CANCELLATION No 24 441 C (REVOCATION)

Hearing Health and Mobility Limited, 61 Cowbridge Road East, Cardiff CF11 9AE, United Kingdom (applicant), represented by Blake Morgan LLP, New Kings Court Tollgate, Chandler’s Ford, Eastleigh, Hampshire SO53 3LG, United Kingdom (professional representative)

a g a i n s t

Specsavers BV , Bisonspoor 4004, NL-3605LV Maarssen, Netherlands (EUTM proprietor), represented by HGF Limited, 1 City Walk, Leeds, Leeds LS11 9DX, United Kingdom (professional representative).

On 30/04/2019, 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 10 429 116 are revoked in their entirety as from 03/07/2018.

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

REASONS

The applicant filed a request for revocation of European Union trade mark No 10 429 116 ‘HEARSAVERS’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

	Class 9:	Ear defenders and ear plugs; ear protectors and ear protecting devices; adaptors for connecting telephones to hearing aids; hearing aids, other than for the deaf; plugs for connecting hearing aids to programming apparatus; apparatus for the programming of hearing aids radio receivers for connection to hearing aids; remote control loudness controllers for connecting to hearing aids; telephone apparatus for use by persons with hearing difficulties; parts and fittings for all the aforesaid goods.
	Class 10:	Apparatus for use in alleviating, testing and treating hearing disorders; ear adaptors for hearing aids; moulds for being parts of hearing aids; hearing aids and hearing apparatus for the deaf; hearing devices for use by persons with a hearing impairment; hearing protectors to prevent loud noises damaging hearing; listening apparatus for persons with impaired hearing; medical hearing instruments; medical instruments for use as aids to hearing; acoustic amplifiers for partially deaf persons; programmable hearing aids; parts and fittings for all the aforesaid goods.
	Class 35:	Retail services connected with the sale of hearing aids, hearing apparatus, hearing instruments and related accessories and preparations; mail order retail services connected with the sale of hearing aids, hearing apparatus, hearing instruments and related accessories and preparations; electronic shopping retail services connected with the sale of hearing aids, hearing apparatus, hearing instruments and related accessories and preparations; office functions; business management and development; business advice and administration services; business planning; operational business services; advertising, promotional and marketing services; procurement of goods; professional management and recruitment services; accounts and auditing services, all of the aforesaid services for professionals carrying out hearing testing and other healthcare professionals; the provision of information and advisory services, all relating to the aforesaid services.
	Class 36:	Medical and healthcare insurance; guarantee and insurance services all relating to pharmaceutical, medical and hearing aid products; residential and/or nursing home care insurance; accident and disability insurance; tax and financial planning services; banking and direct debit services.
	Class 37:	Repair services relating to hearing aids and for apparatus and instruments relating to hearing.
	Class 40:	Custom, manufacturing and custom assembly services relating to hearing aids and hearing related apparatus, instruments and accessories.
	Class 41:	Education and training services all for professionals carrying out hearing testing and other healthcare professionals; arranging and conducting conferences and seminars and the provision of information all relating to the aforesaid services.
	Class 42:	Information technology advice and assistance; computer programming Services; computer software design; installation of computer software; quality control services; creating and maintaining websites for others; computer systems analysis; updating of computer software; rental of computer software and hardware; packaging design services; research and development for professionals carrying out hearing testing and other healthcare professionals; consultancy and advisory services all relating to the aforesaid services.
	Class 44:	Hearing aid services; hearing aid services, namely, hearing tests, fitting of hearing aids, identifying and analysing hearing difficulties, prescribing hearing apparatus and instruments; consultancy and advisory services all relating to hearing, hearing aids and hearing apparatus and instruments.

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

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.

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 23/04/2012. The revocation request was submitted on 03/07/2018. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 04/07/2018, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of two months to submit evidence of use of the EUTM for all the goods and services for which it is registered.

On 04/09/2018 the EUTM proprietor requested an extension of the above mentioned time limit which was duly granted by the Office on 05/09/2018.

On 06/11/2018 the EUTM proprietor declared the total surrender of the contested EUTM. The examination of the surrender by the Office was suspended pending the outcome of the present cancellation proceedings.

On 14/11/2018 the Cancellation Division informed the applicant of the total surrender and asked the applicant to inform the Office whether or not the cancellation action should be maintained.

On 17/12/2018 the applicant expressed its wish to continue with the present proceedings and to obtain a decision on the substance.

On 18/12/2018 the Cancellation Division decided to continue the present proceedings and gave to the EUTM proprietor another time limit of two months to submit evidence of use of the EUTM for all the goods and services for which it is registered.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the specified time limit.

According to Article 19(1) EUTMDR, if the proprietor of the European Union trade mark does not submit proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 62(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 03/07/2018.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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 costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Cindy BAREL

Graziella MEDDE

Arkadiusz GORNY

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 submitted in writing at the Office within two months of the date of notification of this decision. It must be submitted 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 submitted 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.