CANCELLATION No C 38 867
Delta Light NV, Muizelstraat 2, 8560 Wevelgem (Moorsele), Belgium (applicant), represented by Crowell & Moring, Joseph Stevensstraat 7, 1000 Brussels, Belgium (professional representative)
a g a i n s t
AG, Brühler Str. 100, 42657
Solingen, Germany (EUTM proprietor), represented by LS-IP
Loth & Spuhler Intellectual Property Law Partnerschaft Von
Rechtsanwälten mbB, Alpha-Haus,
Garmischer Strasse 35, 81373 Munich, Germany
On 09/12/2020, the Cancellation Division takes the following
The application for revocation is upheld.
The EUTM proprietor’s rights in respect of European Union trade mark No 11 056 711 are revoked as from 15/10/2019 for all the contested services, namely:
Class 35: Retailing and wholesaling of apparatus for lighting.
The European Union trade mark remains registered for all the uncontested goods and services, namely:
Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; Unprocessed artificial resins, unprocessed plastics; Manures; Fire extinguishing compositions; Tempering and soldering preparations; Chemical substances for preserving foodstuffs; Tanning substances; Adhesives used in industry; Silicon blocks, Silicon wafers, In class 1.
Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal not included in other classes; Ores; Rods of metal and fastening systems constructed therefrom.
Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine coupling and transmission components (except for land vehicles); Agricultural implements other than hand-operated; Incubators for eggs; Automatic vending machines; Electric generators using solar cells and solar modules and components therefor (included in class 7); Machines and installations constructed therefrom, for energy technology, electrical engineering and building technology, communications technology and environmental technology; Tachogenerators.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (see provision), life saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Electrotechnical apparatus, laboratory, testing, measuring, switching and experimentation apparatus; Monitoring apparatus, electric switching, regulating and control apparatus, and combinations thereof and parts therefor, electronic status indicators for error detection and diagnosis, electronic apparatus and computers for recording measurements, switchboards, electrotechnical control and regulating apparatus, transformers, variable voltage transformers, in particular pillar-type and rotary variable voltage transformers, toroidal transformers, inductive components, fixed transformers, planar transformers, speed governors, chokes, storage chokes, interference suppression chokes, reels and coils, electric converters, electrical power supplies, rectifiers, rectifier columns, electronic apparatus, in particular control and regulating apparatus and optoelectronic apparatus for identifying components, in particular for automation, and for sorting and organising components, electric control and regulating apparatus in connection with electronic circuits, voltage stabilisers with a magnetic, transformer or electronic base; Electric resistors, tubular resistors, variable resistors, toroidal resistors, sliding resistors and braking resistors; Electric control apparatus for conveying technology and for oscillating conveyors of all kinds, Frequency converters, Thyristors and Thyristor controls, coupling modules, Electric transformers, Electric start-up devices for engines, vibrating solenoids, vibrating solenoid drives, Transducers, Electric filters and accessories (included in class 9), Mains filters, Acceleration sensors, Transformers and inductive resistors of all kinds, in particular for rail vehicles, electric testing installations for electric rail systems, parts thereof included in Class 9; Apparatus and instruments for generating and transforming electricity, namely photovoltaic/solar installations, photovoltaic/solar modules, photovoltaic/solar cells, inverters, direct current cables, tracking systems based on solar radiation; Electronic components being parts for solar installations, solar cells for electricity generation, solar modules for electricity generation, solar power installations, photovoltaic installations for electricity generation, solar wafers, solar cells and modules; Electronic and electrotechnical components for solar power systems (included in class 9), namely solar cells, solar modules, charge regulators, batteries, inverters for photovoltaic applications and racks therefor; Electrotechnical and electronic installations, apparatus and equipment for power and water supplying based on photovoltaic components or in combination with other conventional, regenerative energy carriers (included in class 9); Mobile, network-independent, small, container-type, electric power plants, consisting of solar power generators and battery storage units (included in class 9); Frames of steel, aluminium and plastic for solar power systems, apparatus and instruments for electrical engineering and building technology, communications technology and environmental technology; Apparatus and instruments for conducting, distributing, transforming, accumulating, regulating and/or controlling electricity.
Class 16: Paper and cardboard and goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packing (not included in other classes); Printers' type; Printing blocks.
Class 25: Clothing, footwear, headgear.
Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees.
Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs; Financial services, investment consultancy; Financing services, Analysis (Financial -), Mutual funds, In particular funds for financing renewable energies.
Class 37: Building construction; Repair; Installation services, electrotechnical works, namely the repair, assembly and maintenance of installations for renewable energy generation.
Class 38: E-commerce, namely the collecting, transmission and providing of information, texts, drawings and images relating to goods and services (press agencies); Internet services, namely the transmission of information and data concerning installations for generating renewable energy.
Class 39: Transport; Packaging and storage of goods; Travel arrangement.
Class 40: Treatment of materials, Production of energy, In particular renewable energy generation.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities.
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, analysis and research services in the field of photovoltaics and solar technology, electronic data processing consultancy; Creation of programs for data processing; Internet services, namely the monitoring and evaluating of information and data relating to installations for renewable energy generation; Development of projects in the field of renewable energy generation, technical consultancy relating to the construction of photovoltaic installations, technical planning of photovoltaic installations, development of solar cells and modules, for others; Creating software for optimised use of electrical energy generated from solar cells and solar cell modules, engineering, architecture, biology, chemistry and physics; Technical consultancy for business and public organisations; Development, planning, designing and conducting of, and consultancy in connection with approval procedures for installations, equipment and processes in the field of supply, disposal, incineration, gasification, pyrolysis, environmental and chemical process technology, and technical consultancy therefor; Creating concepts and implementing concepts through development, planning and design initiatives, for the construction of electronic installations and for process technology, control engineering and sensor technology; Ecological and biological research and preparation of ecological audits; Consultation in environment protection.
Class 43: Providing of food and drink and temporary accommodation.
The applicant filed a request for revocation of European Union trade mark No 11 056 711 'REO Renewable Energy Objects' (word mark) (the EUTM). The request was initially directed against some of the goods and services covered by the EUTM, namely against Apparatus for lighting in Class 11 and Retailing and wholesaling of apparatus for lighting in Class 35.
The applicant invoked Article 58(1)(a) EUTMR.
On 17/06/2020 the Office notified the applicant in respect of the partial invalidation of the contested EUTM for, inter alia, apparatus for lighting in Class 11, pursuant to the final decision of the Cancellation Division taken on 26/03/2019 in invalidity proceedings No 14 662 C confirmed by the decision of the Fifth Board of Appeal of 03/02/2020 in case R 1088/2019‑5 REO Renewable Energy Objects. The applicant was set a time limit to reply until 22/08/2020. By means of the same communication, the applicant was informed that in the absence of a reply the proceedings would continue.
As the applicant did not submit a response on or before the expiry of the time limit, the request is deemed to be maintained in respect of the remaining contested services, namely: Retailing and wholesaling of apparatus for lighting in Class 35.
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.
According to Article 58(2) EUTMR, where the grounds for revocation of rights only exist for some of the goods or services for which the European Union trade mark is registered, the proprietor’s rights must be revoked for those goods and services only.
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 15/02/2013. The revocation request was submitted on 15/10/2019. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 22/01/2020, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit to submit evidence of use of the European Union trade mark for the contested goods and services.
The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.
According to Article 19(1) EUTMDR, if the proprietor of the European Union trade mark does not submit proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.
In the absence of any reply from the EUTM proprietor, there is neither any evidence that the contested EUTM has been genuinely used in the European Union for any of the remaining contested services in Class 35 nor any indications of proper reasons for non-use.
Pursuant to Article 62(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.
Consequently, the EUTM proprietor’s rights must be partially revoked and deemed not to have had any effects as from 15/10/2019 for all the remaining contested services in Class 35. The European Union trade mark remains valid for all the uncontested goods and services.
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(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
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.