CANCELLATION DIVISION



CANCELLATION No 26 282 C (REVOCATION)


TVR Italia s.r.l., Galleria del Corso, 4, 20122 Milano, Italy (applicant), represented by Francesca Caricato, Markinvenio IP Consulting s.r.l., via San Michele, 11, 21047 Saronno, Italy (professional representative)


a g a i n s t


TVR Automotive Limited, Wentworth House, 4400 Parkway, Whiteley Hampshire PO15 7FJ, United Kingdom (EUTM proprietor), represented by Bardehle Pagenberg Partnerschaft mbB Patentanwälte, Rechtsanwälte, Prinzregentenplatz 7, 81675 München, Germany (professional representative).


On 17/02/2020, 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 10 352 318  are revoked as from 06/08/2018 for some of the contested goods, namely:


Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, Apparatus for transmission and reproduction of sound or images, Magnetic data carriers, Gramophone records, Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, Calculating machines, Data-processing equipment and computers, Computers software and computer hardware, Fire-extinguishing apparatus; Electrical controllers and Regulators, Automatic control and regulation installations and devices, in particular for the generation of electrical energy and distribution of electrical energy to electric devices and installations, computer programs for control and regulation systems, computer control apparatus for energy installations, electric devices for control of electrical power; Solar collectors, Energy control devices, Energy distribution apparatus, energy storage apparatus, current generators (included in class 9); Sunglasses.


Class 12: Vehicles, apparatus for locomotion by land, area or water (except cars and sports cars); motor vehicles and parts thereof and fittings (except cars and sports cars); anti-theft devices for vehicles; anti-theft alarms for vehicles; automobile hoods; automobile chains; automobile chassis; automobile tires [tyres]; automobile bodies; axles for vehicles; balance weights for vehicle wheels; bands for wheel hubs; bodies for vehicles; brake linings for vehicles; brake shoes for vehicles; brake segments for vehicles; brakes for vehicles; bumpers for automobiles; caps for vehicle petrol [gas] tanks; hydraulic circuits for vehicles; clutches for land vehicles; connecting rods for land vehicles, other than parts of motors and engines; couplings for land vehicles; covers for vehicle steering wheels; direction signals for vehicles; turn signals for vehicles; doors for vehicles; driving motors for land vehicles; driving chains for land vehicles; engines for land vehicles; motors for land vehicles; frames for bicycles; cycles / bicycle frames; cycle frames; gearing for land vehicles; head-rests for vehicle seats; hoods for vehicle engines; horns for vehicles; hub caps; hubs for vehicle wheels; vehicle wheels (hubs for-); inclined ways for boats; luggage carriers for vehicles; luggage nets for vehicles; motors, electric, for land vehicles; non-skid devices for vehicle tires [tyres]; propulsion mechanisms for land vehicles; reduction gears for land vehicles; reversing alarms for vehicles; rims for vehicle wheels; safety belts for vehicle seats; safety seats for children, for vehicles; seat covers for vehicles; shock absorbing springs for vehicles; shock absorbers for automobiles; ski carriers for cars; spikes for tires [tyres]; studs for tires [tyres]; steering wheels for vehicles; sun-blinds adapted for automobiles; suspension shock absorbers for vehicles; pneumatic tires [tyres]; tires, solid, for vehicle wheels; trailer hitches for vehicles; transmission shafts for land vehicles; transmissions, for land vehicles; undercarriages for vehicles; upholstery for vehicles; valves for vehicle tires [tyres]; vehicle wheels; vehicle chassis; vehicle bumpers; vehicle running boards; vehicle wheel tires [tyres]; vehicle suspension springs; vehicle seats; vehicle covers [shaped]; windows for vehicles; windscreens; windshields; windshield wipers; windscreen wipers.


Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter, Book binding material, Photographs, Stationery.


Class 25: Clothing, footwear, headgear; cap peaks; visors [hat making].


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


Class 12: Cars; sports cars.


4. Each party bears its own costs.



REASONS


The applicant filed a request for revocation of European Union trade mark registration No 10 352 318   (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:


Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, Apparatus for transmission and reproduction of sound or images, Magnetic data carriers, Gramophone records, Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, Calculating machines, Data-processing equipment and computers, Computers software and computer hardware, Fire-extinguishing apparatus; Electrical controllers and Regulators, Automatic control and regulation installations and devices, in particular for the generation of electrical energy and distribution of electrical energy to electric devices and installations, computer programs for control and regulation systems, computer control apparatus for energy installations, electric devices for control of electrical power; Solar collectors, Energy control devices, Energy distribution apparatus, energy storage apparatus, current generators (included in class 9); Sunglasses.


Class 12: Vehicles, apparatus for locomotion by land, area or water; motor vehicles and parts thereof and fittings; anti-theft devices for vehicles; anti-theft alarms for vehicles; automobile hoods; automobile chains; automobile chassis; automobile tires [tyres]; automobile bodies; axles for vehicles; balance weights for vehicle wheels; bands for wheel hubs; bodies for vehicles; brake linings for vehicles; brake shoes for vehicles; brake segments for vehicles; brakes for vehicles; bumpers for automobiles; caps for vehicle petrol [gas] tanks; hydraulic circuits for vehicles; clutches for land vehicles; connecting rods for land vehicles, other than parts of motors and engines; couplings for land vehicles; covers for vehicle steering wheels; direction signals for vehicles; turn signals for vehicles; doors for vehicles; driving motors for land vehicles; driving chains for land vehicles; engines for land vehicles; motors for land vehicles; frames for bicycles; cycles / bicycle frames; cycle frames; gearing for land vehicles; head-rests for vehicle seats; hoods for vehicle engines; horns for vehicles; hub caps; hubs for vehicle wheels; vehicle wheels (hubs for-); inclined ways for boats; luggage carriers for vehicles; luggage nets for vehicles; motors, electric, for land vehicles; non-skid devices for vehicle tires [tyres]; propulsion mechanisms for land vehicles; reduction gears for land vehicles; reversing alarms for vehicles; rims for vehicle wheels; safety belts for vehicle seats; safety seats for children, for vehicles; seat covers for vehicles; shock absorbing springs for vehicles; shock absorbers for automobiles; ski carriers for cars; spikes for tires [tyres]; studs for tires [tyres]; steering wheels for vehicles; sun-blinds adapted for automobiles; suspension shock absorbers for vehicles; pneumatic tires [tyres]; tires, solid, for vehicle wheels; trailer hitches for vehicles; transmission shafts for land vehicles; transmissions, for land vehicles; undercarriages for vehicles; upholstery for vehicles; valves for vehicle tires [tyres]; vehicle wheels; vehicle chassis; vehicle bumpers; vehicle running boards; vehicle wheel tires [tyres]; vehicle suspension springs; vehicle seats; vehicle covers [shaped]; windows for vehicles; windscreens; windshields; windshield wipers; windscreen wipers.


Class 16: Paper, cardboard and goods made from these materials, not included in other classes; Printed matter, Book binding material, Photographs, Stationery.


Class 25: Clothing, footwear, headgear; cap peaks; visors [hat making].


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






SUMMARY OF THE PARTIES’ ARGUMENTS


The applicant filed a request for revocation on 06/08/2018 claiming that the contested EUTM has not been put to genuine use for a continuous period of five years in relation to all the goods for which it is registered.


The EUTM proprietor filed observations and evidence of use (Exhibits 1 to 34, listed below). It provides a detailed explanation of the pieces of evidence submitted. According to the EUTM proprietor the evidence proves that the contested EUTM has been used during the relevant period in relation to goods in Classes 9, 12 and 25. The revocation application should be rejected.



Preliminary remarks


The request for revocation was accompanied by a lengthy statement and some documents filed by the applicant on 06/08/2018 and 27/08/2018. Firstly, it must be noted that the statement itself is drafted in a very confused manner and lacks consistency and logic. Secondly, and more importantly, the majority, if not all, of the issues raised by the applicant have absolutely no bearing on the present revocation proceedings. The same refers to the documents accompanying the statement of the applicant, which are not related to the revocation proceedings and/or are dated before the examined relevant period.


The applicant is seemingly trying to claim that it is the true successor of the former parent company established in the United Kingdom, TVR Engineering Ltd. It refers to several conflicts regarding the parties’ relationship and the rights to several marks that include the letters ‘TVR’, over the past years. The applicant refers to opposition proceedings No B 1 313 248 against EUTM No 5 699 954, the resulting decision of 14/05/2013 of the Boards of Appeal R 823/2011-2, the General Court’s judgment annulling the decision of the Second Board of Appeal [15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503], etc. According to the applicant that opposition should be rejected as it was based on: 1. Lack of legitimacy due to invalid transfers; 2. Elapsed rights used as basis for the proceedings; 3. Unorthodox procedure followed by the Chancery of the European Court in the further phases of the proceedings by admitting the opponent’s appeal beyond the deadline; 4. Counterpart’s bad faith in claiming rights after its CEO’s public declaration of lack of interest in continuing the car business.


The Cancellation Division points out that the intentions of the parties or their conflicts (outside of these proceedings), respectively the proprietor’s alleged bad faith, are irrelevant under the grounds invoked (Article 58(1)(a) EUTMR) and, hence, have no bearing on this case. Revocation and invalidity grounds cannot be combined in a single application but must be subject to separate applications and entail the payment of separate fees.


As for the arguments of the applicant in relation to a judgment of the court in other previous proceedings, and in relation to the time-limit for bringing the proceedings before the court, these arguments do not affect the scope of the tasks to be performed by the Cancellation Division in examining the grounds laid down in Article 58(1)(a) EUTMR. Therefore, those points raised by the applicant will not be addressed further in the present decision.


The applicant questions the legality of transfer of rights of several trade marks of the proprietor and asks the Honourable Court to order EUIPO to detect and declare those transfers null. In this regard, the Cancellation Division notes that this issue has already been addressed by the Court in case 15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503 , at § 26–30 (appeal against this and related judgment were dismissed by the Court of Justice by Order of the Court (Eighth Chamber) of 02/03/2017, case 576/16 P). Therefore, the applicant’s claims regarding the ownership of the contested trade mark are rejected as unfounded.


Finally, the applicant asked for the arrangement of an oral hearing for discussing the matter ‘for the delicacy and breadth of the issues involved’. Article 96 EUTMR provides that the Office may hold oral proceedings. Article 96 EUTMR leaves it to the discretion of the Office to decide on the necessity of an oral hearing. Further, it is to be recalled that oral proceedings shall be appropriate particularly when the Office considers it necessary to hear oral evidence from the parties, witnesses or experts. In the present case, the Cancellation Division considers that the granting of an oral hearing would not be expedient in view of the circumstances of the particular case at issue. This is in line with the common practice of the Office that written proceedings are usually sufficient in the vast majority of cases and that having oral proceedings is generally not necessary.


Furthermore, following the notification of the Office of 13/06/2019 informing the parties of the closure of the adversarial stage of the proceedings in view of the lack of observations in reply on the part of the applicant, the applicant sent a letter on 14/06/2019. In this letter it informed the EUIPO that the last communication (before the one of 13/06/2019) it received was on 29/01/2019 and that that letter contained no mention of a term for filing observations in reply.


In this regard, and as the applicant was already explained by telephone on 17/06/2019, it is noted that according to the file records of the case, EUIPO sent to the applicant three e-communications in between, namely on 29/03/2019 (one communication) and on 02/04/2019 (two communications). A check in the relevant EUIPO systems clearly corroborates that all said communications were duly received and opened by the applicant. In particular, the communication of 29/03/2019 sent to recipient ‘Caricato’ was opened by user ‘fcarica7’ on 01-April-2019 at 9:02:03 and the communications of 02/04/2019 sent to recipient ‘Caricato’ were opened by user ‘fcarica7’ on 02-April-2019 at 5:47:28 and on 02-April-2019 at 5:48:35. Therefore, the applicant’s claims in that regard are unfounded.



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 22/03/2012. The revocation request was filed on 06/08/2018. 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 06/08/2013 to 05/08/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.


On 25/03/2019 the EUTM proprietor submitted evidence as proof of use. The evidence consists of the following:


Exhibit 1: Printout from www.goodwood.com showing an article dated 06/09/2017 titled ‘The History of TVR in 4 videos’.


Exhibit 2: Printout from www.goodwood.com showing an article dated 06/09/2017 in relation to the yearly Goodwood Revival’ motor show event from September 8 to 10, 2017. The article is titled ‘Les Edgar’s guide to TVRs’ and mentions, inter alia, the different TVR car models through the years (1949, 1959, 1963, 1964, 1965, 1969, 1978, 1988, 1992, 1996, 1998, 2001, 2005 and 2018).


Exhibit 3: Press article from ‘The Telegraph’, www.telegraph.com dated 08/09/2017 titled ‘Goodwood Revival 2017: TVR reveals brand new 200mph sports car’. It is mentioned, inter alia, that this is TVR’s first model for well over a decade, that it is scheduled to coincide with the British company’s 70th anniversary and that a limited run of 500 ‘Launch Edition’ cars, priced at £90,000, is already selling fast, with buyers having seen the new car at a private event.


Exhibit 4: Press article from www.dsf.my/2015/06/tvr-revival-by-gordan-murray-imminent/ titled ‘TVR Revival by Gordon Murray Imminent’. The article gives a historical overview of the TVR sports car company founded in 1947 in Blackpool, England. It is mentioned, for example, that following a bad financial period, in June 2013 the company was bought by a consortium led by Mr. Les Edgar and that they plan to produce a new TVR car to sell by 2017.


Exhibit 5: Printout from the proprietor’s website www.tvr.co.uk titled ‘TVR Heritage’ with an overview of the history of the company.


Exhibit 6: Printout from the website of the Lakeland Motor Museum (www.lakelandmotormuseum.co.uk) showing information and photos of the 1952 TVR - the oldest surviving historic TVR sports car.


Exhibit 7: Excerpts from the website of the TVR Car Club, www.tvr-car-club.co.uk, which according to the proprietor’s information is ‘one of the premier one-marque car clubs in the UK with a membership of over 5000 and affiliated clubs around the world’. The printout shows information on the early TVR car models.


Exhibit 8: Press release from str8six, www.str8six.co.uk in relation to the 2006 TVR model Tuscan Vulcan car.


Exhibit 9: Press article dated 13/12/2011 from ‘Life on Cars’, http://lifeonears.blogspot.com, a motoring news blog by David Simister, editor at the classic car magazine ‘Classic Car Weekly’ and motoring correspondent at ‘The Champion newspaper’. The article is titled ‘The TVR Griffith is back’.


Exhibit 10: Printout from www.motor1.com, showing an article of 14/11/2011 titled ‘TVR has announced plans to begin building the Sagaris, Tuscan, Tuscan MK ll, Cerbera, Chimaera and Griffith’.


Exhibit 11: Printout from www.autocar.co.uk, the website of the British motor magazine ‘Autocar’ showing an article of 03/06/2015 titled ‘A brief history of TVR’, mentioning inter alia, the following milestones:



Exhibit 12: Invoice of 03/05/2013 issued by TVR GmbH, Austria to the EUTM proprietor’s company itemizing the ‘Sale of Stock and Tooling’ in the amount of overall GBP 400,000.00 and referring to an asset purchase agreement of 03/05/2013.


Exhibit 13: Printout from ‘Autogespot’, www.autogespot.com, dated 27/12/2013 showing a TVR Tuscan Vulcan car as the ‘spot of the day’.


Exhibit 14: Printout from www.abduzeedo.com, dated 14/10/2014 showing an article titled ‘TVR Logo Concept’.


Exhibit 15: Article from www.goodwood.com by Bob Murray dated 09/09/2017 titled ‘Les Edgar’s guide to TVRs’ giving information and a tour through the TVR display at the ‘Goodwood Revival’ motor show event guided by Les Edgar and mentioning, amongst others, the TVR Griffith 2018 car model.


Exhibit 16: Article from Sprint Magazine, the monthly magazine of the TVR Car Club, dated October 2017, issue 502 showing an advert ‘TVR is roaring back’ and informing of the exact stand where the first public showing of the new TVR Griffith car will take place during the NEC Classic Car Show on 10 – 12th November 2017.


Exhibit 17: Article from Sprint Magazine, the monthly magazine of the TVR Car Club, dated November 2017, issue 532 showing a TVR advert titled ‘Your car can be a star’ and an advert for the NEC Classic Car Show of 10 – 12th November 2017 with an invitation to visit TVR’s stand and celebrate its 70th anniversary.


Exhibit 18: Extract from Sprint Magazine, Issue 504, December 2017 showing an advert (‘Coming for Christmas new online store’) in relation to the launch of a new line of TVR merchandise goods at www.tvr.co.uk/store.


Exhibit 19: Extract from Sprint Magazine, Issue 505, January 2018 showing an advert in relation to TVR’s webstore offering merchandise goods such as custom keyrings, badges and mugs.


Exhibit 20: Extract from Sprint Magazine, Issue 506, February 2018 showing, inter alia, an article titled ‘TVR draws crowds at auto sport show’ that took place in January 2018.


Exhibit 21: Extract from Sprint Magazine, Issue 507, March 2018 showing, inter alia, an article announcing that ‘The new TVR Griffith will be at the London Motor Show in May’.


Exhibit 22: Extract from Sprint Magazine, Issue 508, April 2018 showing, inter alia, an article titled ‘Testing continues at a top secret location’ and also an advert banner saying ‘come and see the new TVR Griffith at the Beaulieu Supercar weekend – see page 7 for details’.


Exhibit 23: Extract from Sprint Magazine, Issue 509, May 2018 showing, inter alia, an article titled ‘We said we’d be back; TVR teams up with Rebellion Racing to return to Le Mans’ and also an advert banner saying ‘come and see the new TVR Griffith at the Beaulieu Supercar weekend 4th – 5th August’.


Exhibit 24: Extract from Sprint Magazine, Issue 510, June 2018 showing, inter alia, an article titled ‘Rebellion-TVR Racing Prepare for Le Mans’18’.


Exhibit 25: Extract from Sprint Magazine, Issue 511, July 2018 showing, inter alia, an article titled ‘Rebellion-TVR Racing Raise the bar at Le Mans’18’ and also a section advertising ‘TVR Griffith Upcoming Events’, in particular Silverstone Classic in July 20-22, Beaulieu Supercar Weekend in August 4-5 and Silverstone FIA World Endurance Championship in August 17-19.


Exhibit 26: Extract from Sprint Magazine, Issue 512, August 2018 showing, inter alia, an article titled ‘New luxury clothing line by TVR racing’.


Exhibit 27: Statement of 28/11/2018 by Mr. Richard Sails, the TVR Car Club Chairman, in relation to the circulation numbers of the Sprint Magazine. It is confirmed therein that a print TVR magazine is circulated in over 5 000 copies per month, in particularly in the UK and many countries in the European Union and abroad (the countries are listed individually). It is also mentioned that based on feedback each copy of the magazine is often read by multiple readers and that amongst the subscribers/readers are club members, including automobile dealerships, car workshops and the like, as well as their customers. The statement also includes the names and the number of attendees of important automobile events during the year, e.g. the London Classic Car Show (37,000 attendees over four days), the Silverstone Classic (100,000 attendees over the weekend), Beaulieu Supercar Weekend (over 10,000 attendees), NEC Practical Classics and Restoration Show (28,000 visitors over three days), the Classic Motor Show at the NEC (72,000 attendees).


Exhibits 28 - 34: Extracts from the following Sprint Magazines: Issues 513, 514, 515, 516, 517, 518 and 519 corresponding to the months in the period September 2018 - March 2019. The magazines extracts show, for example, articles titled ‘TVR Griffith caught smoking (tyres) at Beaulieu’, ‘Rebellion TVR Racing Win 6hrs of Silverstone’, a full list of the TVR network members in the UK including their contact details availability at www.tvr.co.uk/ownership/network, a European list of the TVR network members in various EU countries such as Sweden, Belgium, the Netherlands, France and Germany, as well as Japan and Australia.



Assessment of genuine use – factors


Time of use


The evidence must show genuine use of the European Union trade mark within the relevant period.


Much of, and a sufficient amount of the documents, fall within or can safely be attributed to refer to use within the relevant period of time.


Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).


In the present case, the evidence referring to dates outside the relevant period such as Exhibits 28-34, confirm use of the EUTM proprietor’s mark within the relevant period. Bearing in mind the nature of the goods (cars cannot be designed, produced, inspected by authorities and placed on the market in a couple of months only) in combination with the remaining evidence (such as exhibits 2, 3, 11, 15 and 16) showing that launch of the goods and sales took place in 2017 and/or 2018, it is obvious that Exhibits 28-34 contain indications referring to use within the relevant time period.


Also, in the present case, it is noted that use need not have been made throughout the five years, but within the five years. Regarding duration of use, it is important to remember that only trade marks whose genuine use was interrupted for a continuous period of five years are subject to the sanctions provided for in Article 18(1) EUTMR. Therefore, it is sufficient for avoiding these sanctions that a trade mark was genuinely used for only part of this period (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52;09/07/2009, R 623/2008‑4, Walzer Traum (fig.) / Walzertraum, § 28).


Consequently, in view of all the above, the Cancellation Division considers that the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.


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 press articles show that the place of use is mostly the United Kingdom but also other countries in the European Union. This can be inferred from the places where promotional events took place, the press articles, as well the currency mentioned (such as the price of the cars in GBP) and the addresses indicated.


According to case-law and following ‘Leno Merken’ case (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 44), Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the Union. As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule cannot be laid down (paragraph 55). 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 (§ 58). Use of an EUTM in the UK (15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57) or even in London and its immediate surroundings may be geographically sufficient (30/01/2015, T-278/13, now, EU:T:2015:57).


Consequently, taking into account the relevant circumstances in the present case, the characteristics of the market and the territorial extent, it is considered that the evidence is sufficient to satisfy the European requirements or standards for genuine use. 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.


In the present case, the evidence shows that the contested EUTM was used as a trade mark. The evidence filed by the EUTM proprietor shows a link between the goods in question and the use of the mark and that the EUTM was used in accordance with its essential function, which is to guarantee the commercial origin of the goods for which it is registered.


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).


In the present case, the registered mark is . The evidence shows that it is used primarily as registered. Indeed, in some of the documents only the word elements ‘TVR’ appear without the triangular element or the mark is referred to together with additions such as ‘Griffith’, ‘Sagaris’, ‘Tuscan’, etc. The Cancellation Division considers that all these variations do not alter the distinctive character of the mark, since the word element ‘TVR, being the most distinctive of the contested mark, is clearly legible and is prominently shown. The figurative/word elements added, altered or omitted are either less distinctive, or will be seen as decorative and/or as designations of separate lines/models of the goods and do not alter the distinctive character of the registered trade mark.


As held by the Court, several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34). There is no legal precept in the European Union trade mark system that obliges the proprietor to provide evidence of the contested trade mark alone when genuine use is required. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.


Therefore, although the use of the contested mark varies at times, this does not affect its distinctive character. Consequently the evidence gives sufficient indications of the use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the contested EUTM under Article 18 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 Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).


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 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.


Also, assessing the circumstances of the case may include giving consideration, inter alia, to the nature of the goods or services, the characteristics of the market concerned and the scale and frequency of use of the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).


The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).


In the present case, the Cancellation Division is of the opinion that for part of the contested goods for which the EUTM is registered, the evidence, albeit not particularly exhaustive, viewed in its entirety, gives sufficient information regarding the extent of use of the mark.


Although there is no evidence of the actual volume of goods sold, such as invoices, sales figures, etc., the documents such as the press articles coming from independent and/or specialised sources of information, the prices quoted and technical specifications of cars, promotional activities and participation in specialised events demonstrate that that trade mark had been the subject of real and genuine commercial exploitation on the market, especially in the years 2017 and 2018.


As stated by the Court, the provision for a five-year period does not mean that proof of genuine use of the trade mark has to be provided for each of the years covered by that period separately, rather it is sufficient to demonstrate that, taking account of all the relevant factors specific to the particular case, for at least part of that period, that trade mark was used not merely in a token manner, but was actually used and used in order to create or preserve an outlet for the goods or services in question. In particular, if this were not so, in a situation such as that in the present case, the occurrence of even only a temporary financial crisis preventing the use of the earlier trade mark for a limited period, even though its proprietor envisages continuing to use that mark in the near future, might be sufficient to preclude him opposing the registration of a similar trade mark (15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 53).


In relation to expensive goods or an exclusive market, low turnover figures can be sufficient (04/09/2007, R 35/2007-2, Dinky, § 22). It is, therefore, always necessary to take the characteristics of the market in question into account (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51).


In the context of high-end sports cars with technical specifications, as in the present case, that are not intended for normal, everyday use and the price of which exceeds that of most private-use cars, the General Court held that it is well known that that market is often characterised by relatively low demand, by production to specific order and by the sale of a limited number of vehicles. Hence, it was enough to demonstrate that the trade mark was marketed in the relevant period and that that trade mark was the subject-matter of public discussion (15/07/2015, T–398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57). The General Court also recalled that the case-law has recognised that the purpose of genuine use 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 (15/07/2015, T–398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 45, 58 and the case-law cited within).


According to the Cancellation Division, and for obvious reasons, those principles apply equally in the present case. There are sufficient indications on file of investment made in promotional activities as well as serious plans for continuing market presence and manufacture. The documents show that attempts were made by the EUTM proprietor to revive the production of TVR sports cars and the company’s commercial activities. The goods are specialized cars that are collectors’ items. This is confirmed by their price range as well as in the press articles and history of the company. It should be reminded that the evaluation of the proof of use is a question of whether the EUTM proprietor has seriously tried to acquire a commercial position on the relevant market. This does not mean that the EUTM proprietor has to reveal the volume of sales, its turnover figures or the individual client’s names and prices actually billed to different clients. It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed.


The EUTM proprietor has shown that it used the trade mark outwardly in the relevant time period. The contested mark is used in relation to the goods, which are the subject to promotional activities, of press articles and offered for sale.


Consequently, taking into account the evidence in its entirety and based on an overall assessment, the Cancellation Division considers that the evidence shows a real commercial exploitation of the contested mark which is not merely token and is of a sufficient extent and constancy as to strive to maintain or create a market share for the goods designated by the mark. However, this conclusion applies only in relation to part of the registered goods (see next section).


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 in Classes 9, 12, 16 and 25. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the contested goods.


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 abovementioned 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)


Use for the goods in Class 12


The contested EUTM is registered for, inter alia, the broad categories Vehicles, apparatus for locomotion by land; motor vehicles. However, the evidence shows use only in relation to sports cars. Although the cars manufactured by the applicant have a primarily sports purpose, they are also obviously fit for public road use and, thus, a limitation only to sports cars is not pertinent in the present case. Therefore, it is considered that the EUTM proprietor has shown use for cars and sports cars, but not for the entire and quite broad above-mentioned categories.


There is no evidence of use of the EUTM for the rest of the goods for which the EUTM is registered in Class 12. The EUTM proprietor argues that the evidence also proves use in relation to goods such as parts and fittings of motor vehicles. However, there is no evidence on file showing that the EUTM proprietor itself produced/sold parts and fittings for cars and to what extent. Indeed, there are some indications in the evidence (e.g. Exhibit 22) of marketing of genuine TVR parts by a company called ‘TVR Parts Limited’, referred to as the official supplier of Genuine TVR parts (see below a snapshot from Exhibit 22). However, the EUTM proprietor did not comment on its possible relations with that company. Furthermore, there is absolutely no information on the possible extent and exact nature of use of those goods. Likewise, there is no evidence on file showing that the EUTM proprietor manufactured, sold and/or provided any of the remaining goods in this class. The EUTM proprietor did not submit any evidence of use or proper reasons for non-use of the contested trade mark in relation to those goods in Class 12.

Snapshot from Exhibit 22 (arrow added by proprietor):


Use for the goods in Classes 9, 16 and 25


The EUTM proprietor did not submit any evidence of use or proper reasons for non-use of the contested trade mark in relation to any of the contested goods in Classes 9, 16 and 25.


The EUTM proprietor argues that the evidence proves use in relation to some goods in Class 9 because Exhibit 10 ‘discloses a display panel with tachometer incorporating the EUTM’. However, the fact that the mark of the cars appears physically on certain parts of the vehicle (such as its display, hood or body) does not mean that these parts are sold individually under the mark, since there is no evidence that the parts in question are marketed under the contested mark, nor any other indication that the EUTM proprietor is trying to create a market outlet for these goods.


As regards the goods in Class 25, the EUTM proprietor relies on Exhibits 18, 19, 20, 25 and 26. In this regard, it must be noted that the goods appearing in Exhibits 18, 19 and 20 are keyrings, badges, pencils and mugs, which do not belong to Class 25 or any of the remaining Classes for which the contested mark is registered. As for Exhibits 25 and 26, they show several pictures of polo shirts and refer to the production of a limited collection of luxury men’s and women’s clothing and some cool accessories in collaboration between TVR Racing and Teddy Edward. However, there is no further information as regards the possible extent of use (such as prices, orders, product catalogues, volume of sales, advertising investment, etc.). Therefore, in the absence of additional documents or information, no conclusion can be made in relation to the actual commercial volume, dimension or frequency of use and the Cancellation Division is unable to determine the extent of use. Therefore, it is not possible to determine if use was such as to create or preserve an outlet for the products concerned.


Finally, for the sake of completeness it is mentioned that no evidence is provided, and no such use is claimed by the EUTM proprietor, in relation to the goods in Class 16. As for the monthly magazine of the TVR Car Club, it is called ‘The Sprint Magazine’, and obviously does not show use of the contested trade mark by the EUTM proprietor in relation to the good in Class 16.


Consequently, for all of the above reasons, it is concluded that the EUTM proprietor did not submit any (relevant) evidence of use or proper reasons for non-use of the contested trade mark in relation to any of the contested goods in Classes 9, 16 and 25.


Overall assessment and conclusion


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).


In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors time, place, extent and nature of use for some of the contested goods in Class 12, namely:


Class 12: Cars; sports cars.


Therefore, the EU trade mark registration remains registered for the abovementioned contested goods and the application for revocation is not successful in this respect.


However, the evidence submitted is insufficient to prove genuine use of the contested EUTM in relation to the remaining contested goods, for which it must, therefore, be revoked, namely:


Class 9: All the goods.


Class 12: All the goods except cars and sports cars.


Class 16: All the goods.


Class 25: All the goods.


According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 06/08/2018.



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



Plamen IVANOV

Liliya YORDANOVA

Cathy MEDINA



According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision.