CANCELLATION DIVISION



CANCELLATION No 14 184 C (REVOCATION)


Numero 00 S.R.L., Via Giuseppe Babbi, 28, 47924 Rimini, Italy (applicant), represented by Paolo Migani, Via Giovanni Petruzzi, 13, 47922 Rimini, Italy (professional representative)


a g a i n s t


Thread Collective Inc., 850 McCaffrey, St-Laurent, Quebec H4T 1N1, Canada (EUTM proprietor), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, Netherlands (professional representative).


On 30/11/2018, 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 10 061 224 are revoked as from 15/12/2016 for some of the contested goods and services, namely:


Class 3: Fragrances, namely, perfumes, cologne and eau de toilette; essential oils for personal use; cosmetics, namely, lip balm.


Class 9: Sun glasses, sun glass cases; protective cases, covers and carrying cases, all for use with portable music players, digital players, mobile phones, tablet computers, personal digital assistants and portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files.


Class 14: Jewellery, namely: bracelets, necklaces, rings, earrings, watches.


Class 18: Umbrellas, Handbags, shoulder bags, sport bags, purse belts, belts.


Class 25: Clothing, accessories, footwear and headgear for kids and babies, namely: sports shirts, dress shirts, suits, trousers, sweaters, pajamas, underwear, bodysuits, bras, robes, pants, shorts; clothing, accessories, footwear and headgear for men and women, namely: suits, pajamas, bodysuits, bras, robes; outerwear for kids and babies, namely: jackets, windbreakers, parkas, coats, duffles and vests, skirts, ties, gloves, scarves, hats, caps, toques, socks, tights; outerwear for men and women, namely: vests, skirts, ties, gloves, scarves, caps, toques, tights; swimwear, bathing costumes, bathing trunks and bikinis; footwear, namely, boots, slippers, leather shoes, sports shoes, gymnastic shoes, bathing shoes, boots, dress shoes and sandals.


Class 35: Operation of retail outlets selling men's, women's, children's and babies' clothing and accessories.


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


Class 25: Sports shirts, dress shirts, trousers, sweaters, underwear, pants, shorts, all of the aforesaid for men and women; jackets, windbreakers, parkas, coats, duffles, hats, socks, all of the aforesaid for men and women.


4. Each party bears its own costs.



REASONS


The applicant filed a request for revocation of European Union trade mark registration No 10 061 224 for the word mark ‘NUMERO’ (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:


Class 3: Fragrances, namely, perfumes, cologne and eau de toilette; essential oils for personal use; cosmetics, namely, lip balm.


Class 9: Sun glasses, sun glass cases; protective cases, covers and carrying cases, all for use with portable music players, digital players, mobile phones, tablet computers, personal digital assistants and portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files.


Class 14: Jewellery, namely: bracelets, necklaces, rings, earrings, watches.


Class 18: Umbrellas, Handbags, shoulder bags, sport bags, purse belts, belts.


Class 25: Clothing, accessories, footwear and headgear for men, women, kids and babies, namely: sports shirts, dress shirts, suits, trousers, sweaters, pajamas, underwear, bodysuits, bras, robes, pants, shorts; outerwear, namely: jackets, windbreakers, parkas, coats, duffles and vests, skirts, ties, gloves, scarves, hats, caps, toques, socks, tights; swimwear, bathing costumes, bathing trunks and bikinis; footwear, namely, boots, slippers, leather shoes, sports shoes, gymnastic shoes, bathing shoes, boots, dress shoes and sandals.


Class 35: Operation of retail outlets selling men's, women's, children's and babies' clothing and accessories.


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



SUMMARY OF THE PARTIES’ ARGUMENTS


The applicant filed a request for revocation on 15/12/2016, claiming that the EUTM proprietor had not put its EUTM to genuine use for a continuous period of five years in relation to all the goods and services for which it was registered.


The EUTM proprietor submitted observations and evidence of use (listed below) on 02/06/2017. 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 stated that numerous sales of goods, such as clothing articles, with the trade mark ‘NUMERO’ have taken place in many EU countries.


In its observations of 14/09/2017, the applicant argued that the EUTM proprietor had failed to submit sufficient evidence demonstrating that the contested trade mark had been put to genuine use in the European Union during the relevant period. In particular, it pointed out that the evidence submitted did not refer to any of the goods or services in Classes 3, 9, 14, 18 and 35, while it was of the opinion that the evidence in relation to goods in Class 25 did not comply with the requirements for genuine use. It contested the use of the sign ‘NUMERO’ as a trade mark and in the form registered since the sign was used in the header of social media profiles and with additional elements. It considered that such use significantly altered the distinctive character of the contested mark. It also argued that the extent of use of the mark was not sufficiently proven as the quantities sold were not significant enough for the size of the relevant EU market and the mark was not known in the market. It submitted documents in relation to the size and number of players on the EU fashion market. It contested each document’s relevance and concluded that genuine use had not been proven by the EUTM proprietor.


In its final observations of 23/02/2018, the EUTM proprietor argued that, contrary to the applicant’s arguments, it had put the contested trade mark to genuine use. It considered that even if some publications on its social media were outdated, there were sufficient indications in the remaining documents regarding the time of use. It was of the opinion that the form in which the mark was used did not materially alter its distinctive character as registered. It reiterated that the place of use was sufficiently proven and that there are sufficient indications regarding the extent of use of the mark, and pointed out that reputation and knowledge of the mark were not relevant. It argued that that there was sufficient evidence to demonstrate use of the contested trade mark.



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 20/11/2011. The revocation request was filed on 15/12/2016. 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 15/12/2011 to 14/12/2016 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.


On 02/06/2017 the EUTM proprietor submitted evidence as proof of use.


The evidence to be taken into account is the following:


  • Enclosure 1: Several documents related to the EUTM proprietor, a Canadian company, namely a form related to the amalgamation of Fame Jeans Inc. Les Jeans Fame Inc. dated 2013 and a certificate of amalgamation of said company dated 01/01/2014, as well as a certificate of amalgamation of Thread Collective Inc. Collectif Du Fil Inc. dated 17/11/2014 and a form showing that Fame Jeans Inc. Les Jeans Fame Inc. changed its name to Thread Collective Inc. Collectif Du Fil Inc.


  • Enclosure 2: An affidavit of Mr. Jacques Bohbot, Corporate Secretary of Thread Collective Inc. dated 01/06/2017, giving information about the EUTM proprietor, its history and its activities and making references to the exhibits listed below:


  • Exhibit 1: A document obtained from the website of the Government of Canada concerning the registration of the company Thread Collective Inc. Collectif Du Fil Inc. (the EUTM proprietor).


  • Exhibit 2: Documents with trade mark registration information concerning the proprietor’s marks ‘NUMERO’ registered in China and Japan.


  • Exhibit 3: Registration certificate and a database extract for the contested EUTM registration No 10 061 224.


  • Exhibit 4: Photographs showing badges and tags bearing, inter alia, the indication ‘numero’: , ,