CANCELLATION No 25 903 C (REVOCATION)

Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 Munich, Germany (applicant), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 Munich, Germany (professional representative)

a g a i n s t

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (EUTM proprietor), represented by Schmidt, Von Der Osten & HuberRechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative).

On 07/10/2019, 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 10 139 111 are revoked as from 27/07/2018 for some of the contested goods, namely: fish, meat and poultry except chicken; game; meat extracts, preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats in Class 29.

3. The European Union trade mark remains registered for all the remaining goods, namely chicken in Class 29.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 139 111 (figurative) (the EUTM). The request is directed against all the goods covered by the EUTM, namely meat, fish, poultry and game; meat extracts, preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats in Class 29. The applicant invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The arguments of the parties and the evidence of the EUTM proprietor will be summarised and analysed in the following sections of this decision.

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 30/11/2011. The revocation request was filed on 27/07/2018. 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 27/07/2013 to 26/07/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 10/10/2018 the EUTM proprietor submitted evidence as proof of use. Also, on 08/03/2019, the proprietor filed additional documents which were forwarded to the applicant, but no deadline for reply was set. As regards the remaining additional evidence submitted by the EUTM proprietor on 08/03/2019, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take it into account can remain open, as the evidence previously submitted within the time limit is sufficient to prove the required genuine use of the EUTM for some of the goods for which it is registered, and the additional evidence does not contain any reference to the remaining goods. Since it does not modify the outcome of this decision, it is therefore not necessary to re-open the proceedings in order to invite the applicant to comment upon it.

The evidence submitted

• Item 1: Sworn statement of Ms. Katrin Beyer, Buying Director of the EUTM proprietor’s company, dated 14/09/2018. The affidavit states that the contested mark was used during the periods from 27/07/2013 to 27/07/2018. Regarding the magazines from which some evidence is submitted (Item 2), the affidavit states that they were published as newspaper supplements with a print run of approximately 203 million in approximately 93 daily newspapers appearing in Germany between 2013 and 2018. The affidavit states, also, that the magazines were available at approximately 2000 ’ALDI’ retail stores; the document contains a table with minimum sales from 2013 to 2018 with goods such as ‘mii schnitzel’, ‘breast fillet parts’, ‘chicken legs’, ‘chicken Cordon Bleu’, and ‘chicken chips’.

The affidavit is accompanied by the documents described below.

• Item 2: 11 copies of extracts of promotional magazines; dates can be seen on some of these documents, either by referring to a concrete date, or by referring to what seems to be the number of the publication and the year when it appeared, for example 14/09/2017 (page 6), 07/2017 (page 10), 14+15/10-41/2016 (page 15), 53/2015 (page 18), 18/09-38/2014 (page 24), 11/2013, and the sign appears on the goods as follows:

• Item 3: A table with overviews of newspapers in which, according to the EUTM proprietor, the corresponding promotional magazines (seen in Item 2) regarding goods labelled with ‘JACK’S FARM’ were added as newspaper supplements. A translation is enclosed with the following information: the publishing company, the title and edition of the newspapers, the print run as well as the total costs. The translation specifies that these publications span from 2013 to 2018.

• Item 4: 21 invoices in German which, according to the EUTM proprietor, were issued by companies that publish the advertisements submitted, showing the print run as well as the expenditures concerning some sample promotional magazines added to newspapers as newspaper supplements.

• Item 5: Seven copies of invoices. The information provided by the owner regarding this document is: ‘invoices of companies which publish the advertisements, showing the print run as well as the expenditures concerning the advertisement magazines (seen in Item 2) which were placed as take away magazines in the ALDI Nord retail stores in Germany’.

• Item 6: Five samples of advertisements; at least one of them is dated (2016). According to the proprietor they refer to advertisements published in the newspapers ‘BILD’, ‘B. Z.’, ‘Berliner Kurier’, ‘Berliner Zeitung’, ‘Bleckeder Zeitung’ ‘Wochenblatt Westfalen-Lippe’, ‘Bild West’. ‘Bild Ost’, ‘Westfalische Nachrichten’, ‘Neue OsnabrLicker Zeitung’ ‘Sudring Zeitung’, concerning the calendar weeks 14/2018, 53/2015, 04/2015, 06/2014 and 16/2013.

• Item 7: Five overviews of newspapers in which the advertisements seen in Item 6 were published, and translation of the most relevant parts. The overviews mention the publishing company, the title and the edition of the newspapers, the print run as well as the total costs.

• Item 8: Five sample invoices of the companies that published the advertisements seen in Item 6, showing the print run as well as the expenditure.

• Item 9: 13 copies of internet extracts of the homepage www.aldi-nord.de. The mark is reflected in the copies as seen above (see comments in relation to Item 2); the prices of the goods are indicated and their nature is described: ‘chicken und dip’, ‘chicken chips’, ‘cordon bleu’, ‘medaillons’, ‘mini-schnitzel’.

• Item 10: Five copies of packaging. The mark seen on all of them is the one reflected above, and the goods on the packaging are the ones seen in Item 9.

• Item 11: 23 pictures of goods (front and back view) marked with the sign seen above; the pictures also show information in relation to the weight of the goods, many of which are mentioned in the description of Item 9, as well as their ‘use by date’ (for example 18/07/2018 and 18/07/2019). Some of the packaging also shows the word ‘Deutschland’.

• Item 12: 10 pictures of a retail store which, according to the EUTM proprietor, is located in Goldenstedt/Germany. Some of the pictures show refrigerators and shelves marked with German words such as ‘Eis/Dessert’,and ‘Fisch’. There are pictures of the goods in refrigerators with the packaging seen in Items 10 and 11 and some labels with prices such as ‘Chicken Wings 2.99’.

• Item 13: 126 copies of invoices issued by ‘WIESENHOF Gastro-Service’ to the EUTM proprietor. All of the invoices are dated within the relevant period (2013-2018) and show locations in Germany. Many of the goods are identified with the initials ‘JAF’ plus a description of the product such as, for example, ‘Mini-Schnitzel’ or ‘Cordon-Bleu’.

• Item 14: A declaration regarding the invoices above in which an employee of ‘WIESENHOF’ attests to the fact that the invoices cover the period 2013 to 2018 and refer to articles such as ‘chicken mini cordon bleu’, ‘chicken mini steaks’, ‘chicken cordon bleu’, ‘chicken chips’, ‘chicken legs’, ‘chicken breast fillets’, ‘chicken & dip’, ‘chicken’ legs pan’, ‘turkey cutlets’, ‘chicken mini cutlets’, ‘roast chicken’, ‘chicken wings’ and ‘chicken medallions with topping’. Every one of these goods translated into English is identified with a code and the codes can be cross-referenced with the ones seen in the invoices.

• Item 15: A document, in German and not translated, from what seems to be a magazine.

The documents filed by the owner on 08/03/2019, after its deadline expired are:

• Annexes SOH 1 and SOH 2: Extracts from Google (and translation) with results of the search ‘JACK’S FARM ALDI’.

• Annex SOH 3: Article form the website stern.de, together with a translation, regarding the goods ‘chicken chips’.

• Annexes SOH 4 and SOH 5: A report from www.blogtestesser.de relating to a product called ‘Chicken Box ‘Classic’’.

Assessment of the evidence

The applicant argues that the affidavit simply lists a number of annexes and does not explain what the role of the signee is in the proprietor’s company ‘beyond a vague job title’, nor is there any explanation as to how she came by this information or her suitability to attest to the authenticity of the annexes or the facts contained within the affidavit. The applicant further argues that some documents do not show the mark as registered, or mention the initials ‘JAF’, and do not prove the geographical extent as they refer to Germany vaguely (and only). It also argues that Item 15 is not in the language of the proceedings and, as for the goods, the only ones seen in the documents are ‘poultry’.

The applicant’s arguments seem to be based on an individual assessment of each item of evidence; however, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety because, even if some relevant factors are lacking in some documents, the combination of all the relevant factors in the whole of the evidence may still indicate genuine use.

It is true that the document found in Item 1 concerns a sworn statement and that the probative value of this kind of evidence usually merits less weight than independent evidence, given that the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. In this particular case, however, the statement is accompanied by very solid evidence originating from third parties. Furthermore, most of the documents filed are dated within the relevant time frame and, following the thorough explanations given by the EUTM proprietor and the data seen in the evidence, the information contained in many of the documents can be cross-referenced with other evidence found in other documents.

In essence, in Items 2 to 8 the proprietor submitted a number of advertisements together with tables (and the translations of their relevant parts) originating from the company itself. There are also invoices from third parties that link the tables to the advertisements (and consequently to the expenditure figures, the relevant time and the place, Germany). Many of the adverts show dates (and when this is the case all the dates are within the relevant time frame). The mark as used in the market has been reflected in the comments regarding Item 2 above.

Indeed the invoices in Items 4 and 5 show dates from 2013 to 2018. The EUTM proprietor explains that they were issued by the companies that printed the advertisements (those seen in Item 4 were inserted in publications and the ones in Item 5 were distributed in the ALDI retail shops). This information can be cross-referenced with the data seen in Item 3 and the translation submitted in this item. For example, invoice 10691430 dated 19/02/2017 and issued by the media company ‘Territory Media GmbH’ shows the denomination ‘Sächsische Zeitung’, which is one of the publications that appears in Item 3, on page 46 of the evidence, translated as: ‘publishing company: Dresdner Druck- und Verlagshaus GmbH&Co.KG’; title: ‘Säschsiche Zeitung/freitag SZ’; edition: ‘Gesamtausgabe Sächsische Zeitung – 100 Kombination mit SZ’ and ‘print run’: 366 639. This part of the document shows, on its top left corner, the reference ‘Benennung der kondreten Zeitungen: Magazin KW 8/2017’ translated as ‘Advertisement magazine Calendar week 8/2017’; just this invoice shows a total of EUR 13 065. The information seen in Item 3 mentions publications in German cities that range from north to south and from east to West in Germany, important locations such as Berlin, Dortmund, Bochum, Göttinger, Hannover, Leipzig, Braunschweig, Postdam, Münster, Dresden, Chemnitz, Kiel, Lübeck and Wuppertal.

Item 5 is also an important source of information. According to the proprietor, these magazines were placed in the ALDI Nord retail stores in Germany. The magazines submitted in Item 2 show clearly the reference to the ALDI retail stores as well as their webpage address (www.aldi-nord.de). All the documents in Item 5 are dated within the relevant time frame, all of them have been issued by a Media company (Mohn Media) to the EUTM proprietor and mention the magazine that the proprietor refers to in its observations, where the advertisements were placed, namely ‘ALDI Nord, Magazin Aktuell’ or ‘ALDI Magazin’, together with a reference such as KW 14/2018 meaning the week and the year, as explained in the observations and reflected in the translations. In Item 5 one invoice shows the advertising expenditure of EUR 1 438 363 (invoice of 27/03/2018).

Items 6, 7 and 8 reflect the structure mentioned above, that is, a number of advertisements (Item 6) with the mark, together with some explanatory tables (Item 7) and invoices (Item 8). One of these invoices (No. 169 954 dated 30/12/2015) is issued by a media company to the proprietor and mentions a campaign (‘Kampagne’) called ‘ALDI Teilbelegung Nord’. This invoice shows an amount of EUR 73.137.

Items 9, 10 and 11 (copies of internet extracts, packaging and pictures of goods seen in supermarkets) provide important proof in relation to the nature of the goods and how they are offered in the market, and complement and/or supplement the information given in the items above. This data is reinforced by the rest of the documents, especially by the pictures of the retail store seen in Item 12, the invoices contained in Item 13 and the declaration seen in Item 14 which provides a useful translation in relation to the specific goods contained in the rest of the documents because, as mentioned above, it explains the codes found in the invoices in Item 13.

The contents of Item 15 are not translated into the language of proceedings, as the applicant rightly points out. In connection with this issue it must be stated that the EUTM proprietor is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, applicable by analogy to cancellation proceedings). The EUTM proprietor explains the contents of the document stating that it is an article from the German consumer magazine ‘ÖKO-TEST’ showing a product comparison between the goods ‘Chicken Nuggets’ marked with the contested mark and goods branded with other labels, sold in several supermarkets in Germany. The Cancellation Division considers that it is not necessary to request a translation given that the pictures found in the document are self-explanatory and that the document is obviously a magazine as attested by its format and its name: ‘ÖKO-TEST Magazin’. Furthermore, this item is not decisive for the assessment of the proof of use, as the information contained in the rest of the documents is sufficient to reach a decision in the case.

As mentioned above, the applicant argues that some of the documents only show the initials ‘JAF’. In this regard it is important to note that such documents are invoices, and in this kind of evidence the mark is usually reflected as word signs or, as it is the case here, with initials that can logically only correspond to the sign ‘Jack’s Farm’. The applicant also argues that the proof of the geographical extent of the use is vague, as it merely suggests some presence of the mark in Germany, without any detailed evidence of where specifically. It adds, furthermore, that the proprietor operates a large number of stores in fifteen European Member States (and submits a copy of Wikipedia to support this claim) implying that the use of the goods in supermarkets in Germany cannot amount to use in the European Union.

It is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 30). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C‑149/11, Onel / Omel, EU:C:2012:816, § 58).

The Cancellation Division finds that the geographical extent of use has been more than sufficiently documented as the evidence, when assessed on the whole, shows that the mark has been on the market frequently and regularly (most of the documents show information regarding every year within the relevant five-year period), the investment in the marketing of the brand has been very extensive and covers, as stated above, a great number of magazines distributed in retail stores and advertisements placed in publications in important cities across the whole of the German territory. Moreover, whereas it is true that the goods are consumed frequently and are not expensive, Item 13 contains over a hundred invoices -issued by a provider to the EUTM proprietor- that, when added together, show significant figures in Germany, one of the most important economic territories within Europe.

Consequently, not only has the geographical extent of the use been documented, but also the parameters of time and extent have been met.

The applicant also argues that the mark as seen in the evidence does not meet the provisions of ‘nature of use’ in the context of Article 10(3) EUTMDR, which 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 applicant explains that there are significant differences in the respective representations in relation to what constitutes the dominant and distinctive components and the relative position of each of them in the sign.

The mark as registered is figurative and consists of the following representation:

. In this sign both the denominative element and the figurative one are co-dominant in the image; both are approximately the same size and therefore have the same relevance in the whole of the sign, as neither of them is more eye-catching than the other. As for the distinctiveness of the elements, in connection with the goods at issue, which relate to food, the image of a farm depicted over an oval frame is not fully distinctive, given that it points to the origin of the goods.

The mark appears in the evidence predominately as the following image:

.

The difference between this sign and the one as registered is circumscribed to the position of the elements, as in this case the figurative item is placed above the denomination. However, the latter element is not too far apart vis-à-vis the former, the typescript of the letters does not show great variation and, with slight differences that will go unremarked by the consumers and do not add any important impact in the distinctiveness of the figure (or the lack of it), the graphic figure of the farm is also present. Consequently, the Cancellation Division cannot but conclude that the mark as used complies with the provisions of Article 18(1)(a) EUTMR, seeing that the distinctive character of the contested European Union trade mark has not been altered.

As for the goods that the evidence refers to, the Cancellation Division agrees with the applicant that there is no proof for the following: fish, game; meat extracts, preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

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 above-mentioned 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.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

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

The goods seen in the documents are all included in the broad category of ‘poultry’ and in the even more general category of ‘meat’. ‘Poultry’ (and by extension ‘meat’) encompasses chicken, turkey, duck and goose but, as mentioned several times in this decision and as documented by the evidence, the proof of use concerns only a number of items (‘chicken cordon bleu’/’chicken mini cordon bleu’, ‘chicken mini steaks’, ‘chicken legs’, ‘chicken breast fillets’, ‘chicken wings’ and ‘chicken medallions’) that belong to a subcategory of poultry and meat, namely chicken. There is no evidence of any use of duck or goose, and very little presence in the documents of goods in the subcategory of turkey.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM, nor given reasons for non-use, in connection with the following goods, for which it must, therefore, be revoked: fish, meat and poultry except chicken; game; meat extracts, preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

The EUTM proprietor has proven genuine use for the remaining contested goods, namely chicken; therefore, the application 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 27/07/2018.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

María Belén IBARRA DE DIEGO

Richard BIANCHI

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.