CANCELLATION No 19 504 C (REVOCATION)
Mouldpro ApS, Baltorpbakken 10, 2750 Ballerup, Denmark (applicant), represented by Nordia Advokatkontor, Østergade 16, 2. th., 1100 Copenhagen K, Denmark (professional representative)
a g a i n s t
Wenz Kunststoff GmbH & Co. KG, Hueckstr. 8, 58511 Lüdenscheid, Germany (EUTM proprietor), represented by Patentanwälte Dörner & Kötter Partg mbB, Körnerstr. 27, 58095 Hagen, Germany (professional representative).
On 30/03/2020, 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 10 022 317 are revoked in their entirety as from 30/01/2018.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
On 30/01/2018, the applicant filed a request for revocation of European Union trade mark registration No 10 022 317 ‘MOULDPRO’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:
Class 17: Hose couplings of plastic (included in class 17), hoses, rapid-release couplings for hoses, hose connection couplings.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS AND PROCEDURE
In the application for revocation of 30/01/2018, the applicant argues that ‘the only use made is pro forma’ and that such use ‘does not cover the relevant goods of Class 17’.
On 26/03/2018, the EUTM proprietor submitted written observations and evidence of use (14 exhibits, marked from DK1 to DK14, which will be listed and assessed further down in the following section of the decision). The proprietor provides a description of the items filed as evidence of use, states that the genuine use of the mark is proved and requests for the revocation application to be dismissed.
In their further submissions (applicant on 12/06/2018 and EUTM proprietor on 03/09/2018) each of the parties puts forward arguments as to the insufficiency of the evidence of use (the applicant) and respectively the dismissal of the application for revocation (EUTM proprietor). The Cancellation Division will refer to the relevant arguments of the parties further down, in the following section of the decision. On 12/06/2018, the applicant also filed several exhibits (marked from A to M) in support of its claims (which will be listed and analysed further down, in the following section of the decision, only if necessary and/or relevant for the outcome of the case).
In September 2018 (after the closure of the adversarial part of the proceedings), the Office notified the parties on the suspension of the proceedings because two counterclaims have been filed against the contested EUTM. The proceedings were resumed in June 2019 as the judgement in case T-796/17 (relating to parallel invalidity proceedings C 9539 against the contested mark) has become final and respectively because the Court proceedings in Düsseldorf have been stayed.
In November 2019, the Office suspended again the proceedings because a decision in the parallel proceedings C 29941 had been issued. Finally, on 28/02/2020, both parties were informed that the proceedings are resumed and that the Office will decide on the revocation on the basis of the evidence before it.
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 07/11/2011. The revocation request was filed on 30/01/2018. 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 30/01/2013 to 29/01/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.
On 26/03/2018, the EUTM proprietor submitted the following evidence as proof of use:
Exhibit DK1: Internal document (in English) containing a list of 101 invoices, delivery notes and offers issued by the EUTM proprietor between June 2011 and January 2018 and addressed to several customers located in Germany in relation to ‘MOULDPRO’ goods, described as follows: coupling straight with valve, coupling 900 with valve, coupling straight without valve (13mm), coupling 450 with/without valve, coupling 900, coupling straight without valve 1C and fitting for hose 10mm.
Exhibit DK2: Two delivery notes issued by the proprietor in June 2011 and respectively in March 2014 and addressed to a German client in relation to ‘Mould Pro’ couplings straight without valve.
Exhibits DK3 to DK6: Selection of invoices, delivery notes and offers issued by the EUTM proprietor in 2015, 2016, 2017 and 2018 (up to 26/01/2018) and addressed to customers located in Germany, in relation to, among other ‘Mould Pro’ goods (in the main several types of couplings, except for one offer of 17/12/2015 which relates also to fitting for hose).
Exhibit DK7: Three undated pictures of couplings/fittings made of metal on which the sign ‘MOULDPRO’ is featured ( , , ).
Exhibit DK8: One undated picture showing a cardboard box and a transparent packaging of metallic couplings/fittings respectively ( ), both labelled with the sign ‘MOULDPRO’.
Exhibit DK9: Internal document containing a list of trade fairs in which the EUTM proprietor took part in each of the years 2013 to 2018.
Exhibit DK10: Selection of pictures from trade fairs, showing inter alia, the sign ‘Mould Pro’. According to the information provided by the proprietor, the photographs were taken at the following trade fairs: ‘K-Messe’ (held in Düsseldorf, Germany, 19/10-26/10/2016), ‘WFB – Fachmesse für Werkzeug- und Formenbau’ (held in Siegen, Germany, 21/03-22/03/2017) and ‘Fakuma’ (held in Friedrichshafen, Germany, 17/10-21/10/2017).
Exhibit DK11: Printouts (two pages) from the MOULDPRO-Webshop webpage located at www.mouldpro.de (with a printout date on 16/03/2018 and a copyright notice 2015-2017) as follows: