CANCELLATION No 30 684 C (REVOCATION)

About You GmbH, Domstraße 10, 20095 Hamburg, Germany (applicant), represented by Geistwert - Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Linke Wienzeile 4/2/3, 1060 Wien, Austria (professional representative)

a g a i n s t

Safe-1 Immobilieninvest GmbH, Amstettner Straße 34, 3362 Mauer, Austria (EUTM proprietor), represented by Martin Platte, Lothringerstrasse 3/12, 1010 Wien, Austria (professional representative).

On 16/01/2020, 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 10 226 918 are revoked as from 07/12/2018 for some of the contested goods and services, namely:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Book binding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 25: Headgear, footwear.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.

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

Class 25: Clothing.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 10 226 918 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Book binding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 25: Clothing, footwear, headgear.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claimed that the EUTM was not put to genuine use in the European Union for a continuous period of five years in connection with all the goods and services for which it was registered.

The EUTM proprietor submitted evidence of use (listed and assessed below in the decision).

The applicant claimed that its company founded in 2014 and its trade mark ‘ABOUT YOU’ are well known in the entire European online and fashion world since ‘ABOUT YOU’ is one of the largest online fashion retailers in Germany. To support its claims, the applicant submitted some printouts from the following websites: https://corporate.aboutyou.de; https://de.wikipedia.org; https://www.aboutyoupangea-festival.de; https://www.wuv.de. It also stated that negotiations between the parties had failed and national proceedings between the parties are pending (30/11/2018); the proprietor filed an infringement action with the commercial court in Vienna against the applicant (these proceedings are suspended until, inter alia, a decision is taken in the present revocation proceedings). To support its claims, the applicant submitted an exchange of correspondence between the parties and the proprietor’s infringement action with the commercial court in Vienna.

Regarding the relevant period of time for assessing the evidence of use, it pointed out that according to Article 58(1)(a) EUTMR, the Cancellation Division should not take into account the evidence submitted by the EUTM proprietor after 07/11/2018 since on that date the applicant requested the EUTM proprietor to prove genuine use of the contested mark and therefore the EUTM proprietor was aware that the present request for revocation may be filed. The applicant submitted a copy of its request for proof of use sent on 07/11/2018 to the EUTM proprietor’s representative.

Regarding the evidence of use submitted by the EUTM proprietor, the applicant criticised each piece of evidence individually and argued that the sign used does not constitute use of the contested mark because the omitted element ‘/’ is dominant and the distinctive character of the contested mark is therefore altered (the signs as used and registered are not broadly equivalent). The applicant also argued that the affidavit is not supported by further relevant documents and many of the documents submitted could be considered as mere preparations to secure customers and constitute internal use.

In relation to the goods and services, the applicant considered that there is no use of the goods and services in Classes 16, 20, 25 and 41 except clothing in Class 25. However, it considered that clothing is a broad category and independent subcategories can be identified such as jeans, dresses, shirts. Finally, it argued that the extent of use was not sufficient as the very low commercial volume for inexpensive goods was not compensated by other factors and the initial phase of marketing a product cannot be prolonged indefinitely.

In reply, the EUTM proprietor considered that the evidence submitted clearly show genuine use of the contested trade mark even before the applicant was founded and argued that it made serious financial investments to launch and become a successful sustainable clothing brand. It pointed out that Article 58(1)(a) EUTMR concerning the commencement or resumption of use within a period of three months preceding the cancellation request does not apply to the present case and therefore the documents dated after 07/11/2018 should be taken into account. They do not constitute commencement or resumption of use since the EUTM proprietor had shown that the contested mark had been genuinely used before 07/11/2018. The EUTM proprietor considered that the evidence must be assessed in its entirety, bearing in mind the interdependence between the factors to be taken into account.

Regarding the nature of use, the EUTM proprietor argued that the sign is used in a form essentially the same
( ) as that registered since the dash is a basic figurative element with no distinctive character and its omission does not alter the distinctive character of the mark. It also pointed out that Article 18(1)(a) EUTMR allows the proprietor to make variations in the sign to enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned and that EU case-law does not request strict conformity between the trade mark in the actual form it is used and its registered form (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65).

The EUTM proprietor considered that clothing cannot be dissected into the subcategories defined by the applicant. Regarding the extent of use, it pointed out that the market concerned is that of high-end, sustainable, eco-friendly and locally sourced clothing and the sales of 1050 items of clothing for EUR 14 640 is sufficient to constitute genuine use.

Finally, it pointed out that the affidavit was supported by objective evidence, the contested sign was used as a trade mark and not as a company name and preparations to launch new products, such as advertising campaigns, have to be taken into account when examining genuine use.

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 16/09/2012. The revocation request was filed on 07/12/2018. 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 07/12/2013 to 06/12/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 21/02/2019, within the time limit, the EUTM proprietor submitted the following evidence as proof of use:

• Exhibits 1 and 2: excerpts of the Austrian company register, dated 21/02/2019, in relation to the company ‘Safe-1 Immobilieninvest GmbH’ and ‘Y/O/U Label GmbH’.

• Exhibit 3: affidavit signed by Dr. Philipp Marouschek, CEO of ‘Safe-1 Immobilieninvest GmbH’, dated 21/02/2019. According to the affidavit, the EUTM proprietor is the owner of the mark and its subsidiary ‘Y/O/U Label GmbH’ uses the trade mark with its consent. The concept was launched between 2010-2011 and the trade mark was developed in 2012 in Austria and Germany with the manufacture of eco-friendly clothing. A lot of money was invested in the marketing campaign (billboards, free cards distributed in bars, restaurants, clubs, broadcast of TV-spots on ‘Youtube’ and on the Austrian youth-culture channel ‘GOTV’). Two stores were open in Berlin and Vienna on 13/07/2012 and these openings were preceded by media coverage in local newspapers. Unfortunately, the anticipated success failed to materialise and some adjustments were made in order to find distributors (the shops in Berlin and Vienna were closed in 2013). On 30/12/2013, 170 items of a limited capsule collection were sold to ‘Kleidungsladen’, an online shop focusing on eco-friendly fashion. The products were advertised and resold in local stores in Bavaria and on the website www.kleidungsladen.de. New business opportunities were sought but unfortunately in August 2014 a cooperation agreement with the Austrian company ‘He Brands Agency for Brand Management’ failed. In 2017, it was decided to focus on linen denim and jeans, distributed by third parties. In May 2018, a cooperation agreement was concluded with ‘Napalm Records Handels GmbH’ where ‘Napalm Records Handels GmbH’ would act as distributor and t-shirts would be supplied for their marketing and promotion activities. On 21/11/2018, the EUTM proprietor’s manufacturer (Leinenweberei Vieböck GmbH) sent newly produced linen-denim.

• Exhibit 4: undated leaflet with the sign presenting the concept behind the trade mark (eco-friendly and high quality clothing).

• Exhibit 5: undated designs of t-shirts with the depiction of the above mentioned trade mark.

• Exhibit 6: undated lookbook of clothing, headgear and shoes, with the depiction of the sign .

• Exhibit 7: picture of some skirts bearing an inside tag with the sign .

• Exhibits 8 and 9: two billboards with the sign ‘MAKES Y/O/U REAL’ and billboard placement invoice dated 18/06/2012 (EUR 66 981,60). According to the EUTM proprietor, billboards were used on a big scale in Vienna from 28/06/2012 to 25/07/2012.

• Exhibits 10-11: free cards with the sign ‘MAKES Y/O/U REAL’ (same visual as in the billboards in exhibits 8 and 9) and an invoice from ‘Boomerang Media’ dated July 2012 relating to these cards (EUR 2 760). According to the EUTM proprietor, free cards were placed in bars, restaurants and clubs in Vienna from 29/06/2012 to 12/07/2012.

• Exhibit 12: TV-advertisement invoices dated 04/06/2012 and 02/07/2012.

• Exhibits 13-15: press articles in German about the opening of ‘Y/O/U’ stores in Vienna and Berlin (Woman magazine dated 11/07/2012; Die Presse dated 15/07/2012 and Wiener Zeitung Online dated 21/08/2012).

• Exhibit 16: pictures of the opening event of the shops in Vienna and Berlin on 13/07/2012. The signs ‘MAKES Y/O/U/ REAL’ and are depicted in some pictures.

• Exhibit 17: invoice dated 30/12/2013 issued by the EUTM proprietor to ‘Kleidungsladen’, in Germany, relating to the sales of 170 items of clothing (capsule collection) for the total amount of EUR 12 000 (skirts, dresses, trench coats, jeans blousons were sold). The sign is depicted at the top of the invoice.

• Exhibit 18: usage statistics relating to the website www.you-label.com for the periods July-December 2012, and 2013 and 2014.

• Exhibits 19 and 20: e-mail correspondence dated August 2014 with the Austrian company ‘He Brands Agency for Brand Management’ and delivery confirmation sent by the EUTM proprietor to ‘He-Brands’ dated 14/08/2014 relating to a sample delivery of three skirts and two trench coats.

• Exhibit 21: letter, dated 14/01/2017, sent by ‘Leinenweberei Vieböck GmbH’ relating to the manufacture of linen denim.

• Exhibit 22: excerpt of the Austrian company register, dated 21/02/2019, in relation to the company ‘Napalm Records Handels GmbH’.

• Exhibit 23: declaration letter from ‘Napalm Records Handels GmbH’ confirming that ‘Napalm Records Handels GmbH’ and ‘Y/O/U Label GmbH’ had concluded an agreement in May 2018 for the supply of t-shirts and that on 07/05/2018 ‘Napalm Records Handels GmbH’ bought a sample batch of 880 t-shirts for EUR 2 640. It is also mentioned that ‘Napalm Records Handels GmbH’ agreed to act as distributor for Y/O/U Label GmbH’s products’.

• Exhibits 24 and 25: undated picture of a meeting with ‘Napalm Records Handels GmbH’ and picture of a t-shirt sample bearing an inside label with the depiction of the sign . According to the EUTM proprietor, this t-shirt is the same as the ones sold to ‘Napalm Records Handels GmbH’.

• Exhibit 26: invoice sent by the EUTM proprietor to ‘Napalm Records Handels GmbH’ in Austria, dated 03/12/2018, relating to the sales of 880 t-shirts for a total amount of EUR 2 640. The sign is depicted in the invoice.

• Exhibits 27 and 28: screenshots from the EUTM proprietor’s new website www.youpster.com (since 10/11/2018) where the sign , ‘Y/O/U – YOUR ORIGINAL U!’ and ‘MAKES Y/O/U REAL’ are depicted in relation to clothing and usage statistics for www.youpster.com for November-December 2018.

• Exhibit 29: invoice sent by ‘Leinenweberei Vieböck GmbH’ (manufacturer) to ‘Y/O/U Label GmbH’, dated 21/11/2018, relating to the sales of 36 meters of linen-denim for EUR 1 213.92.

• Exhibit 30: screenshots from the website www.hm.at showing that ‘H&M’ sustainable mass products are much cheaper than the EUTM proprietor’s products manufactured in limited quantities.

Preliminary remarks

According to Article 58(1)(a) EUTMR, commencement or resumption of use within a period of three months preceding the filing of the application and beginning at the earliest on expiry of the continuous period of five years of non-use will be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application may be filed.

In the present case, the applicant argues that the Cancellation Division should not take into account the evidence dated after 07/11/2018 since from that date the EUTM proprietor was aware that the application was going to be filed. However, the provision mentioned above only applies to cases where commencement or resumption (after five years) of genuine use takes place during the three months preceding the filing and not to cases, such as the present one, where there is evidence of the mark being used before those three months and within five years of the filing of the application. As demonstrated above, the EUTM proprietor has filed evidence dated before those three months preceding the filing of the application and in particular before 07/11/2018. Consequently, the applicant’s argument is unfounded.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the EUTM is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).

As far as the affidavit is concerned, Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, from 07/12/2013 to 06/12/2018 inclusive.

Although some documents are dated before the relevant period (exhibits 8-16 showing preparations for goods about to be marketed), the remaining documents are dated within the relevant period. Furthermore, the use need not have been made throughout the period of five years, but rather within the five years. The provisions on the use requirement do not require continuous use (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52).

Therefore, time of use was sufficiently demonstrated.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The documents show that the place of use is Germany and Austria. This can be inferred from the language of the documents (German), the currency mentioned (euros) and from the invoices that show that sales have been made to clients located in Germany (exhibit 17) and Austria (exhibit 26).

Therefore, the evidence relates to the relevant territory.

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

The use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T‑209/09, Alder Capital, EU:T:2011:169, § 55-56).

The fact that a word is used as a company’s trade name does not preclude its use as a mark to designate goods and services (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 38).

In the present case, although ‘Y/O/U’ is part of the company name ‘Y/O/U Label GmbH’ (the EUTM proprietor’s subsidiary that uses the contested trade mark), the documents clearly show that the acceptable variant of the sign, as explained below, has been used on leaflets, inside labels and even on the goods (t-shirts) to indicate their commercial origin.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further 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 purpose of Article 18(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

The contested mark is the figurative mark . As pointed out by the applicant, the sign is usually used as .

Assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the trade mark (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 36).

If the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).

In the present case, the omission lies in the figurative element which consists in a bold dash. Although this element does not occupy a secondary position due to its large size, its distinctive character is, at most, very weak. Therefore, this banal symbol will not be perceived by the public as indicating the commercial origin of the goods. Therefore, this omission does not alter the distinctive character of the contested EUTM, contrary to the applicant’s claim.

In view of the above, it is considered that the evidence shows use of the contested EUTM that is acceptable under Article 18(1)(a) EUTMR.

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).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38). The characteristics of the market in question must be taken into account (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 51).

In the present case, the items in support of the extent of use consist of two invoices: one dated 30/12/2013 sent to a client in Germany for 170 items of clothing for a total amount of EUR 12 000 (exhibit 17) and one dated 07/05/2018 sent to a client in Austria for 880 t-shirts and a total amount of EUR 2 640 (exhibit 26). Both fall within the relevant period and cover, respectively, the beginning (December 2013) and the end of the relevant period (May 2018). As mentioned before, use does not have to be continuous during the relevant period of five years. It is sufficient if the use had been made at the very beginning or end of the period, provided that the use was genuine (16/12/2008, T-86/07, Deitech, EU:T:2008:577).

The invoices are addressed to two distributors located in two different countries (Germany and Austria).

Outward use does not necessarily imply use targeted at end consumers. Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered as use of the mark (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 73).

In the present case, the Cancellation Division is of the opinion that although the commercial volume of sales, as reflected in the invoices, is not particularly high, token use can be excluded in view of the territorial scope (sales took place in two EU Member States), as well as the length of use (between 2013 and 2018). Furthermore, as explained by the EUTM proprietor, although the clothing market is a mass market, the EUTM proprietor manufactures sustainable, eco-friendly and locally sourced clothing which constitutes a more restrictive market and the items of clothing manufactured are not particularly cheap.

As mentioned before, genuine use does not require commercial success but just real exploitation on the market. Taking into account the evidence in its entirety, although the evidence submitted by the EUTM proprietor is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the contested trade mark. The volume of sales, in relation to the period of use, is not so low that it might be concluded the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 68).

In other words, the extent of use was sufficiently proven for some of the contested goods, as will be analysed below.

Use in relation to the registered goods and services

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

The contested EUTM is registered for goods and services in Classes 16, 20, 25 and 41. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation in respect of 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.

The goods and services in Classes 16, 20 and 41 are not mentioned in the evidence. Regarding the goods in Class 25, although footwear and headgear appear for instance in the lookbook (exhibit 6), they are not mentioned in the invoices. Therefore, genuine use has not been proven for all these goods and services.

The EUTM proprietor has shown use for several items of clothing (t-shirts, dresses, skirts, trench coats, jeans blousons). Therefore, contrary to the applicant’s claims, the Cancellation Division considers that the evidence shows use for clothing and the subcategories mentioned by the applicant (jeans, dresses, working clothes, t-shirts) are not appropriate, since they do not constitute independent subcategories within the broad category of clothing.

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 a certain 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).

It was demonstrated that the EUTM had been used in relation to some of the contested goods and services during the relevant period in the relevant territory to an extent sufficient to indicate that the use was genuine. The EUTM was used as a trade mark, in a form essentially the same as that registered. Considering all the above, the Cancellation Division concludes that the evidence, as a whole, is sufficient to demonstrate that the contested mark was genuinely used during the relevant period in the relevant territory for clothing in Class 25.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods and services, for which it must, therefore, be revoked:

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter; Book binding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 20: Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 25: Headgear, footwear.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.

The EUTM proprietor has proven genuine use for the remaining contested goods; 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 07/12/2018.

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

The Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

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.