CANCELLATION No C 34 782 (REVOCATION)
Nitro Circus IP Holdings LP, 190 Elgin Avenue, 1-9005 George Town, Cayman Islands (applicant), represented by Rdp Röhl - Dehm & Partner, Moritzplatz 6, 86150 Augsburg, Germany (professional representative)
a g a i n s t
Nitro AG, Bösch 104, 8331 Hünenberg, Switzerland (EUTM proprietor), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative).
On 28/01/2021, the Cancellation Division takes the following
The application for revocation is partially upheld.
The EUTM proprietor’s rights in respect of European Union trade mark No 10 762 409 are revoked as from 23/04/2019 for some of the contested goods, namely:
The European Union trade mark remains registered for all the remaining goods, namely:
Each party bears its own costs.
The applicant filed a request for revocation of European Union trade mark No 10 762 409 'NITRO' (word mark) (the EUTM). The request is directed against all the goods, covered by the EUTM, namely:
Class 18: Bags, sports bags, travelling bags, bags for campers, rucksacks; cases; toilet bags.
The applicant invoked Article 58(1)(a) EUTMR.
The applicant argued that the contested EUTM had not been put in genuine use in the past five years in respect to the goods covered by the registration. Therefore, it requested the EUTM to be revoked in its entirety, or, at least, in respect to some of the registered goods.
In reply, the EUTM proprietor submitted documents as evidence of use (listed and assessed below) and claimed that they prove genuine use of the sign in relation to all the goods covered by the registration.
The applicant considered that the documents submitted by the proprietor did not prove that the contested trade mark was put to genuine use during a continuous period of five-years in relation to the registered goods. In particular, it claimed that the affidavit was of a low probative value and was not supported by sufficient evidence from independent sources as the other documents consisted of printouts from the proprietor’s own catalogues, invoices and website. Moreover, it pointed out that the website extracts submitted were from the USA website therefore not directed to the European Union.
The applicant claimed that use of the word mark for the relevant goods was not visible from the catalogues as there was no proof that the goods were designated with the word mark as registered but by a figurative sign. Such use alters the distinctive character of the trade mark and does not constitute genuine use of the contested EUTM. It also argued that the figures provided by the proprietor (whether they be turnover or profit) were too low to constitute sufficient proof of use considering that the luggage and bags market in the EU amounts to 35,339 billion EUR in 2019 according to statista (1,5 % more than in 2018). Moreover, the proprietor stopped use in relation to toilet bags in 2016 according to the affidavit. Furthermore, most of the invoices concerned internal delivery from NITRO AG to NITRO Snowboard Handel GmbH (NITRO Distributor Germany), to Frontflip Distribution AB (NITRO Distributor Sweden), to NITRO Distribution Italia s.r.l., Green Door Distribution (NITRO Distributor France) and Fun Factory Trading GmbH (NITRO Distributor Austria) (https://www.nitrousa.com/de/distributions). The applicant also argued that there was no information provided on how the circulation of the catalogues, who they were offered to, and whether they have led to any potential or actual purchases (08/03/2012, T-298/10, Biodanza, EU:T:2012:113) and no information on the visibility of the website or the traffic on the website (20/12/2011, R 1809/2010-4, SHARPMASTER / SHARP).
The proprietor replied to the applicant and argued that evidence of use had to show place, time, extent and kind of bags it is used for. It also pointed out that it is not requester from a trade mark proprietor that each element of evidence provides indications about all of these 4 aspects, but also a collection of evidence can be adequate to prove the facts (03/10/2019, T-666/18, paragraph 68, 16/11/2011, Buffalo Milke Automotive Polishing Products/HABM – Werner & Mertz, T-308/06, 17/04/2008, Ferrero Deutschland/HABM, C 108/07 P, EU:T:2015:387, paragraph 36). The bundle of evidence consisting of the affidavit, catalogues, invoices and website are suitable to show the extent (affidavit), place (invoices, affidavit), time (catalogues, affidavit) and kind of use (catalogues). The proprietor also submitted new documents in support of its claims (listed below).
The applicant refuted the proprietor’s arguments and reiterated that evidence filed was not sufficient to support the information provided in the affidavit; in particular the figures of the affidavit did not correspond or align with the figures and products in the invoices. It also claimed that there was no information on the ability of the person signing the affidavit and the figures could not be trusted as he is an employee of the proprietor and a member of the management board. It claimed again that catalogues did not show use of the sign as registered but only as figurative signs. As regard the invoices in relation to the catalogues distribution, they were dated 2013-2015 but nothing refered to 2016-2019. Therefore there was no sufficient proof that these catalogues influenced the customers and were used by customers during the relevant period. Finally, as regard the website’s print-out, it is not in itself sufficient proof of use, especially if there is for example no complementary information as to the actual use of the Internet site by potential and relevant consumers, and the invoices did not contain concrete information on the products of concern. Therefore, just the existence of a website in different languages is not sufficient proof of use (20/12/2011, R 1809/2010-4, SHARPMASTER / SHARP). The applicant concluded that there was no evidence in relation to some of the goods, namely rucksack, bags for campers and cases. Regarding the other goods bags, sports bags, and travelling bags there was insufficient evidence of use, since it is especially unclear if the word mark was used and how intense the use was.
In its final observations, the proprietor replied to the applicant and reiterated that evidence was sufficient to demonstrate genuine use of the contested sign when considered overall. In particular it argued that the invoices refered to the relevant goods, namely ‘bags, weekenders, sports sacks, wallets, pencil case, travel kit, light sack, duffle bag, daypacker, tote bag, hip bag, evidence bag, carry-all bag’. Therefore, these invoices show which kind of bags had been purchased by the consumers in the different countries, as showed in the catalogues. Finally, it pointed out that the serial invoice numbers showed that these were only examples of invoices that had been sent to the consumers.
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 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 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 27/08/2012. The revocation request was filed on 23/04/2019. 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 23/04/2014 until 22/04/2019 inclusive, for the contested goods listed in the section ‘Reasons’ above.
Item 1: Affidavit dated 08/07/2019 from the managing director of NITRO AG stating that the contested EUTM ‘NITRO’ had been used in the European Union in relation with bags, sports bags, travelling bags, cases and toilet bags. It also gives turnover figures but without indication of the currency.
Item 2: invoices addressed from NITRO SNOWBOARD CO. / NITRO AG to Nitro Snowboards Handels GmbH & Co. KG dated 2014 – 2019 (one per year). The invoices refer to ‘NITRO’ goods under the following description: pencil cases, wallet, Urban, Venice, NYC, Backwoods, Cypress, Weekender, Stash, Aerial, Chase, Hero, Slash, Light Sack, board bag, sports sack, Rover, duffle bag, Scrambler, Daypacker, Superhero, Raincover, hip bag, tote bag, carry-All bag, Evidence bag, Lection, Axis, Team, Zoom, Lock, Bandit – whose names can be linked to the goods depicted in the catalogues (see below items 4).
Items 3a to 3d: invoices addressed from NITRO SNOWBOARD CO. / NITRO AG to companies in the European Union namely Sweden (Frontflip AB), Italy (Nitro Distribution Italia s.r.l.), France (Green Door Distribution) and Austria (Fun Factory Trading GmbH). They are dated 2014 – 2019 (one per year) and refer to ‘NITRO’ goods as listed above (item 2) and depicted in the catalogues (item 4). In addition one invoice dated 2015 addressed to the French distributor concern Travel Kits.
Items 4a to 4g: catalogues dated 2014-2019 presenting the collections ‘NITRO BAG’. The sign ‘NITRO’ is used in relation to wallets and various kinds of bags, namely:
- rucksacks /backpacks (under the name NYC, Venice, Urban, Weekender, Daypacker, Scrambler, Backwoods, Cypress, Aerial) ;
- school bags (under the name Hero, Superhero, Chase, Stash, Lock, Bandit, Zoom, Lection, Axis)