, the brochures and manuals etc., and on evidence with unknown source, such as the list of references.

It is noted that documents coming from the sphere of the owner of the mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4, BOTODERM, § 34). Such a statement cannot in itself sufficiently prove genuine use (09/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 54). However, this does not mean that such statements are totally devoid of all probative value (28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 30). Statements including detailed and concrete information have a higher probative value than very general and abstractly drafted statements.

The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42).

The final outcome depends on the overall assessment of the evidence in each individual case. In general, further material is necessary for establishing evidence of use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

In the present case, the Cancellation Division considers the document entitled ‘References – H2Station’ (item 3) to be the crucial document among the evidence. Although the source of this document is not clear and it seems that it originates from some type of newsletter, presentation or other document of the EUTM proprietor, in view of the above mentioned case law, the probative value of this document is not considered to be low. The document contains very specific information as regards the location of the ‘H2Stations’ and their detailed characteristics and each of these pieces of information is accompanied by a photograph of the particular station. Moreover, the other documents, although they also originate from the EUTM proprietor, correspond to the information given in the references. For example, the reference from December 2014 regarding H2Station CAR-100 in Hamburg in Item 3 corresponds to the Operator Manual (Item 4) for the same station in Hamburg, dated 08/12/2014, containing a photograph of the station taken from different perspective but showing the same station as the photograph in the reference. Consequently, the Cancellation Division considers that, although the EUTM proprietor did not file any evidence originating from third parties or any more independent evidence such as invoices or contracts, the documents filed contain a very specific and detailed information, do not contradict each other but on the contrary, support each other, include photographs and overall they are, on the face of it, sound and reliable documents. There is no reason to cast doubt on the veracity of the information given in the documents submitted.

The assessment of genuine use of the contested mark will continue bearing in mind this conclusion.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, that is, from 09/03/2012 to 08/03/2017.

The majority of the documents refer to the time within the relevant period. Some of the references in Item 3 predate the relevant period but there are sufficient references showing use of the mark within the relevant period. Overall, the time of use was sufficiently demonstrated.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The references in Item 3 show stations already built in Denmark, Germany and Belgium and a station to be built in 2015 in the United Kingdom. The manuals refer to the same stations and the articles from the EUTM proprietor’s website (Items 9 and 10) refer to nine stations in Denmark. The use thus took place in several Member States of the European Union and, therefore, the place of use was satisfactorily shown.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark 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.

The EUTM proprietor clearly intended to use the contested mark as a trade mark. It refers to the fuelling solutions that it provides as ‘H2Station’ and consistently uses the ® symbol to emphasize that this is a registered trade mark. Whether or not the sign ‘H2Station’ as such has the capacity to be a valid trade mark in the context of hydrogen fuelling stations is not an issue to be resolved in these proceedings which deal with the question of whether or not the mark has been genuinely used. In view of this and the fact that the mark is a registered trade mark, it has to be concluded that the use that was made of it was made as a trade mark.

Nature of use: use of the mark as registered

‘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 European Union trade mark.

The mark is registered as a word mark and it has been used exactly as registered, as is evident from all the documents in which the mark is mentioned (that is, all the documents submitted), including the photographs in Items 1 and 2. Therefore, the mark was used as registered.

Use in relation to the registered goods and services

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

The contested EUTM is registered for goods and services in Classes 4, 7 and 37. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation for 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.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

The evidence taken as a whole shows use of the mark in relation to hydrogen refuelling stations and their installation. This is evident from the references, the manuals, the budget quote, the articles and the websites. There is no indication in the evidence that the mark was used for any of the goods registered in Classes 4 and 7. In Class 37, the mark is registered for building construction; repair; installation services; vehicle service stations [refuelling and maintenance]. The evidence does not contain indications that the mark was used in relation to building construction and repair or for vehicle maintenance stations.

The registered category vehicle service stations [refuelling] is sufficiently narrow and there is no need to create subcategories. The registered installation services, on the other hand, is a very broad category. It is sufficiently broad for several subcategories to be identified within it. The evidence shows that the contested EUTM has been used for installation of hydrogen refuelling stations. On the basis of the purpose of the services, the Cancellation Division finds that the use for installation of hydrogen refuelling stations, which falls under the broad category of installation services, constitutes use for the subcategory installation services of vehicle refuelling stations.

It follows from the above that some use of the mark was demonstrated for installation services of vehicle refuelling stations and for vehicle service stations [refuelling], in Class 37.

Extent of use

Concerning 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 evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and services and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

In the present case, the evidence does not contain any quantitative expression of the volume of use. On the other hand, it has to be borne in mind that the services for which the mark has been used are very specific, the market for hydrogen refilling station is very narrow and the services of installation of hydrogen fuelling stations and such stations are services provided with a rather seldom frequency. Under such circumstances, the fact alone that the EUTM proprietor installed and provided several such stations in several different EU countries throughout the entire relevant period, is sufficient to demonstrate the extent of use. As evidenced by, in particular, the references (Item 3) and the articles (Items 9 and 10), the mark has been used in the long term, the use was spread over the entire relevant period and there was a certain regularity in such use. It is not plausible that the EUTM proprietor would have installed more than ten hydrogen refuelling stations, something that requires specialised knowhow, technology and extensive preparations, with the sole intention to keep the trade mark rights. On the contrary, it must be concluded that the use as shown by the evidence was genuine, that is, it was made with the purpose of creating and maintaining an outlet for the above-mentioned services.

The applicant argues that the use as demonstrated by the evidence was not public and outward use of the trade mark. It is true that the condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39). However, the evidence shows public use of the trade mark. For example, the brochures, the manuals and the budgetary quote are clearly documents designed for the clients and the contested mark is repeatedly mentioned in them. The same applies to the articles which target not only the existing customers but the public in general. The refuelling stations are referred to by the contested trade mark in them. Consequently, the applicant’s argument must be set aside.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

It was demonstrated that the EUTM had been used in relation to some of the registered services during the relevant period in the relevant territory to an extent sufficient to indicate that the use was genuine. It was used as a trade mark and as registered. Considering all the above, the Cancellation Division concludes that the evidence, as a whole, is sufficient to demonstrate that the contested mark was genuinely used during the relevant period in the relevant territory for installation services of vehicle refuelling stations and vehicle service stations [refuelling] in Class 37.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods and services, for which it must, therefore, be revoked:

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting, and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting.

Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Pumps [parts of machines, engines or motors].

Class 37: Building construction; Repair; Installation services (except installation services of vehicle refuelling stations); Vehicle service stations [maintenance].

The EUTM proprietor has proven genuine use for the remaining contested services; therefore, the application, insofar as it was based on this ground, is not successful in this respect.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 09/03/2017.

Since the application is only partially successful on the ground of Article 58(1)(a) EUTMR, the assessment of the application must continue as far as Article 58(1)(b) EUTMR is concerned.

MARK HAS BECOME A COMMON NAME - ARTICLE 58(1)(b) EUTMR

General principles

The essential function of a trade mark is to distinguish the goods or services of one undertaking from those of another. This has been incorporated by the European Union legislature into Article 4 of the EUTMR, which provides that signs may only constitute a trade mark if, inter alia, they are capable of distinguishing the goods or services of one undertaking from those of other undertakings (29/04/2004, Case C-371/02, ‘Björnekulla Fruktindustrier’, ECLI:EU:C:2004:275, § 21).

Article 58(1)(b) EUTMR is one of the many articles in the EUTMR which give effect to this condition. It relates, specifically, to the post-registration situation when a sign has become the common name in the trade for a product or service (see ‘Björnekulla Fruktindustrier’, § 22). In such a case the sign has lost its distinctive character, with the result that it is no longer capable of fulfilling its essential function or meeting the criteria laid down in Article 4 EUTMR i.e. it can no longer distinguish the goods or services of one undertaking from those of other undertakings.

However, the consequences of revocation for the proprietor of a mark which has had such success as to become generic are far more serious than those which follow from the non-registration of a generic name as a trade mark at the beginning of its existence (see Opinion of Advocate General Cruz Villalón of 12/09/2013, C-409/12, ‘Kornspitz’, ECLI:EU:C:2013:563, § 30-31). Moreover, the proprietor’s interest in its trade mark falls within the meaning of “intellectual property” and is protected as such under Article 17(2) of the Charter of Fundamental Rights.

Thus, the European Union legislature, in striking a balance between the interests of the proprietor of a trade mark and those of its competitors in the availability of signs, decided that the loss of distinctive character of a European Union trade mark may support the revocation thereof only when that loss of distinctive character – that transformation into a generic name for a product or service – is due to (lit. “a consequence of”) the proprietor’s action or inaction (06/04/2014, C-409/12, ‘Kornspitz’, ECLI:EU:C:2014:130, § 32).

Thus, for a registered European Union trade mark to be revoked on the grounds of Article 58(1)(b) EUTMR, two conditions must be met:

1) an objective element, that the trade mark has become the common name in the trade for the product or service in respect of which it is registered;

2) a subjective element, that this loss of distinctive character occurred in consequence of acts or inactivity of the proprietor of the trade mark (see Opinion of Advocate General Cruz Villalón, ‘Kornspitz’, § 32).

The first requirement for revoking an EUTM on the grounds of Article 58(1)(b) EUTMR is an objective criterion. This criterion requires the applicant to prove that the trade mark has become the common name in the trade for a product or service in respect of which it is registered. As a preliminary point, it should be noted that the contested mark is a registered European Union trade mark. It carries with it a presumption that the EUTM is distinctive. The applicant has the burden of dislodging this presumption in the EUTM proprietor’s favour by proving that the EUTM has become generic.

In the present case, the applicant did not submit any evidence nor did he provide any arguments whatsoever as regards this ground. The Cancellation Division finds it useful to emphasize that in order for the revocation action to be successful under this ground it would have to be demonstrated not only that the contested mark is descriptive or non-distinctive in relation to the contested goods and services, but that it was distinctive at the time of its registration but lost the distinctiveness afterwards as a consequence of the actions or inactions of the EUTM proprietor. Even considering that the Cancellation Division may take into account facts that are likely to be known by anyone or are accessible from public sources (well-known facts), it is not aware of the availability of such facts that would demonstrate that the contested mark has become a common name since its registration due to action or inaction of the EUTM proprietor. Therefore, in the total absence of any arguments or evidence to that effect in these proceedings, the revocation action cannot succeed on the ground of Article 58(1)(b) EUTMR.

It follows from the above that the application is rejected insofar as it was based on Article 58(1)(b) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Jessica LEWIS

Michaela SIMANDLOVA

Boyana NAYDENOVA

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.