CANCELLATION No 27 062 C (REVOCATION)

BenefitHub, Inc., Suite 1000, 230 Park Avenue, New York, New York 10169, United States of America (applicant), represented by Bristows LLP, 100 Victoria Embankment, London EC4Y 0DH, United Kingdom (professional representative)

a g a i n s t

Mearns & Company Limited, Anchor House, 112 Commercial Street, Edinburgh EH6 6NF, United Kingdom (EUTM proprietor), represented by Iain McDougall MBM, Commercial LLP, 5th Floor 125 Princes Street, Edinburgh EH2 4AD, United Kingdom (professional representative).

On 03/03/2020, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 11 049 012 are revoked in their entirety as from 31/08/2018.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 11 049 012 ‘Benefit Hub’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely

Class 38: Telecommunications.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

The applicant invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested mark has not been put to proper use for 5 years for all the services, nor are there proper reasons for non-use. It requests that the contested mark be revoked with effect from 22/03/2018 on the grounds that it has not been genuinely used in the 5 years since registration or, in the alternative, that it be revoked with effect from 31/08/2018 on the grounds that it has not been genuinely used in the 5-year period preceding the date of the application for revocation. The application for revocation is based on Article 58(1)(a) or, ‘in the alternative’, Article 58(2) of Regulation (EU) 2017/1001.

The EUTM proprietor replied by submitting observations that contained an affidavit dated 21/01/2019 and signed by the Managing Director at Mearns & Company Limited and the Director at Lightbox Reward Limited. The affidavit states that the contested mark was originally filed and owned by Mearns & Company Limited. Lightbox Reward Limited operates the ‘Benefit Hub’ websites, and markets and manages the ‘Benefit Hub’ product under a Services Agreement with Mearns & Company Limited dated 01/10/2014 (appendix CB1).

In addition, the affidavit states that during the relevant period for the revocation action Mearns & Company and Lightbox Reward have provided online employee benefit platforms using the contested trade mark in the United Kingdom and throughout the European Union. This platform allows employees and companies to see, communicate and update employee benefits using an online portal. Benefit Hub Limited was incorporated on 19/09/2013 (appendix CB2); the company was set up to market and manage the ‘Benefit Hub’ software offering.

Regarding their ‘product development’, the affidavit states that the proprietor designed and developed the ‘Benefit Hub’ software platform product in the second half of 2011 and launched it in the first half of 2012 as a tool for one of their corporate clients, Ocean Rig (whose principal administration bases are in Greece and Norway), to use in managing and communicating employee benefits to their employees. Appendix CB3 contains a testimonial from Ocean Rig confirming that they have used the ‘Benefit Hub’ software since 2012 and email instructions from the client to make certain amendments to their bespoke platform. Lightbox Reward Limited has also received funding from Scottish Enterprise to develop the ‘Benefit Hub’ brand, thus evidencing use and development of the product (appendix CB4).

In relation to marketing, the proprietor states that, following the ‘Benefit Hub’ platform launch with Ocean Rig in the first half of 2012, Mearns & Company and Benefit Hub Limited marketed ‘Benefit Hub’ to existing Mearns & Company employee benefit clients. Appendix CB5 shows an example of Lightbox Reward marketing of the ‘Benefit Hub’ mark to COSL Drilling Europe AS, based in Norway. Since 2013, Lightbox Reward Limited (formerly Benefit Hub Limited) has also been marketing ‘Benefit Hub’ to companies who are not clients of Mearns & Company. Appendix CB6 shows an example of the marketing of the contested mark to a company based in England. Appendix CB7 shows examples of non-disclosure agreements between Lightbox Reward and prospective clients in the period that allowed demo access to ‘Benefit Hub’. The applicant explains that the development of the contested mark has been a priority for them; appendix CB8 contains internal correspondence discussing development of additional ‘Benefit Hub’ features (also appendices CB9-CB11).

The proprietor explains that Lightbox Reward Limited’s employee benefit services are provided exclusively online via bespoke software platforms. As a result, much of the marketing carried out by the company has been using internet marketing strategies. A secondary strategy was to use introducers and referrals. Appendix CB12 displays archived snapshots of the first ever ‘Benefit Hub’ website, dated 28/11/2013, http://www.vourbenefithub.com. These images were retrieved using the Wayback Machine Internet Archive (http://webarchive.org). The proprietor’s company also promoted the brand via client case studies on the Lightbox Reward website http://www.lightboxreward.com/tcam (appendix CB13). These studies set out the capabilities of the ‘Benefit Hub’ software and the standard of service provided to clients. The mark has been promoted throughout the period on social media, as shown by screenshots of Linkedln posts (appendices CB14, CB15), Facebook posts (appendix CB16), tweets (appendix CB17) and YouTube videos (appendices CB18, CB19). Lightbox Reward Limited has also promoted the mark via product datasheets and flyers, which contain comprehensive information on the operation and benefits of their employee benefit software (appendices CB20-CB22).

According to the proprietor, as can be seen from the Lightbox Reward Limited Business Plan: 2016-2021 (appendix CB23), the growth and development of the mark has been carefully considered in the context of market analysis, turnover, economic conditions, competitive strategies, etc. In October 2014 the company commissioned a product development and risk assessment report on ‘Benefit Hub’ from bgreenaway Development (appendix CB24). In March 2017 Lightbox Reward secured marketing support from a company to help establish the ‘Lightbox Reward’ and ‘Benefit Hub’ brands, with the goal of building brand awareness and traction in the UK and EU employee benefit communication market. The Genoa Black report is included as appendix CB25.

The proprietor mentions that the ‘Benefit Hub’ trade mark has been continuously used and promoted on a series of websites:

• yourbenefithub.com

• Lightboxreward.com

• Lightboxreward.co.uk

• Lightboxrewards.com

• Lightboxrewards.co.uk.

The proprietor affirms that, on occasions during the period, the Mearns & Company website has also used and promoted ‘Benefit Hub’. In addition, there are approximately 50 URL subdomains that contain ‘yourbenefithub’, for example https://dana-petroleum.v3.yourbenefithub.com/. These are either live client sites, specifically designed for and accessed by the employees of the company’s corporate clients, or test/demo sites that are used for business development and prospective clients. Lightbox Reward Limited has also been proactive at networking events to bolster the recognition of the ‘Benefit Hub’ brand, such as attendance at the HR Network Conference on 10/05/2018 (evidenced by photographs in appendix CB26 and a blog posted on the Lightbox Reward website and Linkedln in appendix CB2) and a presentation at the Edinburgh Chamber of Commerce High Growth Club event on 03/09/2014 (appendix CB28).

In relation to turnover and outlays, the proprietor states that, by 30/09/2014, annual turnover generated from Lightbox Reward Limited was £15,390 and provides the following table:

.

The proprietor also provides a table for the total annual outlays spent on advertising and promoting the contested mark:

.

In relation to market awareness and client base and European exposure, the evidence submitted by the proprietor shows that the contested mark received positive press interest in the magazines Money Marketing and Professional Adviser (appendices CB29, CB30), which confirm that the ‘Benefit Hub’ has not only been used consistently during the relevant period, but has always been prominent and well-respected in the industry. In addition, the Finance and Technology Research Centre (F&TRC) reviewed ‘Benefit Hub’ for its Digital Wealth Insights Report, a review of WealthTech propositions (appendix CB31). The proprietor produced testimonials from their clients and from a number of professionals who operate in the market, which confirm their use or knowledge of the ‘Benefit Hub’ platform throughout the relevant period and their association of the ‘Benefit Hub’ trade mark with Lightbox Reward Limited (appendices CB32-CB35).

Appendix CB36 contains correspondence and invoices with domain providers and also Google analytics data on the number of users and visits to the Lightbox Reward website, (appendix CB36). The Lightbox Reward website recorded 7 641 sessions throughout Europe between 08/11/2016 and 14/11/2018. This figure is broken down further by individual clients with European presence, and the proprietor included examples of Google analytics data on the number of users and visits to the individual client ‘Benefit Hubs’ that Lightbox Reward maintains, for example oceanrig.yourbenefithub.com. The proprietor explains that all of these websites rely on underlying URL and domain names that contain ‘yourbenefithub’. The analytics data shows countries where their employees have been based when accessing their bespoke ‘Benefit Hub’ portal. While the proprietor concedes that sale of access to the ‘Benefit Hub’ platform is to their corporate clients, it explains that their employees, who can be based in multiple countries, use ‘Benefit Hub’ and therefore have visibility of the trade mark via their access using name@yvourbenefithub.com.

According to the proprietor Mearns & Company Ltd was in discussion with Frank’s International, as shown by the annual review meeting summary (appendix CB37) regarding the possibility of extending ‘Benefit Hub’ use. Frank’s International are a global company with headquarters in the Netherlands and Aberdeen. Mearns & Company Ltd has also shared the Frank’s International ‘Benefit Hub’ usage report for 12/04/2015-12/04/2016, which details that their platform received 146 sessions over 75 users (appendix CB37). Appendix CB38 contains details of a number of clients located, inter alia, in Denmark, Greece, Cyprus, The Netherlands, Aberdeen, Edinburgh, Sheffield and Newcastle. Appendix CB39 contains details of a new client, whose headquarters are located in Berlin and which has offices and employees in 13 European countries.

In its observations in reply, the applicant contends that the witness statement provided has a low probative value given that the signee is an interested party in the proceedings and, furthermore, neither the statement nor the accompanying documents provide sufficient evidence of the factors required to establish genuine use. The provision of an online employee benefit platform is mentioned throughout the witness statement, which is not covered by the contested mark, as this would fall under Class 9. Merely because a platform or software tool has as part of its functionality something that allows or performs some form of communication does not mean that this could be described as the provision of a ‘telecommunication service’. Moreover, the applicant submits that an employee benefit platform and operating software that allows users of the platform to make small amendments tailored to their company’s needs (i.e. uploading their relevant branding on to the platform) is not evidence of genuine use of the trade mark for the services of ‘design and development of computer software’ in Class 42.

The applicant disputes the proprietor’s contention that the evidence seen in the appendices demonstrates use of the mark throughout Europe during the relevant period, and provides specific explanations concerning every one of the appendices submitted, such as that some of them are irrelevant (they refer to companies being formed, etc.), some of the documents fall outside the relevant period, they cannot be linked to the mark, they refer to funding provided for another brand such as ‘Lightbox Reward’, or they mention territories (Norway) outside the European Union. In addition, the applicant states that, even if it had been the case that the use of the mark ‘BENEFIT HUB’ did fall within the scope of the registration, the proprietor has failed to demonstrate that there has been genuine use on all of the services and, furthermore, not in a sufficient part of the relevant territory, given the sheer scale of the telecommunications industry and the sectors catering to the provision of the Class 42 services.

In its last submissions, the EUTM proprietor argues that the customisation and design of software products, and the implementation and development of bespoke software programs, is indeed provided by the proprietor, and the applicant’s inferences that this is not the case because the proprietor’s product is alleged to be ‘non-customised’ are erroneous. The proprietor refers to the case T‑92/09, ‘STRATEGIES’ (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424), which is relevant to the present proceedings, as the proprietor has shown that supply of design and development services is intrinsically linked to the software products, i.e. the proprietor’s services are provided through the medium of their software offering, inclusive of design, development and support services.

According to the proprietor, the use of the ‘LIGHTBOX REWARD’ mark does not exclude the use of the ‘BENEFIT HUB’ mark. Structures in which each company/business within a group of companies makes use of group marks is a commonplace occurrence. Moreover, it is common practice for traders to make concurrent use of a variety of marks. Any use of the mark ‘LIGHTBOX REWARD’ does not neutralise the concurrent use of the mark ‘BENEFIT HUB’.

In relation to the applicant’s quotation of the ‘Minimax’ judgment (11/03/2003, C‑40/01, Minimax, EU:C:2003:145), the proprietor explains that use ‘need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (paragraph 39)’. The applicant’s comparison of the registered proprietor’s turnover to an entire industry (telecoms, software, etc.) is submitted to be irrelevant in light of the ‘Minimax’ judgment. The registered proprietor is a developing company that works hard to grow its market share. All companies must start from somewhere, as Minimax reflects in a practical sense.

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 the present case, the EUTM was registered on 21/03/2013. The revocation request was filed on 31/08/2018. 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 31/08/2013 to 30/08/2018 inclusive, for the contested services listed in the section ‘Reasons’ above.

On 25/01/2019 the EUTM proprietor submitted evidence as proof of use, listed above.

Use in relation to the registered services

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 applicant’s main argument is that the mark has not been used for the registered services.

The applicant argues that, according to the ‘IP Translator’ case (19/06/2012, C‑307/10, IP Translator, EU:C:2012:361), specifications of goods/services are to be given their ordinary and literal meaning and any services that are not specifically covered by the normal meaning of the terms used are not included in the scope of protection granted by the registration. The applicant provides, in exhibit A, a definition of ‘telecommunication’ found in the Cambridge Dictionary and, in exhibit B, case-law that states that an internet-shopping platform, due to its nature, does not fall under the notion of ‘telecommunication services’. Moreover, it must first be considered whether the service is providing the means of communication (in which case it can be regarded as a telecommunication service) or if it is a different type of service that uses telecommunication to facilitate and broaden its activity. Consequently, it is clear that the proprietor does not provide ‘telecommunication services’ in Class 38; if a piece of software or an online tool or platform has some communicative functionality, this does not mean that the provider of that software is also providing ‘telecommunication services’.

The applicant provides the definition of the services in Class 42 given by the World Intellectual Property Organization (WIPO) (exhibit C), which states that Class 42 includes technical and highly specialised services provided by one entity to another. For example, the ‘design and development of computer hardware and software’ would entail the provision of the expertise and skill of computer programmers and designers to create or implement bespoke software programs or applications for another. The contested services in Class 42 do not cover non-customised, standard software products or software tools, or employee platforms, employee benefit platforms or advice or consultancy in relation to employee benefit portals.

The Cancellation Division agrees with the applicant in its contention that not all the services provided using means of telecommunication can be considered telecommunication services as found in Class 38 of the Nice Classification. It is also obvious that, for a company to claim the use of services, it must be providing such services under its brand, a fact that has not been proved in the case at issue. In this regard, the Cancellation Division endorses the applicant’s mention of the decision 03/10/2008, R 1533/2007‑4, Geo Madrid (FIG. MARK)/GEO at paragraph 16, which is applicable to these proceedings.

As seen above, the dispute between the parties in relation to Class 42 centres around the issue of whether, apart from providing software classified in Class 9 (an online platform), the proprietor also offers the services of ‘design and development of software’.

The proprietor is an Independent Financial Advisor (IFA) and not a software developer. This is proved by, inter alia, the articles found in appendix CB30. The article dated 26/07/2012, reviewing the contested mark, explains that ‘Benefit Hub is a benefits system designed by an IFA, specifically Mearns & Co in Edinburgh. Mearns has teamed up with a small web design company called [codepotato], based in Hampshire. Its proprietor, Gareth Thompson, … has designed websites for a number of planners …’ This reference makes it clear that the proprietor provides advisory services in the financial field and therefore its activity lies in the creation of some specifications for a software product devised for a client, which is then developed by a software provider.

Appendix CB8 contains an email exchange dated 15/11/2018 between Ms Catherine Bell (from Lightbox Reward Limited) and ‘Gareth’ (this person being Gareth Thompson from the company [codepotato], a software developer, as identified in appendix CB30 mentioned above) that states: ‘I had a call with Gareth yesterday about how we will move forward with developing Benefit Hub V3. We discussed the additional features we’d like BH to have … We decided that Gareth will let me know which section of Benefit Hub he would be working on in advance.’ Appendix CB10 contains an email from Ms Bell to Mr Thompson (21/01/2014) in which they discuss ‘an issue with the benefits tiles in Chrome’. Again, this is proof that the company using the mark (Lightbox Reward Limited) made the software developer aware of some problems with the product, whose development they entrusted to a third party (the software developer Mr Thompson).

Appendix CB12 contains some archived snapshots of the ‘Benefit Hub’ website and the Lightbox Reward website, in which ‘Benefit Hub’ is presented as ‘an employee benefit portal for employers, financial advisers and HR professionals’. One of the documents also states: ‘[W]e offer beautiful, agile software products ready for customization - for use online on a desktop or mobile device. We also provide consultancy services.’ The advisory character of the services the proprietor’s company provides is also mentioned in appendix CB4 (relating to the funding from Scottish Enterprise to develop the ‘Benefit Hub’ brand), in which the project for which the funding was granted is identified as ‘Business Development Expert Help’.

The contents of the agreements in appendix CB7 cannot be disclosed for obvious reasons but, as the applicant puts forward, from their contents it transpires that they refer to companies that are carrying out independent testing of the owner’s software platform, and there is also evidence that third parties develop or work on the owner’s software. This becomes obvious especially (though not only) through the contents of the ‘permitted purpose’ section of the agreements.

Appendix CB22 (a promotional flyer) describes ‘Benefit Hub®’ as ‘an online tool which employers can use to manage their employee benefits and communicate them easily to a geographically spread workforce … Benefit Hub® is a software package supplied by Lightbox Reward Limited, whose web-based tools help shine a light on employee benefits and communicate key reward package information.’

Further information on the tool branded with the contested mark is found in appendix CB23, Lightbox Reward Business Plan: 2016-2021, in which the following can be read: ‘Benefit Hub® was developed by Edinburgh-based Chartered Financial Planners Mearns & Company, a multi-award winning business providing advice to employers and individuals. In response to an oil and gas customer request in 2011, the online communications platform was created’ and ‘[R]ecognizing the market opportunity for Benefit Hub®, Lightbox Reward was established as a separate company in 2013. Now on Version 3, the software has nine companies and 1 700 employees using it across 50 countries. This version of the platform incorporates functionality for benefits advisers, who will be key to distribution.’ Section 2.4 of this document (‘Product and service overview’) states that ‘[A]t the core of the Lightbox Reward proposition is Benefit Hub®. To ensure effective delivery and implementation there are support services available to help employers design, implement, manage and communicate their benefits proposition on an ongoing basis.’

The Executive Summary contained in the risk assessment report on ‘Benefit Hub’ conducted by a company called bgreenaway Development (appendix CB24) explains that ‘[A]fter a day in discussion with your staff, developers and managerial executive …’ (emphasis added).

The testimonials from clients and professionals contained in appendixes CB32-CB35 all link the contested mark with a good, namely ‘a benefits communications software, Benefit Hub’.

As for the rest of the documents, the existence of websites promoting the software and the information provided about their traffic, or the presence of the mark in social media, do not in themselves unambiguously show use of the mark in relation to the services for which the trade mark is protected. The affidavit mentions annual turnover and advertising expenditure, but although Article 10(6) 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, the probative value of 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. In the case at issue, as the applicant rightly points out, the supporting documents do not allow the conclusion that the figures mentioned correspond to the offering of the services.

It becomes, therefore, obvious that the proprietor teams up with software developers, who are the ones providing the services of software design/development to the proprietor so that this company can, in turn, provide its clients with a ‘product’, namely an online platform. That some consultancy services are also offered as part of the package does not prove the provision of ‘design/development of software’ as the contested mark is not protected for consultancy services in the field of software design/development.

The proprietor mentions that the term ‘product’, often used in the documents submitted, is a ‘shorthand, commonly used term which encompasses a whole software offering, including related services. Language is used in the owner’s marketing materials that is targeted at and intended to be understandable by and meaningful to clients/end users, as might be expected’. Furthermore, ‘the use of a software product/platform/portal or any such equivalent wording does not exclude the use of services in Class 42 … given that Classes 09 and 42 are closely related and are very far from being mutually exclusive’.

The proprietor is, of course, correct when it states that the term ‘product’ is used in common parlance to refer not only to goods but also to services. Furthermore, the Cancellation Division concurs with the proprietor’s general statement that the use of a software product/platform/portal or any such equivalent wording does not in principle exclude the use of services in Class 42, and that it cannot be ruled out that, in general, payment of the price of software may constitute remuneration for specific services. This is, however, not the case in the present proceedings.

The proprietor explains that the ‘BENEFIT HUB’ software offering was designed and developed initially in response to a request from a client, and then additional programming resources were secured in the early stages of development of the product, a fact that is a common practice in the industry. Moreover, alluding to the judgment in case T‑92/09, ‘STRATEGIES’ (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424), the proprietor takes the view that the supply of design and development services is intrinsically linked to the software products, that is, the services are provided through the medium of their software offering, inclusive of design, development and support services. The proprietor adds that ‘the proprietor’s services are not provided free of charge - payment of the price of the software constitutes remuneration for the service provided, as part of the offering as a whole’. The ‘BENEFIT HUB’ system is fully customised for every client, and this is a fundamental part of the proprietor’s offering. In order for the ‘BENEFIT HUB’ offering to work fully and properly, every client has to be set up individually and the set-up, design, configuration and customisation that is done for each client is completely unique in every case.

The concept of similarity of goods and services used by the proprietor (‘Classes 09 and 42 are closely related and are very far from being mutually exclusive’) is in itself not a valid consideration given that the proprietor needs to specifically prove the use of the services for which the mark is registered, and it cannot be assumed that the mark has also been used for the provision of services only because they are linked to the goods.

From the evidence submitted by the proprietor, it becomes clear that the software solution/platform offered and marketed as ‘Benefit Hub’ consists of a computer application software to enable solutions for the provision, communication and administration of benefits schemes, healthcare plans or schemes and reward schemes. It is, therefore, software already designed and developed that can later be customised/tailored depending on the specific needs of the client for a set of features in the area of human resources. The product/solution (customised or not) is then offered/purchased online as a licensed model, and the product/solution/package offered by the proprietor clearly matches Class 9 goods in that sense.

By contrast, a company offering Class 42 software design and development services would create a product (software) to fit a set of specific/individual needs (requirements) that would be defined beforehand through an analysis phase (i.e. no product offering would in general be provided in advance, as the software product or solution would only be available at the end of the development).

No proof of the aforementioned approach has been received from the proprietor, and the sole assumption that there was an initial software design and development for the build of the software/product, later marketed as ‘Benefit Hub’, to be further commercialised as a kind of an off-the-shelf software, cannot be considered as a general use of this mark for the services of software design and development.

In connection with the proprietor’s statement that its company provides the services as part of a package, since it makes amendments to the platform sold, these amendments seem to be carried out, as the applicant observes, in relation to the proprietor’s own software product, and the proprietor is not performing these services as technical programming services for others or with the intention of creating a market share in the development or design of computer software. Furthermore, even if some allusions in the documents submitted could, at a stretch, be interpreted as also covering services of ‘design/development of software’, not enough unambiguous evidence in relation to the time, place and extent of use of the services has been provided. After the objections made by the applicant in connection with the first round of documents submitted, the proprietor could have provided additional information to dissipate the doubts raised, but aside from refuting the applicant’s statements, no further evidence was submitted.

The judgment in the case ‘STRATEGIES’ (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 31-35) cannot be applied here as the circumstances differ and, in any case, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

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. Moreover, genuine use of a trade mark cannot be proved 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).

Conclusion

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 31/08/2018. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown sufficient legal interest to justify it.

COSTS

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

Fabián GARCÍA QUINTO

María Belén IBARRA DE DIEGO

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.