CANCELLATION No 16 722 C (REVOCATION)
Airbnb, Inc., 888 Brannan Street, 4th Floor, San Francisco, California 94103, United States of America (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)
a g a i n s t
Trustsquare – Sociedade Unipessoal, Lda., Largo Monsenhor Pereira dos Reis, n.º 3, Vermelha, 2550 - 531 Cadaval, Portugal (EUTM proprietor), represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisboa, Portugal (professional representative).
On 05/04/2019, the Cancellation Division takes the following
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 10 907 509 are revoked in their entirety as from 17/10/2017.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed a request for revocation of European Union trade mark registration No 10 907 509, (figurative mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:
Class 35: Presentation of companies and their goods and services on the Internet; publicity columns preparation; dissemination of advertising matter; dissemination of advertising, marketing and publicity materials; direct mail advertising; operation of customer loyalty and incentive schemes; provision of business information via computers; marketing; arranging and conducting of promotional and marketing events; publication of advertising material on-line; advertising; advertising, promotional and public relations services.
Class 39: Providing information about travel, via the Internet; arranging of city sightseeing tours and other sightseeing excursions; arranging of day trips, holiday travel and sightseeing tours; arranging of sightseeing tours and excursions; arranging of excursions, day trips and sightseeing tours; organization of tour guide services; arranging of transport and travel; arranging and booking of tours; arranging and booking of travel; planning, arranging and booking of travel; planning, arranging and booking of travel by electronic means; providing information relating to travel and transport, via electronic means; travel consultancy and information services; on-line trip and travel reservation services.
Class 44: Consultancy relating to farming; consultancy relating to horticulture; cultivation of plants; aerial seeding; providing information about agriculture, horticulture, and forestry services; tree planting, farming, horticulture, and landscape design services; health spa services for health and wellness of the body and spirit incorporating massage, facial and body treatment services, and cosmetic body care services; health spa services for health and wellness of the body and spirit offered at a health resort; plant nurseries.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argued that the EUTM was not put to genuine use in the European Union for a continuous period of five years in connection with all the services for which it was registered.
The EUTM proprietor submitted some evidence of use (listed below).
The applicant argued that the evidence submitted is insufficient to show genuine use of the contested mark for all the relevant services, in particular taking into account that the posts from the ‘Facebook’ page (annex 4) only show that a communication with ‘Facebook’ users has taken place and the same is true in relation to the printouts from the websites and the mobile app. of the EUTM proprietor (annex 5).
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 16/10/2012. The revocation request was filed on 17/10/2017. 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 17/10/2012 to 16/10/2017 inclusive, for the contested services listed above.
On 12/03/2018, the EUTM proprietor submitted the following evidence as proof of use:
Annex 1: copy of the application form for funding in relation to ‘Portugal 2020’, a funding programme established between the Portuguese Government and the European Commission under the ‘Europa 2020 Strategy’, filed by Quinta do Craveiral – Turismo da Naturaleza, S.A., a company held by the EUTM proprietor, together with a partial translation into English. The project concerns the creation of a nature/rural tourism resort (initial date of activity given as 21/04/2015) named Quinta do Craveiral exploited under the trade mark ‘Belong Staying & Feeling’. The trade marks ‘Belong’, ‘Belong to Nature’ and ‘Belong Growing & Tasting’ are to be used in relation to the exploitation of the resort (in relation to leisure activities, organic vegetable gardens and organic food restaurants).
Annex 2: documents concerning the sponsorship of a Portuguese basketball team (Lusitânia dos Açores), showing some basketball players wearing a T-shirt bearing the figurative sign . Some pages are dated 16/08/2017 and 05/02/2017.
Annex 3: statistics (from 25/02/2016 to 05/03/2018) and the post history of the ‘Facebook’ page www.facebook.com/Belongtonature (dated 2013-2018).
Annex 4: printouts of some posts from the ‘Facebook’ page www.facebook.com/Belongtonature used to advertise and promote the EUTM proprietor’s activities in general and in connection with the Quinta do Craveiral resort (exploited under the trade mark ‘Belong Staying & Feeling’) and the organic food products (sold under the trade mark ‘Belong Growing & Tasting’). The sign is depicted on the ‘Facebook’ pages. According to the EUTM proprietor, the ‘Facebook’ page was launched in October 2013 and has 43.000 followers. The printouts are dated 09/03/2018.
Annex 5: printouts from the website www.belong.pt and from the mobile app. managed by the EUTM proprietor. They depict, inter alia, the sign .
Annex 6: printouts from www.dns.pt in relation to the domain names belong.pt, belongtonature.pt both registered on 22/05/2012 (expiry date 21/05/2018) and belonggrowingandtasting.pt registered on 23/06/2015 (expiry date 22/06/2018).
Assessment of genuine use – factors
Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22).
The indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the EUTM proprietor’s trade mark for the relevant goods and services.
These requirements for proof of use are cumulative (05/10/2010, T‑92/09, Strategi, EU:T:2010:424, § 43). This means that the proprietor is obliged not only to indicate but also to prove each of these requirements.
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 (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).
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 smaller the commercial volume of the exploitation of the mark, the more necessary it is for the EUTM proprietor to submit additional evidence to dispel possible doubts as to its genuineness (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 37).
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 documents show that the contested sign ‘Belong’ (figurative) was developed by the EUTM proprietor in connection with a project of rural/nature tourism and the production and distribution of organic farming products. In that respect, annex 1 shows that the EUTM proprietor had applied for funding under ‘Portugal 2020’ programme for the creation of a nature tourism resort. However, the documents submitted do not allow the Cancellation Division to draw a conclusion as regards the actual use of the mark in relation to the respective services in Classes 35, 39 and 44. Whilst it can be deduced from the evidence (annex 2) that the trade mark ‘Belong’ has been used in relation to the sponsorship of a basketball team, apart from the submission of some pictures of some basketball players wearing a T-shirt bearing the sign ‘Belong’, there is no information on the actual sponsorship activities of the EUTM proprietor and their extent.
As regards the printouts from the EUTM proprietor’s website, statistics and posts from the ‘Facebook’ page www.facebook.com/Belongtonature (annexes 3, 4, 5) they do not give any indication of the extent of the commercial activities of the EUTM proprietor under the contested trade mark. The printouts from the EUTM proprietor’s website and mobile app. and the posts from the ‘Facebook’ page only show that the EUTM proprietor advertised its activities and products but it is not possible to ascertain whether the EUTM proprietor had customers for the relevant services. Although the screenshots show the number of likes for the EUTM proprietor’s ‘Facebook’ page in Portugal, the number of likes are very limited and in any event, they do not provide clear information where and by whom these pages had been accessed and they do not prove that the contested services had been commercialised within the relevant market and in the relevant period. As regards annex 6, it merely shows that the EUTM proprietor had registered some domain names but it does not give any indication of the actual use of the contested trade mark.
The Cancellation Division was not provided with any sales figures for the relevant services, any indication of the commercial volume of sales or turnover figures, or any documents concerning the frequency of use. The EUTM proprietor could have filed for instance, invoices, balance sheets and other commercial documents. However, from the evidence submitted, the Cancellation Division has no solid or objective indications relating to the extent of use (the commercial volume, the territorial scope, the duration and the frequency of use) and it cannot be deduced if the EUTM proprietor has seriously tried to acquire a commercial position in the relevant market for the relevant services.
Although the proprietor is free to choose its means of proving the extent of use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 37), it nonetheless has to show the reality of the commercial use of the mark in the relevant territory, at least to an extent that is sufficient to dispel any possible belief that this use might be merely internal, sporadic or token. The materials listed above, taken as a whole, do not enable the Cancellation Division to determine genuine use of the trade mark in the relevant territory during the relevant period for the relevant services.
The Court of Justice has held that there is ‘genuine use’ of a mark where it 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 does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).
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).
It follows from the above that, even taken as a whole, the evidence submitted by the EUTM proprietor is insufficient to demonstrate use of the EUTM since none of the documents proves the extent of use of the contested mark for the relevant services.
It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the services for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.
According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 17/10/2017.
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Ana MUÑIZ RODRIGUEZ
Carmen SÁNCHEZ PALOMARES
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.