24


DECISION

of the Fifth Board of Appeal

of 19 November 2020

In case R-530/2020-5

About You GmbH

Domstraße 10

20095 Hamburg

Germany



Revocation Applicant / Appellant

represented by Geistwert - Kletzer Messner Mosing Schnider Schultes Rechtsanwälte OG, Linke Wienzeile 4/2/3, 1060 Wien, Austria

v

Safe-1 Immobilieninvest GmbH

Amstettner Straße 34

3362 Mauer

Austria



EUTM Proprietor / Defendant

represented by Martin Platte, Lothringerstrasse 3/12, 1010 Wien, Austria



APPEAL relating to Cancellation Proceedings No 30 684 C (European Union trade mark registration No 10 226 918)

The Fifth Board of Appeal

composed of V. Melgar (Chairperson), C. Govers (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

  1. SAFE-1 Immobilieninvest GmbH (‘the EUTM proprietor’) is the proprietor of the figurative mark below filed on 30 August 2011 and registered on 16 September 2012 for various goods and services in Classes 16, 20, 25 and 41.

The goods at issue in the appeal proceedings are:

Class 25 - Clothing.

  1. On 7 December 2018, About You GmbH (‘the revocation applicant’) filed an application for a declaration of revocation on the ground that the EUTM had not been put to genuine use in the European Union for all the goods for which it was registered, pursuant to Article 58(1)(a) EUTMR.

  2. On 21 February 2019, the EUTM proprietor submitted the following evidence:

    1. Exhibits 1 and 2: extracts from the Austrian companies register relating to the EUTM proprietor, Safe-1 Immobilieninvest GmbH, and to Y/O/U Label GmbH which explains that the latter company is a subsidiary of the EUTM proprietor;

    2. Exhibit 3: affidavit of the EUTM proprietor’s CEO;

    3. Exhibit 4: undated leaflet with the sign describing the fashion label’s concept (eco-friendly and high-quality ‘clothing’),

    4. Exhibit 5: undated illustration of the use of the above mark on T-shirts;

    5. Exhibit 6: undated brochure depicting the use of the sign on T-shirts, shirts, trousers and dresses;

    6. Exhibit 7: pictures of skirts bearing labels with the sign ;

    7. Exhibits 8 and 9: two billboards with the figurative sign and a billboard placement invoice issued by an Austrian company dated 18 June 2012 for 300 billboards in the period from 28 June 2012 and 25 July 2012;

    8. Exhibits 10 and 11: images of the free cards with the figurative sign ‘MAKES Y/O/U REAL’ (same visual as in the billboards in exhibits 8 and 9) and an invoice rendered by an Austrian undertaking dated July 2012 for the distribution of cards from 29 June 2012 to 12 July 2012;

    9. Exhibit 12: TV advertisement invoices dated 4 June 2012 and 2 July 2012;

    10. Exhibits 13-15: press articles on the opening of ‘Y/O/U’ stores in Vienna and Berlin (Woman magazine dated 11 July 2012; Die Presse dated 15 July 2012 and Wiener Zeitung Online dated 21 August 2012), and disclosing the figurative sign ‘MAKES Y/O/U REAL’. Wiener Zeitung Online dated 21 August 2012 mentions the Austrian fashion label ‘Y/O/U’;

    11. Exhibit 16: pictures of the opening event of the shops in Vienna and Berlin on 13 July 2012. The signs and are depicted in some pictures including on clothing worn by performers;

    12. Exhibit 17: invoice dated 30 December 2013 rendered by the EUTM proprietor to the German retailer Kleidungsladen on the sale of 170 items of ‘clothing’ (capsule collection of skirts, dresses, trench coats, jeans blousons) for the total amount of EUR 12 000. The sign is depicted at the top of the invoice;

    13. Exhibit 18: monthly usage statistics on the website www.you-label.com for the periods July-December 2012, and 2013 and 2014;

    14. Exhibits 19 and 20: email correspondence dated August 2014 with the Austrian company ‘He Brands Agency for Brand Management’ and confirmation sent by the EUTM proprietor dated 14 August 2014 for the sample delivery of three skirts and two trench coats;

    15. Exhibit 21: letter dated 14 January 2017 sent by Leinenweberei Vieböck GmbH relating to the manufacture of linen denim;

    16. Exhibit 22: excerpt from the Austrian companies register on the company Napalm Records Handels GmbH;

    17. Exhibit 23: a letter from Napalm Records Handels GmbH declaring an agreement concluded between the Austrian Record Company, Napalm Records Handels GmbH and Y/O/U Label GmbH in May 2018 for the supply of T‑shirts, by which the former will act as a distributor for Y/O/U Label GmbH’s products and confirming that on 7 May 2018 Napalm Records Handels GmbH purchased a sample batch of 880 T‑shirts for EUR 2 640;

    18. Exhibits 24 and 25: undated picture of a meeting with Napalm Records Handels GmbH as well as image of a T‑shirt bearing on the inner collar the label