CANCELLATION No 17 341 C (REVOCATION)
‘A1’ Arborists Limited, 119 Denton Street, Denton Holme, Carlisle CA2 5EN, United Kingdom (applicant), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative)
a g a i n s t
European Forestry and Environmental Skills Council, Luxemburgstraat 66, 1000 Brussel, Belgium (EUTM proprietor), represented by Consenso Advocaten, Henry Fordlaan 47, 3600 Genk, Belgium (professional representative).
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 10 109 122 are revoked in their entirety as from 06/11/2017.
3. The EUTM proprietor bears the costs, fixed at EUR 1080.
The applicant filed a request for revocation of European Union trade mark registration No 10 109 122 (figurative) (the EUTM). The request is directed against all the goods covered by the EUTM, namely certificates in Class 16.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant for revocation contends that the registered mark has not been put to genuine use in the European Union in relation to the registered goods, namely certificates in Class 16, by the owner or with its consent, since the date of registration of the mark, namely 10/02/2012. Such non-use includes the five-year period preceding the date of this revocation application. Furthermore, the applicant is not aware of any proper reasons for non-use and requests that the challenged registration is revoked in its entirety from the earliest applicable date. Alternatively, the applicant requests that the challenged registration is revoked to the extent that the grounds for revocation are upheld. The applicant requests an award of costs in its favour and expressly reserves all of its rights.
The EUTM proprietor explains that its company is an international association according to Belgium law, EFESC. This association has nine members, which function as its National Agencies and aims to develop, maintain and manage certificates of skills and competences deemed necessary for carrying out activities in forestry and the environment. Therefore, EFESC developed the ‘European Chainsaw Standards’, which are knowledge and skills standards for users of chainsaws. On the basis of these European standards, training courses and examinations are organised in the participating countries. Chainsaw users who pass an ECS-based exam receive a certificate, the ‘European Chainsaw Certificate’. In order to prove the use of its mark the EUTM proprietor submitted some documents (listed and discussed below).
In its reply, the applicant states that, having considered the submissions of the EUTM proprietor, it has no further observations and invited the Office to take a decision.
The Office forwarded this letter to the EUTM proprietor setting a deadline for it to reply. The EUTM proprietor submitted more evidence in reaction to this letter, and afterwards the Office notified the applicant that, given the volume of additional evidence of use and observations received from the proprietor in the last submissions, the Office had decided to grant an extra round of observations to the parties, and set a deadline for the applicant to reply.
The applicant contested this decision stating a) that it did not consider it necessary or appropriate that a further round of observations was allowed given that such practice is limited to exceptional cases, such as when additional relevant information could not be filed beforehand, and b) that this was not applicable in these proceedings; nevertheless, it requested an extension to reply if the Office maintained the course of action. The extension was granted and the applicant filed observations as follows:
The goods for which the contested mark is registered are those proper to Class 16 (certificates) and the documents filed concern, rather, services in Class 41: setting and maintaining knowledge and skills standards in the field of chainsaw use/safety, by way of training courses and examinations in participating countries.
The proprietor has not submitted any evidence of sales of certificates, or in fact evidence of any turnover or financial transactions. In addition, there is no evidence that the certificates granted are manufactured or issued by (or under the control of) the proprietor. Furthermore, it has not been demonstrated that the mark is used by a single undertaking, or that the users are in any way linked to the proprietor to the extent that it operates complete control over the manufacture or supply of the goods. The proprietor has also failed to provide proof of the consent with respect to the use of the mark.
The issue of confidentiality, to which the proprietor resorts, cannot justify the absence of sufficient proof of the use in relation to documents which are manifestly insufficient to prove such use, as they are either undated or dated outside the relevant period, or the mark does not appear in them, or the mark cannot be accepted as use of the contested sign, or the documents merely prove internal use. Therefore, even though the proprietor claims to have issued over 10,000 certificates bearing the registered trade mark, no sufficient proof has been submitted to reach the threshold for genuine use.
The EUTM proprietor replies refuting the applicant’s allegations and enclosing again part of the documentation it sent in the second round of observations.
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 10/02/2012. The revocation request was filed on 06/11/2017. 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 06/11/2012 to 05/11/2017 inclusive, for the contested goods listed in the section ‘Reasons’ above.
Within its deadline, on 12/01/2018, the EUTM proprietor filed seven exhibits with the following contents:
Item 1 consists of a picture of what the proprietor claims to be a certificate issued under the trade mark. The denomination ‘EUROPEAN CHAINSAW CERTIFICATE’ can be seen at the top of the image and the contested sign with some modifications. The date seen in this document is 10/07/2014; the name ‘National Agency The Netherlands’ appears, an organization that the EUTM proprietor claims to be one of the National Agencies of EFESC. One of the two signatures that appear on the document seems to be on behalf of EFESC.
Item 2 is a picture of six men holding some documents in their hands. The documents reproduce the contents of the document seen above. The proprietor identifies one of the persons in the picture as Mr Tom Embo, Chairman of EFESC and Managing Director at Inverde, the Belgian National Agency of EFESC.
Items 3a and 3b consist of:
An article entitled ‘Leerlingen Fioretti College behalen European Chainsaw Certificate’ / translation provided by the EUTM proprietor: ‘Student Fioretti College Receive European Chainsaw Certificate’). The article is dated 15/02/2017
A picture of two men, one of whom is identified as Mr Roland Tromp, Chairman of IPC Groene Ruimte (the National Agency of EFESC), who seems to be handing over a ‘European chainsaw certificate’.
Item 4 consists of a screenshot of the website of EFESC https://efesc.org/european-chainsaw-certificate/). The page contains the following information: ‘Only accredited assessment centres are allowed to use the ECC logo (European Chainsaw Certificate) on their certificates for those individuals who pass the assessments.’
Items 5a to 5e consist of five screenshots (five pages overall) of websites (EFESC and also, as claimed by the EUTM proprietor, its national agencies such as Inverde, IPC Groene Ruimte, Centrul de Pregatire si perfectionare profesionala Roznov). One of the pages appears in English, the others in French, Romanian, Dutch, and the last one in Italian.
Item 6 consists of a document which, according to the EUTM proprietor, is the ‘Overeenkomst tot overdracht van Inteliectuele Rechten’, the Intellectual Property Transfer Agreement, in which Inverde transferred its proprietary rights on the registered trade mark to EFESC. The document appears in Dutch.
Item 7 consists of a document which, according to the EUTM proprietor, was published in the Belgian official Gazette (Belgisch Staatsblad) and relates to the establishment of EFESC. The document is in Dutch.
On 05/07/2018, after expiry of the time limit, and as mentioned above, the EUTM proprietor filed further documents, some of which had already been filed in the prior submissions. Moreover, on 19/03/2019, with its last submissions, the EUTM proprietor filed once again part of the belated evidence.
The applicant not only did not dispute the initial evidence submitted by the EUTM proprietor, but also invited the Office to take a decision. It was only after the Office granted a further round of observations that the applicant commented on the evidence filed by the proprietor.
Whether or not the evidence is additional in the sense of the first documents being irrelevant and/or insufficient (Article 19(1) EUTMDR) does not play a role in these proceedings, and the Cancellation Division will leave it open; even when taking all the documents into account the use of the mark has not been proved for the goods at issue, as will become evident further on.
The evidence submitted by the EUTM proprietor on 05/07/2018 and 19/03/2019 contains the following documents:
Item 1: Witness statement of Mr Tom Embo, Chairman of the Board of EFESC, dated 25/06/2018. This document states that all members of the organisation are required to pay an annual fee to EFESC and each national agency must also pay an annual fee. As at 23/11/2017 each member was required to pay 250 euros per annum and each national agency was required to pay 2250 euros per annum. The document further states that EFESC is a commercial enterprise and the contested mark has been used, and continues to be used, in the context of commercial use. The document further makes reference to a meeting held in London on 24 and 25/11/2011 with all the project partners from various national EU Member States in which ‘all partners agreed to open, transparent communication and sharing of all intellectual property developed as part of the Leonardo project and subsequently on behalf of EFESC’.
Item 2: A copy of a handbook (version of 23/11/2017) with explanations regarding the mission, the objectives, the organisational and the operational structure of EFESC.
Item 3: A table (drafted by the proprietor) which, according to its explanations concern the number of certificates issued, the number of certificate holders, as well as assessment centres, training centres, assessors.
Item 4: Copies of various certificates from different countries across the European Union. The documents appear in English, French, Italian, Romanian and Spanish..
Item 5: A news article, dated 15/02/2017; the document appears in Dutch.
Item 6: Some brochures.
Item 7: Depiction of what the proprietor calls ‘an actual European chainsaw certificate’. The certificate was awarded by one of the National Agencies of EFESC on 10/07/2014 in the Netherlands.
Item 8: A picture of recipients of a European chainsaw certificate.
Item 9: A document published in the Belgian official Gazette relating to the establishment of EFESC.
Item 10: Screenshots of websites providing information on how to acquire a European Chainsaw Certificate. The documents appear in Dutch, and English and French.
Item 11: A screenshot of the website of EFESC. The information shown therein includes: ‘Only accredited assessment centres are allowed to use the ECC logo (European Chainsaw Certificate) on their certificates for those individuals who pass the assessments’ (source: https://efesc.org/european-chainsaw-certificate/).
Item 12: A copy of what the proprietor explains as an ‘exam document to obtain the European Chainsaw Certificate’, established by the Vaststellingscommissie of EFESC member IPC Groene Ruimte (the Netherlands) in 2015. The document is in Dutch.
Item 13: A registration form for an event called ‘Standards Setting & Technical Evaluation Event’ dated 27/06/ - 01/07/2011, held in Brno (Czech Republic). This course is addressed to ‘ECC Assessors’.
Item 14: A registration form for training and assessment centres; according to the EUTM proprietor the successful completion of the course qualifies the trainee for a European Chainsaw Certificate.
Item 15: A copy of the ‘ECC Brand Identity Style Guide’, which offers guidelines on the use of the ‘European Chainsaw Certificate’. According to the proprietor, the guide was created in 2016 to act as a central location for the brand logo, colours of fonts and other applications.
Item 16: A sworn translation of the ‘Agreement transfer of intellectual property’ (original: ‘Overeenkomst tot overdracht van Intellectuele Rechten’), the Intellectual Property Transfer Agreement, in which Inverde transfers its proprietary rights on the Registered Trade Mark to EFESC.
Item 17: A press release.
Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods for which the European Union trade mark is registered.
Having reviewed the information submitted the Cancellation Division must concur with the applicant that even when all the documents (belated or not) are taken into account, and even when evaluated in combination with each other, the use is not proved for certificates in Class 16, for which the contested mark is registered, but, rather, for some services. It is evident that there is no proof whatsoever that the proprietor manufactures and puts in the market some physical certificates bearing the contested mark; the fact that ‘certificates’ are presented to individuals who have successfully completed a course regarding the standards for chainsaw use only shows that the proprietor might have undertaken training and/or provided a certification service to these individuals, but not the use of the mark for the goods themselves.
It follows from the above that, as the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.
According to Article 62(1) EUTMR ‘(T)he EU trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties’.
The applicant requests that the contested mark be revoked from an earlier date than that of the filing of the revocation action. It argues that the date of revocation is of particular significance to the applicant because the registration is currently relied upon by the proprietor in the context of various other proceedings, between the same parties, before both the EUIPO and the United Kingdom Intellectual Property Office (UKIPO). In particular, the proprietor has opposed eight United Kingdom trade mark applications of the applicant citing a likelihood of confusion as one of the grounds of opposition. Each of the revocation applicant’s opposed UK applications were filed on 16/05/2017 or 26/05/2017, therefore if the subject registration were ultimately revoked as of 06/11/2017, this would leave a right outstanding at the relevant date, which the proprietor could still seek to enforce. However, if the subject registration were revoked as of 10/02/2017 or any date prior to 16/05/2017, then the effective date of revocation would pre-date the UK applications and, consequently, the opponent’s grounds on the basis of a likelihood of confusion with the registered mark would fail. The applicant argues that, in light of all of this, it has a sufficient legal interest to justify its request for revocation of the registration from the earliest applicable date.
However, other than stating its interest in the contested mark being revoked from an earlier date and giving its reasons for it, the applicant has not substantiated this claim with the filing of evidence to support its arguments. Consequently, the applicant’s claim to an earlier date for the revocation of the contested mark must be rejected and pursuant to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 06/11/2017.
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
María Belén IBARRA
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.