CANCELLATION No 19 853 C (REVOCATION)
adp Gauselmann GmbH, Merkur-Allee 1-15, 32339, Espelkamp, Germany (applicant), represented by Wolfgang Schröder (adp Gauselmann GmbH), Paul-Gauselmann-Straße 1, 32312 Lübbecke, Germany (employee representative)
a g a i n s t
IGT UK Interactive Limited, 3rd Floor 10 Finsbury Square, London EC2A 1AF, United Kingdom (EUTM proprietor), represented by Armin Herlitz (IGT Austria GmbH), Seering 13-14, 8141 Premstätten, Austria (employee representative).
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 11 012 011 are revoked in their entirety as from 14/02/2018.
3. The EUTM proprietor bears the costs, fixed at EUR 630.
On 14/02/2018, the applicant filed a request for revocation of European Union trade mark registration No 11 012 011 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:
Class 9: Computer software for playing games and video games; Computer software for computer games on the internet or for terminal games or games machines; Software for playing computer-, terminal-, and online games; Computer programs for computer-, video-, and online games for usage on several platforms; Computer programmes for interactive television and for interactive games and/or quizzes; Electronic publications (downloadable) provided on-line from databases or the Internet; Parts and fittings for all the aforesaid; Audiovisual games (programs) on computer hardware platforms; Audio and video receivers.
Class 28: Games and plaything; Gaming machines, automatic and coin controlled; Television games apparatus; Computer games apparatus for use with television apparatus.
Class 41: Entertainment provided via the Internet; Services for internet games; Providing online computer games; Games services provided on-line from a computer network; Providing interactive games, interactive entertainment and competitions and electronic quizzes, all provided via a global computer network or the Internet; Provisioning of on-line computer games; Online entertainment in the form of tournaments and other similar gaming programs; Online information concerning computer gaming entertainment; Providing games via cellular telephone communication; Supply of games for mobile phone usage.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
Apart from filing the notice of revocation the applicant did not file any arguments at the first stage of the proceedings. The proprietor filed evidence of use which will be listed and assessed further in the decision. The applicant commented that the evidence filed does not provide any information mainly about the extent of use of the contested EUTM. The proprietor replied providing some further clarifications about the number of gaming machines sold, about the territory where the mark was used and about the turnover generated by the company out of the single game Spears of Sparta.
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 05/11/2012. The revocation request was filed on 14/02/2018. 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 14/02/2013 to 13/02/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.
On 04/05/2018 the EUTM proprietor submitted evidence as proof of use. The evidence to be taken into account consists of the following attachments:
A sworn declaration by Pavel Kala, Technology Director at IGT, mentioning that IGT has sold the game SPEARS OF SPARTA on a revenue share basis to Synot, a group of companies which has been partnering with IGT since 2004. The sworn declaration also includes the net gaming income which the game has generated in the past 5 years in the Czech Republic, Slovakia and Spain, as well as the number of deployed machines per country. The following statistics are provided:
An article from casinoguardian.co.uk dated 09/02/2017 which announces that IGT and Synot have extended their partnership which dates back to 2004 until 2026, and that IGT will continue to provide Synot with games.
3. to 7. Printouts of Synot’s Spanish or Slovakian webpages dated 05/03/2018 advertising the gaming machines GREEN LINE 27“, RED LINE 22“, GREEN LINE 22“, LINEA VERDE 27“ and RED LINE 27“. The list of games appearing on these websites shows that inter alia the game SPEARS OF SPARTA can be played on these gaming machines.
A printout of Synot’s webpage dated 05/03/2018 describing the game SPEARS OF SPARTA in Slovakian (translation into English provided), as well as the information that the game can be played on the gaming machines RED LINE 22”(f), RED LINE 22”, RED LINE 27”, RED LINE 23” and RED LINE 27” (EC).
A printout of Synot’s Spanish webpage dated 05/03/2018 containing the information that the game SPEARS OF SPARTA can be played on the gaming machines GREEN LINE 22“,LINEA VERDE 23”, GREEN LINE 27” and LINEA VERDE 27“.
Assessment of genuine use – factors
As already mentioned above, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods and/or services.
These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the EUTM proprietor is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (judgment of 17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).
In respect of the time and the place of use, the evidence must show that the contested EUTM has been genuinely used in the relevant period (i.e. from 14/02/2013 to 13/02/2018 inclusive) and in the relevant territory (EU).
As regards the nature of use, in the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, evidence of the use of the mark as registered and evidence of its use for the goods and services for which it is registered.
Finally, concerning the 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). Furthermore, 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). The assessment of genuine use entails therefore 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 evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and services and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).
In the present case, in order to show the genuine use of the contested mark, the EUTM proprietor submitted the above described evidence. Nevertheless, when considered in detail and then viewed as a whole, it does not allow the Cancellation Division to reach a conclusion that the mark was genuinely used.
The evidence filed by the EUTM proprietor was summarised above. It mainly consists of one affidavit, an article and some web printouts.
With particular reference to the probative value of Pavel Kala’s sworn declaration, it is well-established in the case-law that a declaration, even if sworn or affirmed in accordance with the law under which it is rendered must be corroborated by 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.
The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (judgment of 07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42).
Furthermore, it follows from the case-law that, where a statement has been established for the purposes of Article 97(1)(f) EUTMR by persons within the sphere of the proprietor of the mark, probative value can be attributed to that statement only if it is supported by other evidence (see, to that effect, judgments of 13/05/2009, T‑183/08, Jello Schuhpark II, EU:T:2009:156, § 39, of 13/06/2012, T‑312/11, Ceratix, EU:T:2012:296, § 30 and § 50 and of 12/03/2014, T‑348/12, Sport TV Internacional, EU:T:2014:116, § 33).
In other words, 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, invoices etc.) or evidence originating from independent sources. The content of Pavel Kala’s declaration is however not supported by evidence able to dispel the doubts on the extent of use.
A key difficulty that is presented to the Cancellation Division in relation to the evidence of the extent of use is the lack of connection between offering and take up of the goods and services specified. The article from “Casinoguardian” mentions that “the gaming company International Game Tehnology (IGT) officially revealed that it has inked an extension of its partnership contract with SYNOT Group” and that this extension “is for eight years and would ensure that IGT would continue to provide its system software and game content to the interactive video terminals (IVTs) of SYNOT on the territory of the Czech Republic and Slovakia until 2026.” Furthermore, it is specified that the relationship between the companies through IGT’s subsidiary GTECH dates back to 2004, when the companies first signed a partnership contract.”
This suggests that indeed, at that time, a sort of business relationship existed between the respective companies and that this will continue for 8 more years. Be that as it may, the EUTM proprietor did not provide additional evidence to prove to which extent this collaboration concerned the contested trade mark as the EUTM is not mentioned in the respective article and only general references to the provision of “system software and game content” appear. Furthermore, merely general information that “IGT will be engaged with the process of installation and technical support of the IVTs, as well as providing new games content on annual basis” is not sufficient to prove the extent of use of the EUTM for the respective goods and services. There is no invoice evidence and no other material apart from unsupported claims by the declarant showing that a single customer actually purchased the proprietor’s goods or services.
The printouts from the websites are not sufficient to clarify the doubts in relation to the extent of use of the EUTM. It is recalled that the mere presence of a trade mark on a website is, of itself, not sufficient to prove genuine use unless the website also shows the place, time and extent of use or unless this information is otherwise provided. The websites show gaming machines on which allegedly the game SPEARS OF SPARTA can be played. This, however, does not give any information on whether indeed the respective game was purchased and installed on those particular gaming machines or if and to which extent those type of machines were purchased by the end consumer.
Therefore and in the absence of any relevant evidence showing the provision of the registered goods and services to third parties, the genuine use of the EUTM has not been proven. 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 14/02/2018.
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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and, therefore, did not incur representation 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.