CANCELLATION No 14825 C (REVOCATION)

Eli Salis, Goleta 17, Esc. 2, 2do C, 03540 Alicante, Spain (applicant), represented by Disain IP, Avda. La Goleta, 17, Esc. 2, 2ºC, 03540 Alicante, (professional representative)

a g a i n s t

Imprint snc di Turi Giovanni B. & C., Via Benedetto Croce, 33, 70014 Conversano (Bari), Italy (EUTM proprietor), represented by Dimitri Russo S.R.L., Via G. Bozzi, 47A, 70121 Bari, Italy (professional representative).

On 23/01/2019, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 10 178 804 are revoked as from 19/04/2017 for all the contested goods, namely:

Class 34: Tobacco, Pocket lighters, Smokers' articles, Pipes, Pipe racks.

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

Class 18: Goods of leather and imitations of leather, and in particular bags, beach bags, suitcases, travelling bags, purses, key-rings, umbrellas; Beach umbrella, Beach umbrellas.

Class 25: Clothing, and in particular t-shirts, shirts, pullovers, trousers, skirts, jeans, jackets, swimsuits, underwear, headgear, footwear; Leisurewear and clothing for water activities, including flip-flops.

Class 35: Advertising, Business management, Business administration, Development of franchise projects.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 178 804 (figurative mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 34: Tobacco, Pocket lighters, Smokers' articles, Pipes, Pipe racks.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant argues that the EUTM has not been put to genuine use in the Union for the goods at issue for a continuous period of five years.

In response to the evidence of use filed by the EUTM proprietor, the applicant has the following to say:

• None of the invoices filed by the EUTM proprietor demonstrate a clear link between the EUTM and the goods at issue. The EUTM only appears in a modified form in the footer of the invoices, along with other logos.

• In fact, the invoices mention other trade marks in their itemization such as ‘BIC’.

• Regarding the goods mentioned in the invoices, none of the goods listed are the ones at issue in Class 34, but rather goods such as ‘monopods for taking selfies’ or ‘deodorants’.

• The applicant makes criticisms regarding the extent of use of the EUTM.

In support of its arguments, the applicant files the following annexes:

• Annex 1: Proof that the trade mark ‘BIC’ is owned by ‘Societe BIC’.

• Annex 2: An Internet search to demonstrate what a ‘Click Stick’ is.

The case for the EUTM proprietor

The EUTM proprietor argues that the EUTM has been put to genuine use for the goods in Class 34 and files 22 invoices in order to prove this. The proprietor claims that the invoices demonstrate that use has been made in the European Union, in particular in Italy, France and Belgium. All of the invoices display the logo at issue.

In its second round of observations, the EUTM proprietor rebuts some of the arguments of the applicant. It claims that the invoices display the mark as registered, the only difference being that it appears in black and white in the invoices, as opposed to the blue and yellow of its registered form. The other brands that appear on the invoice below the EUTM do not alter its distinctive character.

As regards the extent of use and the applicant’s statement that the proof submitted does not prove that the mark is sufficiently used in the EU, the EUTM proprietor recalls that all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

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 15/04/2012. The revocation request was filed on 19/04/2017. 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 19/04/2012 to 18/04/2017 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 25/07/2017, the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• 22 invoices made out to addresses in the European Union and spread out during the relevant period, namely between 2012 and 2016.

Assessment of genuine use – factors

Extent of use

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

In the case at hand, it is impossible to determine whether the EUTM has been used genuinely as a trade mark. The evidence filed by the EUTM proprietor is scarce, consisting of 22 invoices. No additional evidence whatsoever has been filed. Out of the 22 invoices filed, only two of them actually refer to ‘epen’ or ‘e-pen’ within the description of articles sold. The first invoice which mentions ‘e-pen’ is dated 20/06/2012 and it can be seen that 100 items of a product known as ‘e-pen’ were sold for a total of EUR 209. The internal code 2394 appears on this invoice. The second and final invoice which makes mention of ‘epen’ is dated 06/08/2014 and shows that 100 items of a product known as ‘epen’ have been sold for a total of EUR 592.48.

As mentioned above, a product code is referred to in one of the invoices in conjunction with the term ‘e-pen’. The Cancellation Division accepts that it falls within standard commercial practice to refer to products by internal codes, instead of always mentioning product names or trade marks. Consequently, the Cancellation Division has also taken into account whether any of the invoices bear this product code. Two invoices contain the product code 2394. One is dated 07/02/2013 and is made out for 200 items described as ‘lighter covers’ and for a total of EUR 586. The second invoice containing the product code is dated 26/02/2013 and is made out for 100 items described as ‘lighter covers’ and for a total of EUR 209.

The EUTM proprietor has failed to prove the extent of use of the mark to a sufficient degree. Only two of the invoices actually refer to the sign ‘epen/e-pen’, and a further two invoices contain a product code which the Cancellation Division has assumed refers to ‘epen/e-pen’ products. In addition to the fact that it is hard to determine which goods have been sold in this invoices, the amounts given in these invoices demonstrate that the EUTM proprietor has failed to prove the extent of use of the EUTM. Only 500 items have been sold during the relevant period and for a total of approximately EUR 1 500. This is clearly a very low amount.

It should be borne in mind that the smaller the commercial volume of the exploitation of the mark, the more necessary it is for the EUTM proprietor to submit additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37). The EUTM proprietor did not file any additional evidence which would allow the Cancellation Division to conclude that the use of the mark has been genuine. This evidence could have consisted of advertising, press cuttings, other promotional literature or catalogues, by way of an example.

It is true that a logo which is very similar to the EUTM appears in the footer of all of the invoices, as follows:

Without entering into the issue raised by the applicant of whether or not this logo corresponds to the mark as registered, the Cancellation Division stresses that including the mark in the header or footer of an invoice is not sufficient on its own to prove genuine use of a mark. It must be possible to establish whether the mark has been used in conjunction with specific goods and services. It is quite clear in this case that including this logo in the footer of the invoices, along with other logos, is simply part of the corporate image of the proprietor’s company and in no way indicates sales made under the trade mark at issue.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies acertain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested goods. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested goods, namely:

Class 34: Tobacco, Pocket lighters, Smokers' articles, Pipes, Pipe racks.

The EUTM remains on the register for all the uncontested goods and services.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 19/04/2017.

COSTS

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

Liliya YORDANOVA

Lucinda CARNEY

Keeva DOHERTY

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.