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

 

 

DECISION

 

1.	The application for revocation is partially upheld.

 

2.	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:   Class 18: Bags for campers; cases [except pencils cases].

 

3.	The European Union trade mark remains registered for all the remaining goods, namely:   Class 18: Bags; sports bags, travelling bags, rucksacks; pencils cases.

4.	Each party bears its own costs.

 

REASONS

 

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.

SUMMARY OF THE PARTIES’ ARGUMENTS

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.

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 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.

 

On 14/08/2019 the  EUTM proprietor submitted the following evidence as proof of use:

 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) ;

- sports sack , and sport bags (under the name Slash, Rover) ;

- shopper bags (under the names tote bag and carry all bag)

- shoulder bags (under the name Evidence) ;

- duffle bags ;

- pencil cases ;

- wallets ;

- laptop sleeves ;

- bags for boards ;

- bags for travel (under the name Team) ;

- toiletry bag (under the name Travel kit) ;

- hip bags (catalogue dated 2019 only) .

 Item 5: printout of the proprietor’s website www.nitrobags.com showing use of the sign in relation to rucksacks, duffle bags, sports bags, wallets, and hip bags.

After expiry of the time limit, on 19/02/2020 and 21/09/2020, the EUTM proprietor submitted additional 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 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 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-8209;415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-8209;621/11 P, Fishbone, EU:C:2013:484, § 36). The additional evidence submitted on 19/02/2020 merely strengthens and clarifies the evidence submitted initially (especially the affidavit provided as item 1) as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit. Moreover, the applicant was given the opportunity to comment on these documents.

As a consequence, 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 19/02/2020, namely the following:

 Item 6: Excerpt of the commercial register of the company NITRO AG showing that the signatory of the affidavit, Mr. Johannes Späth, its managing director was a member of the administrative management board (Mitglied des Verwaltungsrates) since 2013 and that since 2016 he was authorized for individual signature (Einzelunterschrift).

 Item 7: Invoices dated 2013 - 2015 showing distribution of advertising material (such as catalogues posters, displays or stickers) to the proprietor’s distributors in the European Union, namely to Austria, France, Italy, The Netherlands, Spain, Sweden, Czech Republic, Poland, Finland, Germany, Norway, Hungary.

 Item 8: Screenshot of the website www.nitrousa.com dated 19/02/2020 showing that the website is available in several languages (German, French, Spanish, Italian, Czech and Russian).

However, as regard the evidence submitted with the EUTM proprietor’s final observations on 21/09/2020, the Cancellation Division notes that the documents provided would not change the outcome of the present decision as they contain the same information as exposed in the proprietor’s previous observations and reiterated in its final observations.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Cancellation Division therefore decides not to take into account the last batch of evidence submitted by the proprietor and to limit the examination to the documents provided within the time limit and the additional evidence submitted on 19/02/2020.

Preliminary remarks

The applicant criticised the probative value of the evidence provided by the proprietor claiming that it originates from the proprietor itself.

However, there is no limit on the methods and means of proving genuine use of a mark (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

 

As far as the affidavit is concerned (item 1), Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(1) 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, 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 declaration are supported by the other items of evidence.

The applicant also argued 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 EUTM 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.

 

ASSESSMENT OF GENUINE USE – FACTORS

 

Time and place of use

The evidence must show that the contested EUTM has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR) within the relevant period, namely from 23/04/2014 until 22/04/2019.

Most of the evidence is dated within the relevant period and shows use of the sign in various EU countries. In particular, the invoices show use in Germany, Sweden, Italy, France and Austria.

Consequently, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning time and 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 ‘use 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 applicant considered that the commercial volume of use is low and that it should not be considered as sufficient to establish genuine use of the trade mark.

However, the proprietor provided invoices dated regularly during the relevant period, addressed to customers in different Member States. The proprietor is not required to provide evidence for the whole period; in the present case it submitted sufficient invoices to consider that they constitute a sample illustrating the sales made during the relevant period, at least in relation to part of the goods.

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, if it can be deduced from the material submitted that the proprietor has seriously tried to acquire a commercial position in the relevant market.

In the present case, considering overall the invoices dated regurlaly during the relevant period and the catalogues corroborating these invoices, it is considered that 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.

The applicant also claimed that only internal use has been demonstrated. However, the proprietor provided catalogues, which are by definition aimed to final consumers, and extract from its website showing that goods are offered to the public. Moreover, contrary to the applicant’s argumentation, it is possible to identify precisely which goods have been sold as the invoices contained the names of the goods which correspond to the ones in the catalogues. Moreover, the proprietor provided evidence showing distribution of advertising materials.

The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38). Outward use does not necessarily imply use aimed at end consumers. For instance, the relevant evidence can validly stem from an intermediary, whose activity consists of identifying professional purchasers, such as distribution companies, to which the intermediary sells products it has had manufactured by original producers (21/11/2013, T-524/12, RECARO, EU:T:2013:604, § 25-26).

Relevant evidence can also validly come from a distribution company that forms part of a group. Distribution is a method of business organisation that is common in the course of trade and implies use of the mark that cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32).

As a consequence, considered overall, the evidence submitted by the proprietor prove sufficient length and frequency of the use of the mark at least for part of the goods, as shown below.

 

Nature of use: use as a trade mark

 

Nature of use requires, inter alia, that the contested EUTM 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 products themselves and in the catalogues, or 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 proprietor.

Consequently, the evidence does show use of the sign 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 EUTM. 

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 ‘NITRO’.

Evidence and notably the catalogues show use of the sign as follows: or , and or as a word mark ‘NITRO’ in the invoices.

The additional verbal elements ‘backpacks’ and ‘quality made’, ‘MFG CO.’ are indications on the characteristics of the goods or perceived as the name of the company (‘MFG CO.’) and are therefore devoid of distinctive character.

As regards the depiction of the sign in slightly stylised upper-case letters, and the figurative element consisting of triangles, they 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, and contrary to the applicant’s claims, the Cancellation Division considers that use is shown of the contested mark 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.

Nature of use: 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 the following goods in Class 18: bags, sports bags, travelling bags, bags for campers, rucksacks; cases; toilet bags.

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 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 sub-divisions 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)

 

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).

In the present case, it is clear from the evidence that the sign ‘NITRO’ has been used in relation to different kinds of bags, namely tote bags, shopper bags, shoulder bags, duffle bags, hip bags; sports bags, travelling bags, rucksacks belonging to the category bags in the specification of the contested trade mark. This can be inferred by the invoices which contain the designation of the goods of concern as listed and depicted in the proprietor’s catalogues.

As the applicant is not required to prove all the conceivable variations of the category of goods for which the mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Cancellation Division considers that the evidence shows genuine use of the trade mark for bags.

Evidence also shows use of the sign in relation to pencils cases, which forms an objective subcategory of the broader category cases. As a consequence, the Cancellation Division considers that the evidence also shows genuine use of the trade mark for pencils cases.

As regards the goods bags for campers, the proprietor did not submit any evidence of use.

Finally, contrary to the applicant’s claims, evidence is sufficient with respect to toilet bags. The declarations from the affidavit are supported by the pictures of the goods offered to consumers on the catalogues dated from all the relevant period (even after 2016) and by a sample of invoice dated 2015. As indicated above, 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).

Overall assessment

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:

Class 18: Bags; sports bags, travelling bags, rucksacks; pencils cases; toilet bags.

Conclusion

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

Class 18: Bags for campers; cases [except pencils cases].

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 23/04/2019.

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(3) 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

 

Frédérique SULPICE

Julie, Marie-Charlotte HAMEL

Richard BIANCHI

 

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.