CANCELLATION No 23346 C (REVOCATION)

Mimedx Tissue Services, LLC, 1775 West Oak Commons Ct., Marietta, GE 30062, United States of America (applicant), represented by D Young & Co LLP, Theatinerstraße 11, 80333 München, Germany (professional representative)

a g a i n s t

DIZG-Deutsches Institut für Zell-und Gewebeersatz gemeinnützige GmbH, Köpenicker Str. 325, Haus 42, 12555 Berlin, Germany (EUTM proprietor), represented by Wehlan & Wehlan, Möllendorffstr. 49, 10367 Berlin, Germany (professional representative).

On 13/09/2019, 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 11 326 022 are revoked in their entirety as from 13/06/2018.

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 11 326 022 ‘EPIFLEX_HD Diamant’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 10: Transplant material, biological therapeutic substances for wounds; Artificial skin, artificial tissue.

Class 44: Medical care, hygiene and beauty treatment services.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested mark has not been genuinely used within the EU for any of the goods and services for which it is registered and there are no proper reasons for non-use.

The EUTM proprietor declares that the contested trade mark was not used and that it agrees about the revocation of the mark.

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 09/05/2013. The revocation request was filed on 13/06/2018. 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 13/06/2013 to 12/06/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.

On 14/06/2018, 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 EUTM for all the goods and services for which it is registered. Upon request of an extension of the time limit submitted by the proprietor, the new time limit expired on 19/10/2018.

However, the EUTM proprietor did not submit evidence of use and in its observations dated 19/10/2018 it declares that the contested trade mark was not used and that it agrees about the revocation of the mark.

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.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods and 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.

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 its observations, the applicant argues that the contested EUTM should be revoked as of 10/05/2018 or in the alternative as of the date of the application for revocation, that is as of 13/06/2018.

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.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 13/06/2018.

COSTS

In its observations on 19/10/2018, the proprietor requested that a decision on costs be taken only after a decision on the application for invalidity of the trade mark was rendered.

However, it has to be noted that those proceedings are independent and the costs will be decided in each proceedings separately. Therefore, the proprietor’s claim is rejected.

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 in this proceedings, 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

Richard BIANCHI

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

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.