CANCELLATION No C 29 544 (REVOCATION)
Karelia Tobacco Company Inc, Athinon Street, 24100 Kalamata, Greece (applicant), represented by CSY London, 10 Fetter Lane, EC4A 1BR London, United Kingdom (professional representative)
a g a i n s t
Starbuzz Tobacco, Inc., 20155 Ellipse, Foothill Ranch, California 92610, United States of America (EUTM proprietor), represented by Kuhnen & Wacker Patent- und Rechtsanwaltsbüro PartG mbB, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany (professional representative).
On 08/04/2021, the Cancellation Division takes the following
2. The EUTM proprietor’s rights in respect of European Union trade mark No 10 651 008 are revoked as from 13/11/2018 for some of the contested goods, namely for the following goods:
Class 34: Tobacco [with the exception of hookah tobacco]; smokers' articles; matches.
3. The European Union trade mark registration remains registered for all the remaining goods, namely:
Class 34: Hookah tobacco.
4. Each party bears its own costs.
The applicant filed a request for revocation of European Union trade mark No 10 651 008 ‘OCEAN MIST’ (word mark) (the EUTM). The request is directed against all of the goods covered by the EUTM, namely:
Class 34: Tobacco, smokers' articles; matches.
The applicant invoked Article 58(1)(a) EUTMR.
On 13/11/2018, the applicant claimed that the contested trade mark had not been put to genuine use in the European Union (EU) for a continuous period of five years prior to the date of this application for revocation in relation to the contested goods in Class 34. It further claimed that there were no proper reasons for non-use of the registered mark and requested the contested mark be revoked for all designated goods.
In reply, on 01/02/2019, the EUTM proprietor submitted evidence of use of the contested sign (listed and assessed below). It argued that the documents in their entirety showed genuine use in the EU for tobacco and tobacco products during the relevant period.
On 16/04/2019, the applicant claimed that the documents did not show use of the contested mark in relation to the registered goods. In particular, it argued that some documents were undated or dated outside the relevant period and should be disregarded, and claimed that evidence did not contain sufficient indications in terms of extent of use. The applicant referred notably to the catalogues and claimed that they showed use of the sign in relation to a specific flavour of shisha/hookah tobacco, which is different from tobacco in general, its substitutes and traditional pipe tobacco, as well as use in relation to goods not covered by the contested trade mark (steam stones, e-juice). Furthermore, it claimed that there was no evidence that the catalogues were actually distributed in the EU to consumers.
It further argued that the invoices only contained indications of weight and not price. Additionally, invoices mainly referred to the United Kingdom market, and only a few related to other countries (Estonia, Germany, Lithuania, Poland and Spain). Moreover, sales in relation to Andorra had to be disregarded as they were outside the EU. Therefore, the invoices were not sufficient to prove genuine use for the EU, and the extent of sales was not sufficient considering the global value of the tobacco market in the EU and the estimated number of tobacco consumers in the relevant territory. As regards the YouTube screenshots, they had to also be disregarded as it was not clear which audience they targeted and the date of the number of views was after the end of the relevant period.
The applicant also argued that shisha tobacco was different from traditional tobacco covered by the contested mark: it is designed for use specifically with hookahs and is not compatible with other tobacco pipes or cigarettes; it is produced by a different manufacturing process and with different ingredients. The applicant referred to a United States Food and Drug administration article in support of its claims. It concluded that if use were to be considered sufficiently demonstrated, it could only be for the category of goods corresponding to the specific use demonstrated, namely only for shisha tobacco.
On 29/08/2019, the EUTM proprietor replied to the applicant’s comments on the evidence of use. In particular, it pointed out that an overall assessment should be carried out and that submitted evidence was sufficient in terms of extent of use, and use did not need to be quantitatively significant to be deemed genuine and should take into account the characteristics of the goods. The EUTM proprietor sold products worldwide including in the EU market. ‘Citrus Mist’ was one of numerous flavours of tobacco offered by the EUTM proprietor as part of the ‘MIST-’ series of trade marks, registered and used for other specific flavours. Invoices showed that products ‘Citrus Mist’ were sold at least from 2014 to 2017 and deliveries were made to customers in the EU (UK, France, Italy, Poland, Spain Germany and Austria). Therefore, the EUTM proprietor was not required to provide an affidavit or information concerning turnover resulting from sales of goods under the contested sign.
In support of its arguments, the EUTM proprietor submitted additional documents (listed below). It indicated that a run of 10 000 catalogues were printed and distributed to consumers at trade fairs. It also provided declarations from distributors in Spain and the United Kingdom, and pictures of its presence in trade fairs. Finally, YouTube videos, published within the relevant period, were submitted to support the proof of availability of the EUTM proprietor’s products on the market.
As regard the use in relation to the relevant goods, the EUTM proprietor claimed that the tobacco sold under the sign ‘Citrus Mist’ fell under the product categories shisha tobacco, pipe tobacco and smocking tobacco. It referred to a judgment from the German Federal Court of Justice according to which shisha tobacco was a special kind of pipe tobacco (26/07/2017, 1 StR 19/16).
On 13/01/2020, the applicant reiterated its previous observations and claimed that evidence did show some use in relation to a very specific type of tobacco: a specific flavour of shisha tobacco. This specific use was acknowledged by the proprietor’s own corporate literature where it stated that it was ‘the world market leader of the hookah tobacco industry’. However, such use was limited and insufficient to establish genuine use of the contested sign.
On 18/05/2020, the EUTM proprietor replied to the applicant and argued that use of the contested sign should not be limited to shisha tobacco but should be accepted for the whole category of tobacco as the proprietor of a trade mark was not obliged to prove use of the mark in relation to all conceivable variations of the category of goods for which it was registered. In this regard, the EUTM proprietor referred to previous Office’s decisions.
On 03/07/2020, the Office informed the parties that it considered the adversarial part of the proceedings closed. However, on 15/07/2020, the cancellation applicant requested an additional round of observations to reply to the EUTM proprietor’s last arguments and the Office accepted this request by letter dated 25/07/2020 sent to both parties. The applicant was given a new time limit, which was extended upon its request until 29/11/2020.
On 26/11/2020, the applicant claimed that it disagreed with the EUTM proprietor’s comments and specifically did not consider that the contested sign had been used in relation to the broad category tobacco. It referred to the case of 14/07/2005, T‑126/03, Aladin, EU:T:2005:288, according to which the idea of appropriate subcategories was assessed from the perspective of the relevant public and its perception of the goods. In the context of tobacco goods, the applicant considered that shisha tobacco constituted a coherent subcategory within the broad category of tobacco, and referred to a Cancellation case (10/06/2020, 34 161 C) where the contested EUTM had been registered for, inter alia, tobacco and the Cancellation Division had found that the use for hookah tobacco fell under the broad category of tobacco.
On 11/12/2020, the EUTM proprietor reiterated its previous submissions and, notably, that evidence should be assessed overall and that the catalogues were printed in the United States (US) because the EUTM proprietor has its headquarters in the US. However, the catalogues were distributed in the relevant territory directly at trade fairs within the EU. The EUTM proprietor concluded that the evidence did show that tobacco was sold under the contested trade mark and asked the Office to close the adversarial stage of the proceedings and render a decision on the basis of the observations and evidence provided.
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. Pursuant to Article 198 EUTMR, the same applies to international registrations as far as validity in the European Union is concerned.
According to Article 182 EUTMR, unless otherwise specified, both the EUTMR and the EUTMIR apply to applications for international registrations. As regards the application of Article 58(1) EUTMR to international registrations designating the Union, Article 203 EUTMR establishes that the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark must be put to genuine use in the Union.
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 and 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 EU, or submit proper reasons for non-use.
In the present case, the EUTM was registered on 28/06/2012. The revocation request was filed on 13/11/2018. 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 13/11/2013 to 12/11/2018 inclusive, for the contested goods listed in the section ‘Reasons’ above.
Exhibits 1 and 2: images of the product packaging displaying the mark ‘OCEAN MIST’: and printout from the websites www.shopstarbuzz.com, dated 28/01/2019; it shows the product Starbuzz Tobacco ‘OCEAN MIST’ exotic flavour for sale.
Exhibits 3 to 6: extracts of four catalogues for the EUTM proprietor’s products, Starbuzz Tobacco, dated 2015-2018; they show images of a large variety of tobacco products, including flavoured hookah tobacco, displaying the sign ‘OCEAN MIST’ (as in exhibits 1 and 2); the EUTM proprietor is presented as a leader in the hookah tobacco industry, offering more than 80 exotic flavours of hookah tobacco, among them the ‘OCEAN MIST’ flavour.
The catalogues show the following product displaying the name ‘OCEAN MIST’:
- flavoured hookah tobacco .
Exhibits 7 to 11: a large selection of invoices dated 2013-2018; they are addressed to clients in Germany, Spain and the United Kingdom. They refer, inter alia, to products ‘EXOTIC OCEAN MIST’ followed by an indication /g or /kg; some products are indicated as ‘EXOTIC OCEAN MIST WATER PIPE TOBACCO’: the prices are not visible but the quantities are significant (several hundreds) during the whole period.
On 29/08/2019, after the deadline, the EUTM proprietor submitted other documents as proof of use:
Exhibit 12: extract of the products catalogue of 2015 in which no mention of ‘OCEAN MIST’ is made;
Exhibit 13: invoices from printing companies regarding the EUTM proprietor’s catalogues; dated between 2013 and 2016 and referring to print run orders of 10 000 catalogues;
Exhibit 14: declaration from an official distributor in Spain, dated 01/07/2019; the distributor stated that it had received catalogues from 2013 to 2018 and ordered, inter alia, ‘OCEAN MIST’ tobacco from the EUTM proprietor and sold the products to customers in the EU;
Exhibit 15: declaration from an official distributor in the United Kingdom, dated 26/06/2019; according to this statement, the distributor received the EUTM proprietor’s catalogues from 2013 to 2018 and had ordered tobacco, inter alia ‘OCEAN MIST’ tobacco, and sold these products to customers in the United Kingdom and in the EU;
Exhibits 16 to 19: invoices and pictures of the EUTM proprietor’s participation at fairs in 2014, 2015, 2016 and 2018;
Exhibit 20: general information on the international InterTabac fair, Dortmund (the world’s largest trade fair for tobacco and smoker supplies, held in Germany since 1978); 12 500 trade visitors attended in 2018;
Exhibit 21: general information on EuroTab, Krakow (largest pan-European tobacco-related retail and distribution show held in Poland);
Exhibit 22: general information on HookahFair, Frankfurt (held in Germany since 2013);
Exhibit 23: general information on TabEXPO, London (held in various countries in the EU, claimed to be the tobacco industry’s leading trade exhibition since the early 1990s);
Exhibit 24: invoices and pictures of the EUTM proprietor’s participation at trade fairs between 2013 and 2019: EUROTAB (in 2013, 2014, 2015, 2016, 2017), Hookah fair (2016, 2017, 2018, 2019), TABEXPO (2015).
On belated evidence
Even though, according to Article 19(1) EUTMDR, the EUTM proprietor has to submit proof of use within a time limit set by the Office, Article 10(7) EUTMDR (applicable to cancellation proceeding by virtue of Article 19(1) EUTMDR) expressly invites the Office to exercise its discretionary power if relevant evidence was submitted in time and, after the expiry of the time limit, supplementary evidence was filed.
According to Article 10(7) EUTMDR, where, after the expiry of the time limit set by the Office, indications or evidence is filed that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of the exercise of the discretion conferred on it by Article 95(2) EUTMR. When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.
In this regard, the Cancellation Division considers that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.
The additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit. The fact that the applicant disputed the initial evidence submitted by the EUTM proprietor justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36). Moreover, the applicant was given the opportunity to comment on the belated evidence.
For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division therefore decides to take into account the additional evidence submitted on 29/08/2019.
On evidence related to the United Kingdom
The EUTM proprietor has submitted, inter alia, evidence relating to the United Kingdom with a view to demonstrating use of the contested mark. The evidence relates to a period prior to 01/01/2021.
On 01/02/2020, the United Kingdom withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the United Kingdom. Therefore, use in the United Kingdom prior to the end of the transition period constituted use ‘in the European Union’. Consequently, the evidence relating to the United Kingdom and to a period prior to 01/01/2021 is relevant with a view to maintaining rights in the European Union and will be taken into account.
On the applicant’s arguments
The applicant argues that some documents are dated outside the relevant period and that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the international registration is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
In addition, some of the evidence of use filed by the EUTM proprietor originates from other companies, namely its distributors. According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Therefore, the fact that the EUTM proprietor submitted evidence of use of its mark by third parties implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Consequently, it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was with its consent.
To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by the other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself. Moreover, the EUTM proprietor provided declarations of two of the distributors that appear as issuing some of the invoices, which corroborates that the EUTM proprietor gave consent for the use by these companies.
As regards the declarations in exhibits 14 and 15, account must be taken of the fact that Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.
However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declarations are supported by the other items of evidence.
Assessment of genuine use — factors
Time of use
Most of the evidence is dated within the relevant period (such as the invoices) or refers to events held during the relevant period (such as the declarations from distributors).
Some evidence is dated outside the relevant period, such as printouts from websites (exhibit 2). 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 contested 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 use outside the relevant period confirms use of the EUTM proprietor’s mark within the relevant time frame.
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 international registration has been genuinely used in the European Union (Article 18(1) EUTMR and Article 58(1)(a) EUTMR).
As detailed above in the list of the documents, the evidence shows use in several EU countries, in particular in Germany, Spain and the United Kingdom. This can be inferred notably from the invoices and the addresses indicated within, and from the website extensions (.de and .uk) and the currency indicated, namely GBP and EUR.
Therefore, the Cancellation Division deems that the documents submitted are sufficient proof in terms of place of use.
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 provision requiring that the 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).
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 condition relating to genuine use of the mark requires that the mark be used publicly and outwardly for the purpose of ensuring an outlet for the goods or services which it represents (12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68, § 39).
The EUTM proprietor provided invoices dated regularly throughout the relevant period and addressed to customers in several Member States, as well as catalogues providing information on the relevant goods and dated during the relevant period. The EUTM proprietor also submitted written statements from its distributors in Spain and the United Kingdom confirming sales to their customers. Considered as a whole, these documents prove the length and frequency of the use of the mark.
The applicant claims that the EUTM proprietor did not provide sufficient information on the relevant market to determine the extent of use of the contested sign. Furthermore, in the absence of an indication of the prices in the invoices and of any other financial documents, it is not possible to determine the volume of sales.
However, as indicated in the list of documents above, although the prices and names of the customers are blanked out, the quantities are visible and they are significant (some invoices referring to more than 200 kg of products).
As pointed out by the applicant, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the EUTM proprietor has seriously tried to acquire a commercial position in the relevant market. In the present case, considering the market for tobacco products, the commercial volume of use is sufficiently significant and cannot be considered as simply token use. It is sufficient to submit evidence that proves that the minimum threshold for a finding of genuine use has been passed.
Considering all the above, the Cancellation Division considers that the evidence shows a real commercial exploitation of the contested EUTM that is not merely token and is of a sufficient extent and constancy in relation to maintaining or creating a market share for the goods designated by the mark.
As a consequence, considering the length of the period of use, the frequency of use and the territorial scope, the extent of use has been sufficiently demonstrated, at least in relation to part of the registered goods.
Nature of use requires, inter alia, that the contested international registration 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.
The proof of use must establish a clear link between the use of the mark and the relevant goods or services. It is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T‑105/13, TrinkFix, EU:T:2014:1070, § 28-38). A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.
It is clear from the evidence that the contested sign has been used in order to identify goods sold on the market to the public (displayed on the packaging of the products and in the catalogues, websites, and indicated in the list of goods in the invoices), allowing the public to make a clear link between the goods sold and the EUTM proprietor.
Consequently, the evidence does show use of the sign as a trade mark.
‘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 international registration.
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).
The contested sign is the word mark ‘OCEAN MIST’.
Most of the documents refer to the use of the sign in a figurative form as – sometimes depicted with the symbol ® and the name ‘STARBUZZ’, or as a word mark ‘OCEAN MIST’ in the invoices.
As a preliminary remark, the symbol ® is an informative indication that the mark is registered and is not considered part of the mark.
The element ‘STARBUZZ’ refers to the name of the EUTM proprietor. It is quite common in some market areas for goods and services to display 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 without altering the distinctive character of the registered sign (08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438,§ 34).
As regards the depiction of the sign in slightly stylised red upper-case letters, these elements are of a purely decorative nature and therefore do not materially affect the distinctive character of the sign (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 63).
Consequently, the Cancellation Division considers that use is shown of the contested EUTM in a form that does not alter its distinctive character and the evidence does show use of the sign as registered within the meaning of Article 18(1)(a) EUTMR.
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 international trade mark registration is registered.
The contested international registration is registered for tobacco, smokers' articles; matches in Class 34. However, the evidence submitted 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 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 subdivisions 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 applied by analogy)
Since consumers are searching primarily for a product or service to meet their specific needs, the purpose of the product or service in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods or services (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 29).
The contested EUTM is registered for, inter alia, tobacco. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within them.
It is clear from the evidence that the sign ‘OCEAN MIST’ has been used in relation to a specific type of tobacco, namely a flavoured tobacco to be used with a shisha or hookah tobacco. In this regard, the catalogues contain supporting information about the type of goods distributed by the EUTM proprietor, inter alia, under the sign ‘OCEAN MIST’, that is, flavoured tobacco for a shisha. These documents also present the EUTM proprietor itself as one of the leaders in the hookah tobacco industry, as pointed out by the applicant. Therefore, it is clear that no other type of tobacco has been associated with the contested sign.
Hookah tobacco refers to a specific sort of tobacco, popular especially in the Middle East, to be used with an oriental tobacco pipe (a hookah or shisha) composed of a long, flexible tube that draws the smoke through water contained in a bowl. It is often mixed with flavourings such as mint (https://www.lexico.com/definition/hookah and https://www.lexico.com/definition/shisha).
Given the purpose of the goods and taking into account their specificities in terms of method of use and public, the Cancellation Division finds that the use for hookah tobacco, which falls under the broad category of tobacco, constitutes use for the subcategory hookah tobacco, but not for the whole broader category, which encompasses unprocessed tobacco and all varieties of tobacco products, such as cigars, cigarettes, tobacco for smoking pipes, and chewing tobacco.
The EUTM proprietor correctly points out that it is not required to prove all the conceivable variations of the category of goods for which the mark is registered. However, as indicated above, evidence shows use of the sign in relation to only one specific kind of tobacco, namely flavoured tobacco to be used with a hookah/shisha, which can be clearly identified within the broader category of tobacco, while there is no evidence of use of the sign in relation to any other type of tobacco.
The EUTM proprietor referred to previous decisions of 17/12/2013, B 2 028 788, 17/12/2013 KARELIA Slims / Slims Raquel and of 29/05/2018, 13 925 C, WINCHESTER / W WINCHESTER AMERICAN BLEND to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The Cancellation Division notes that in these cases the use of the sign was demonstrated in relation to several kinds of cigarettes, and the Office considered that use in relation to several kinds of cigarettes was sufficient to demonstrate use in relation to the broader categories tobacco and processed tobacco respectively. However, there is no reason to apply the same reasoning to the relevant goods in the present proceedings, namely hookah tobacco, taking into account the clear differences in characteristics of the relevant goods, that is cigarettes compared to hookah tobacco.
As regards the remaining goods in Class 34, smokers' articles; matches, the EUTM proprietor did not submit any evidence of use of the contested EUTM for these goods nor provided any reason for non-use..
Overall assessment and conclusion
In order to examine, in a given case, whether use of the 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, nature and extent for some of the goods, namely hookah tobacco in Class 34.
Class 34: Tobacco [with the exception of hookah tobacco]; smokers' articles; matches.
The EUTM proprietor has proved genuine use for the remaining contested goods. Therefore, the application is not successful in this respect.
According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 13/11/2018.
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
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.