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

DECISION

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.

REASONS

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 ;

• Item 2: eyeglass frames referenced under the name ;

• Item 3: eyeglass frames referenced under the name ;

• Item 4: eyeglass frames referenced under the name

• Item 5: eyeglass frames referenced under the name

• Items 6-18: copies of wire transfers and invoices dated between 2012 and 2017 in relation to eyewear frames goods in various EU countries (Austria, France, Germany, Greece, Spain and the United Kingdom) for a total of USD 199,324 according to the EUTM proprietor;

These items consist of 13 invoices : one dated 2012, two dated 2013, three dated 2014, three dated 2015, two dated 2016, and two dated 2017; each of them are for a total which ranges between USD 8,400 (minimum) and USD 28,340 (maximum).

The goods are listed as below in the transfers:

And in the corresponding invoices:

• Item 19: two advertisements dated 26-29/09/2013 announcing ‘TART OPTICAL AT SILMO’ with the depiction of eyeglass frames – which states ‘we will unveil TART new optical and sun collections at SILMO, Paris Nord Villepinte’ and ‘we are happy to announce the official relaunch of the legendary optical brand TART’; the applicant also provides pictures which it claims were taken of the TART’s stand during the trade show at Silmo in Paris in 2013;

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, that is, from 09/08/2012 to 08/08/2017 inclusive.

Part of the evidence is undated (items 1 to 5). However, the invoices and the advertisements are dated within the relevant period. Therefore, 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.

The invoices show that the goods were billed from the United States to various European Union Member States, namely to Austria, France, Germany, Greece, Spain and the United Kingdom. In this regard it is noted that although the currency mentioned is USD the invoices for the sales of products are billed to consumers with addresses in a number of countries throughout the EU. 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 view of the number of marks registered and potential conflicts between them, it is essential that the rights conferred by a mark for a given class of goods or services are maintained only where that mark has been used on the market for goods or services belonging to that class (15/01/2009, C‑495/07, Wellness, EU:C:2009:10, § 19).

The evidence shows that the use made of the sign is to distinguish the origin of the goods of the EUTM proprietor and as such, it is use as a trade mark.

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).

It is appropriate to consider whether the form in which the contested trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the contested EUTM have the same distinctive character. First, the distinctive character of the contested EUTM must be clarified. Then, it must be considered whether or not the mark as used alters this distinctive character.

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).

The contested mark is the word mark ‘TART OPTICAL’. The catalogues extracted from websites (items 1 to 5) show use of sign in a slight figurative manner and together with the name ‘ARNEL’.

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.

There is no legal precept in the European Union trade mark system that obliges the
EUTM proprietor to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 58 EUTMR. 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). Therefore, several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34); In the present case the sign ‘TART OPTICAL’ is followed by other indications such as ‘ARNEL’ in the invoices or catalogues and this may still be suitable to support genuine use of the registered trade mark (judgment of 06/11/2014, T-463/12, MB, EU:T:2014:935, § 44-45). Many companies use a house mark in combination with another sign to denote different product ranges or lines of goods. ‘TART OPTICAL’ would indicate the house mark and for example, ‘ARNEL’ the sign used to distinguish a line or range of goods.

In fact, the catalogues in exhibits 1-5 show use of the house mark ‘TART OPTICAL’ followed by a number of different signs to indicate different ranges, but in each case the goods also bear the sign ‘TART OPTICAL’. Also the invoices (items 6-18) and advertisements (item 19) indicate that the goods being sold are referenced with the sign ‘TART OPTICAL’.As such, the evidence indicates that the sign ‘TART OPTICAL’ is being used as the house mark independently of the other signs which are used to denote different product ranges. As such, this use does not alter the distinctive character of the sign as registered.

Therefore, the Cancellation Division considers that the use of the contested sign in the evidence is sufficient to prove the nature of use of the sign as registered.

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.

The invoices themselves are for relatively modest amounts, ranging from USD 8,400 (minimum) to USD 28,340 (maximum). However, the invoices are dated for every year throughout the relevant time period, and it is noted that the invoice numbers are not in sequential order, so it would appear that they are only examples of goods sold during the relevant time period. In revocation proceedings the EUTM proprietor does not have to prove commercial success of its brand but only that it has put the sign to a genuine use on the market with the intention of carving out a part of the commercial sector for its goods, and the invoices provided do show genuine sales throughout the relevant period. Moreover, although the evidence indicates a relatively low commercial volume of use, it does shows use of the EUTM in several member states, namely, Austria, France, Germany, Greece, Spain and the United Kingdom. Therefore, the evidence of use provides sufficient indications of the extent of use, at least in so far as it relates to some of the contested goods.

Use in relation to the registered goods

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:

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.

However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods 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.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 9: Eyeglass frames; frames for spectacles and sunglasses; optical frames; spectacle frames.

In particular, the EUTM proprietor has submitted a number of invoices for the sales of different types of glasses or spectacles frames and the website extracts show different ranges of eyeglass frames. Therefore, this evidence is sufficient to prove use of the above mentioned goods.

However, there was insufficient proof to show that the contested EUTM has been used in relation to the remaining goods. The invoices do mention the goods ‘leather case’ and ‘cleaning clothes’ or an indication after the specification of different types of frames ‘all with cases and cleaning clothes’. As to cleaning clothes, they are not covered by the EUTM. As to cases, the Cancellation Division notes that in the invoices the amounts of these goods sold corresponds exactly with the amount of glasses or frames sold in the same invoice and they are charged at 0 USD. Therefore, it is clear that these goods themselves are not being sold, but that they merely accompany the other goods as a holder. The EUTM proprietor is not selling these goods with the intention of carving out a part of the market in relation to these goods, but merely including them as a bonus in the sale of its glasses. Therefore, the evidence is insufficient to prove the use of these goods and the EUTM must be revoked for the goods cases for eyeglasses and sunglasses.

Finally, the EUTM proprietor has not submitted any evidence whatsoever in relation to the remaining contested goods. Therefore, the EUTM must be revoked also in relation to these goods: chains for eyeglasses; eyeglass cords; eyeglass retaining cords.

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).

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated in terms of the place, time, nature and extent of use in connection with some of the goods for which the EUTM is registered as specified above, and in a form that complies with the conditions of Article 18(1)(a) EUTMR.

Conclusion

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

Class 9: Cases for eyeglasses and sunglasses; chains for eyeglasses; eyeglass cords; eyeglass retaining cords.

The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect and the EUTM remains valid and registered in relation to these goods.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 09/08/2017.

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

Nicole CLARKE

Julie, Marie-Charlotte HAMEL

Jessica LEWIS

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.