CANCELLATION No 25 885 C (REVOCATION)
Kalekim Kimyevi Maddeler Sanayi Ve Ticaret Anonim Sirketi, Firuzköy Mahallesi Firuzköy Bulvari No:188/1, Avcilar, Istanbul 34325, Turkey (applicant), represented by Tomkins & Co., 5 Dartmouth Road, Dublin 6, Ireland (professional representative)
a g a i n s t
Kenan Ozturk, Steynstraat 333, 2660 Hoboken, Belgium (EUTM proprietor), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative).
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 11 235 521 are revoked in their entirety as from 27/07/2018.
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 11 235 521 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:
Class 19: Non-metallic transportable buildings; Non-metallic rigid pipes for building; Monuments, not of metal.
Class 35: Advertising; Business management; Business administration; Office functions.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant filed a request for revocation on 27/07/2018 claiming that the EUTM proprietor has not put its European Union trade mark to genuine use for a continuous period of five years in relation to the goods and services for which it is registered. In addition, the applicant argues that it seeks revocation from a date being five years following the date of registration of the contested EUTM or, in the alternative, from the date of the revocation application.
The EUTM proprietor filed observations saying that he has been using his trade mark in Germany and that the goods designated with contested trade mark are not related to the goods of the applicant’s trade mark. The EUTM proprietor argues that there are sufficient differences between the two trade marks and that there is no risk of confusion and no reason for the opposing party to file the application for revocation. The EUTM proprietor enclosed copies of the registration certificates of both trade marks, namely of the applicant’s international trade mark registration IR No 1 342 283 ‘Kalekim’ and of the contested EUTM No 11 235 521. According to the EUTM proprietor, the application for revocation should be rejected.
In reply, the applicant acknowledged the receipt of the observations filed by the proprietor and noted that those mainly consist of a simple statement that the mark has been used in Germany.
The EUTM proprietor did not file further observations and, on 20/05/2019, the Cancellation Division notified the parties that the adversarial part of the proceedings was closed and that a decision would be taken in due course.
The EUTM proprietor argues that there is no reason for the opposing party to file the application for revocation.
Article 63(1)(a) EUTMR grants all natural and legal persons the right to file an application for a declaration of revocation on the basis of Article 58 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision. Therefore, Article 63(1)(a) EUTMR regulates the issue exhaustively and the argument provided by the EUTM proprietor is not relevant.
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 26/02/2013. The revocation request was filed on 27/07/2018. 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 27/07/2013 to 26/07/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.
On 07/08/2018, the Cancellation Division duly notified the EUTM proprietor of the admissibility of the application for revocation and gave it a time limit until 12/10/2018 to submit evidence of use of the EUTM for all the goods and services for which it is registered.
The EUTM proprietor submitted observations on 12/10/2018 merely claiming that he has been using his trade mark in Germany. He provided a copy of the registration certificate of the applicant’s international trade mark registration IR No 1 342 283 ‘Kalekim’ and a copy of the contested EUTM No 11 235 521. However, the EUTM proprietor did not submit a single piece of evidence of use of the contested EUTM. The registration certificate of a mark merely demonstrates that a mark is present on a register and, as is the case at hand, contains no information as regards its use on the market. Therefore, there is no evidence on file permitting the Cancellation Division to 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. The EUTM proprietor did not submit any arguments and/or any proper reasons for non-use of the contested EUTM. The EUTM proprietor did not file further observations either.
Therefore, the EUTM proprietor did not submit any evidence of use in reply to the application for revocation within the specified 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.
Consequently, the EUTM proprietor did not file any evidence that the EUTM has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.
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. 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.
The applicant merely stated that it requests revocation from a date being five years following the date of registration of the contested EUTM or, in the alternative, from the date of the revocation application. It did not provide any arguments in support of its request. Therefore, it is considered that it has not shown any/sufficient legal interest.
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
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.