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CANCELLATION DIVISION |
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CANCELLATION No 30 821 C (REVOCATION)
12go Asia Pte., Ltd., 16 Raffles Quay, #33-03, Hong Leong Building, Singapore 048581, Singapore (applicant), represented by Foral Patent Law Offices, Kaleju 14-7, Riga, 1050, Latvia (professional representative)
a g a i n s t
Interface.Ag, Bahnhofstrasse 23, 6300 Zug, Switzerland (EUTM proprietor), represented by Fleuchaus & Gallo Partnership mbB, Buchenweg 17, 86573 Obergriesbach, Germany (professional representative).
On 26/06/2019, 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 11 639 804 are revoked in their entirety as from 14/12/2018.
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 No 11 639 804 ‘12GO’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:
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Class 35: |
Publicity columns preparation; Dissemination of advertising for others via an online communications network on the internet; Advertising for services; Information relating to advertising; Organisation, Conducting and supervision of incentive schemes (advertising); Advertising for business operations; Consultancy relating to advertising for businesses; Collection of information relating to advertising; Dissemination of advertising for others via the Internet; Brand creation services (advertising and promotion); Advertising and advertisement services; Publication advertisement services; Publicity and public relations; Sales promotion for services (for others) by arranging of advertising; Organisation, Conducting and supervision of customer loyalty schemes (advertising); Advertising, promotion and marketing services; Online advertising for others via electronic communications networks; Distribution of commercials; Information on advertising on the Internet; Computer based advertising; Advertising through all public communication means; Advertising via electronic media and specifically the internet; Dissemination of advertising for others; Advertising business especially in the field of telematic and telephone networks; Direct market advertising; Advertising services by means of television screen based text; Advertising by means of data bases; Advertising services relating to the transport industries; Advertising in the form of sponsoring; Compilation of statistics relating to advertising; Advertising and business management consultancy; Advising industrial enterprises in the conduct of their business; Advice in the running of establishments as franchises; Business strategy consultancy services; Strategic business consultancy; Business consultancy in the field of using information technology; Advising commercial enterprises in the conduct of their business; Professional business consultancy by means of computer; Computerized file management; Cost price analysis; Procurement services for others [purchasing goods and services for other businesses]; Business management in relation to procuring contracts; Gathering business information relating to company activities; Conducting market studies by telephone; Auction services; Exhibitions (conducting- ) for advertising purposes; Auctioneering via telecommunications networks; Conducting marketing campaigns; Arranging and conducting of auction sales; Commercial information agencies; Commercial information and advice for consumers [consumer advice shop]; Publication of publicity texts; Publication and updating of publicity texts; Business information; Commercial administration of the licensing of the goods and services of others; Marketing studies; Information on marketing studies; Analysis of market research statistics; Analysis of market research data; Business research; Data search in computer files for others; Organization of exhibitions for commercial or advertising purposes; Business organization consultancy; Outsourcing services [business assistance]; Bill-posting; Price comparison services; Sponsorship search; Systemization of information into computer databases; Telemarketing services; Telephone answering for unavailable subscribers; Rental of advertising space; Rental of vending machines; Rental of advertising time on communication media; Arranging subscriptions to telecommunication services for others; Dissemination of advertising matter; Advertising by mail order; Direct mail advertising; Demonstration of goods.
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Class 38: |
Telecommunications; Information about telecommunication; Providing telecommunications connections to a global computer network; Providing user access to global computer networks; Providing internet chatrooms; Providing online forums; Providing telecommunication channels for teleshopping services; Wireless broadcasting; Electronic advertising (telecommunications); Electronic mail; Communications by computer terminals; Communications by telephone; Cellular telephone communication; Computer-aided transmission of messages; Computer aided transmission of messages and images; Transmission of greeting cards online; Message sending; Transmission of digital files; Voice mail services; Videoconferencing services; Providing access to databases.
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Class 39: |
Transport; Packaging and storage of goods; Guarded transport of valuables; Flower delivery; Transport brokerage; Carting; Freight forwarding; Storage of goods; Wrapping of goods; Storage information; Franking of mail; Porterage; Courier services (messages or merchandise); Storage; Message delivery; Physical storage of electronically-stored data or documents; Transport reservation; Taxi transport; Car transport; Hauling; Armored-car transport; Information (transportation-); Advisory services relating to transport; Transportation logistics; Rental of warehouses; Delivery of goods by mail order.
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The applicant invoked Article 58(1)(a) EUTMR.
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.
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 16/07/2013.The revocation request was submitted on 14/12/2018. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 31/12/2018, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of two months to submit evidence of use of the EUTM for all the services for which it is registered.
The EUTM proprietor did not submit any observations or 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.
In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the services for which it is registered 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 revoked in their entirety and deemed not to have had any effects as from 14/12/2018.
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 costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Raphaël MICHE |
Manuela Gabriele Ulrike MIEHLE |
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 submitted in writing at the Office within two months of the date of notification of this decision. It must be submitted 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 submitted 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.
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