CANCELLATION No 15 447 C (REVOCATION)
The Light Co. Ltd., Barbizon 71 / #102, Sendagaya 2-1-9, Tokyo-to, Shibuya-ku 151-0051, Japan (applicant), represented by Boult Wade Tennant LLP, Verulam Gardens 70 Gray's Inn Road, London Camden WC1X 8BT, United Kingdom (professional representative)
a g a i n s t
Tart Optical Enterprises LLC, 23679 Calabasas Road #753, 91302 Calabasas, California, The United States of America (EUTM proprietor), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).
On 07/03/2019, the Cancellation Division takes the following
1. The application for revocation is partially upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 10 625 606 are revoked as from 09/08/2017 for some of the contested goods, namely:
Class 9: Cases for eyeglasses and sunglasses; chains for eyeglasses; eyeglass cords; eyeglass retaining cords.
3. The European Union trade mark remains registered for all the remaining goods, namely:
Class 9: Eyeglass frames; frames for spectacles and sunglasses; optical frames; spectacle frames.
4. Each party bears its own costs.
The applicant filed a request for revocation of European Union trade mark registration No 10 625 606 ‘TART OPTICAL’. The request is directed against all the goods covered by the EUTM, namely
Class 9: Cases for eyeglasses and sunglasses; chains for eyeglasses; eyeglass cords; eyeglass frames; eyeglass retaining cords; frames for spectacles and sunglasses; optical frames; spectacle frames.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant claims that the EUTM has not been put to genuine use for a continuous period of five years.
The EUTM proprietor argues that there is no ground to revoke the EUTM and provides evidence to prove the use of the mark in the European Union between 2012 and 2017 which will be listed in detail below in the following section.
The applicant requested an extension of time to file observations on the proof of genuine use provided by the EUTM proprietor but, in the end did not submit any observations.
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 20/07/2012. The revocation request was filed on 09/08/2017. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 09/08/2012 to 08/08/2017 inclusive, for the contested goods listed in the section ‘Reasons’ above.
On 22/12/2017 the EUTM proprietor submitted evidence as proof of use.
The evidence to be taken into account is the following:
Items 1-5: undated website extracts depicting various spectacles frames :
Item 1 : undated extract from a website on which is reproduced the mark together with eyeglass frames referenced with the mark , such as