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
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.
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: