CANCELLATION DIVISION



CANCELLATION No 30 985 C (REVOCATION)


SBB Energy Spółka Akcyjna, ul. Łowicka 1, Opole, Poland (applicant), represented by Chmura & Wspólnicy, ul. J.P. Woronicza 31/142, Warsaw, Poland (professional representative)


a g a i n s t


Mobotec AB, c/o Grant Thornton Sweden AB Box 2230, SE-403 14 Göteborg, Sweden (EUTM proprietor) represented by Zacco Sweden AB, Valhallavägen 117, SE-114 85 Stockholm, Sweden (professional representative).


On 14/07/2020, 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 11 712 304 are revoked in their entirety as from 19/12/2018.


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 registration No 11 712 304 ‘ROFA’ (word mark), (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:


Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes specially air feed devices for incineration works.


Class 37: Building construction; repair; installation services specially construction, installation and maintenance concerning environmental engineering works and works for incineration.


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 specially engineering construction investigations and consultations concerning environmental engineering, incineration technique and emission technique.


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



SUMMARY OF THE PARTIES’ ARGUMENTS


The applicant claimed that the contested mark had not been put to genuine use for a continuous period of five years in relation to all the goods and services for which the contested mark was registered. It added that since the grounds for revocation occurred on 15/08/2018, this date should be fixed as the date from which the EUTM would be deemed not to have had the effects specified in the EUTMR.


The EUTM proprietor submitted evidence of use (listed and assessed below) and argued the following:


The trade mark ‘ROFA’ has been used in the European Union for the contested goods and services. ‘ROFA’ is a trade mark for goods used at large power plants and for services carried out at/or in connection with large power plants.


The EUTM proprietor has not used the EUTM ‘ROFA’ by itself during the five years prior to the date of the filing of the pending cancellation action. The trade mark ‘ROFA’ has been used by companies which had the right to use this trade mark at least in the Czech Republic, Poland and the United Kingdom. One of these companies is in fact the applicant and its affiliated companies in Poland.


The use of the trade mark ‘ROFA’ in the United Kingdom has been carried out in connection with two power plants (Rugeley Park and Fiddlers Ferry) by companies which had a right from the proprietor to use the trade mark ‘ROFA’. Its use in Poland and Eastern Europe has been carried out by the applicant and its affiliated companies at a number of different power plants (in particular Opole and Patnów), also with the consent of the EUTM proprietor.


The technology protected under the trade mark ‘ROFA’ was invented by the EUTM proprietor. It relates to a reduction of NOx emissions. ‘ROFA’ is a trade mark for a technological system that stands for combustion improvements together with lower levels of harmful combustion products in connection with power plants.


From 1990 the EUTM proprietor developed the ‘ROFA’ technologies. During the years 1990 to the present time, the ‘ROFA’ technologies have been installed in numerous power plants worldwide. In connection with these installations, the trade mark ‘ROFA’ has also been used.


After 1999 ‘ROFA’ technologies have been mostly interested in large power plants, in particular power plants using coal as a source of energy. Many Member States have ceased using coal for environmental reasons. This means that the market for ‘ROFA’ is limited to only some EU Member States and to very large power plants. ‘ROFA’ installations at large power plants are very expensive and take a long time to project and build. Therefore, the market for ‘ROFA’ is limited and the number of sales are few over a period of 5 years.


In 1999, Mobotec USA was started (a company that was partly owned by Mobotec). One installation was made in Fiddlers Ferry Power Plant in the United Kingdom.


In 2005, Mobotec Europe AB was started. Most of the ‘ROFA’ installations installed by Mobotec Europe AB were done at power plants in Poland. In 2007, this company was acquired by Nalco Holding Company and the assets and the IP licences held by this company were transferred to a Polish company named Nalco Mobotec Polska.


In 2013, Remark-Rozruch SA, a Polish company bought Nalco Mobotec Polska. An affiliated company to Remark-Rozruch (RRTec Sp) was in charge of making the ‘ROFA’ installations at power plants in Poland and countries located in Eastern Europe.


In 2014, Remark-Rozruch changed its name to SBB Energy SA (the applicant). Nalco acquired Mobotec USA in December 2007. At the same time the acquisition came about, the EUTM proprietor entered a license agreement with Mobotec USA, Inc. on 06/12/2007.


According to the Mobotec License agreement, ‘ROFA’ as a trade mark is licensed to Mobotec USA with a right to sublicense to others. The trade mark ‘ROFA’ has been sublicensed to the applicant and its affiliated companies and they have paid royalties for that sublicense.


Mobotec USA’s license to use the trade mark ‘ROFA’ was extended to also cover a number of other companies which were initially part of the Nalco group of companies.


From 2013, the Power Industrial Group Ltd (UK) with its affiliates Emmtec Ltd (UK), PJD Group Ltd (UK) and Mobotec UK Ltd (UK) also had the right from the EUTM proprietor to use the trade mark ‘ROFA’, and used it in the United Kingdom with the consent of the EUTM proprietor between 2013 and 2016.


In Poland and the Czech Republic, RRTec SP and SBB Energy SA (the applicant) have used and are still using the trade mark ‘ROFA’.


The applicant and its affiliated companies have used the trade mark ‘ROFA’ in Poland and the Czech Republic and paid substantial royalties for its use. The applicant stopped paying for its use in January 2016. The applicant was entitled to use the trade mark ‘ROFA’ until the beginning of the year 2017 as long as it paid a royalty. The applicant and its affiliated companies were no longer entitled to use the trade mark ‘ROFA’ from 11/03/2017. However, they are still using it but without paying royalties despite a license agreement between Nalco Mobotec LLC and Nalco Mobotec Polska, dated 29/11/2012, in which Nalco Mobotec LLC granted the licensee (the applicant) the right to use Nalco Mobotec’s trade marks. Since 2017, the EUTM proprietor offered to discuss with the applicant, and its affiliated companies, a new license agreement regarding the right to use the trade mark ‘ROFA’. The applicant refused.


The trade mark ‘ROFA’ was used in connection with two projects (power plants) in the United Kingdom, namely:


  1. Rugeley Power Station (UK): in 2014, the Power Industrial Group Ltd was commissioned to do an evaluation of operational, mechanical and technical options to incrementally reduce NOx emissions from the coal fired units. This project was carried out under the trade mark ‘ROFA’.


  1. Fiddlers Ferry Power Station (UK): ‘ROFA’ technologies were installed on the Fiddlers Ferry Power Station which covered both ‘ROFA’ branded goods in Class 11 as well as services in Classes 37 and 42. The use of the trade mark ‘ROFA’ was made during April 2012 to December 2015. This project was sold to Keapy Generation Ltd by Nalco Mobotec Inc’s affiliate Nalco. In June 2013, the above project was transferred to The Power Industrial Group Ltd. The project amounted, in total, to approximately GBP 25 588 897 and the aforesaid company used both the trade mark ‘ROFA’ and the ‘ROFA’ technology with Mobotec’s consent.


Mobotec did extra work at Fiddlers Ferry Power Station with regard to a NOx Abatement retrofit. This work was carried out under the trade mark ‘ROFA’ outside the scope of the main project and main contract at Fiddlers Ferry Power Station. Modernisation in a project like Fiddlers Ferry is a huge project that takes a long time to complete and, up to December 2015, when the project as such was finally completed, the trade mark ‘ROFA’ was continuously used for goods and services covered by the registration.


Use of the trade mark ‘ROFA’ in Poland has been made by the applicant and its affiliated companies, namely by Nalco Mobotec Polska Sp from 2007 to 2013 and Remak-Rozruch SA with its affiliated company RRTec SP.Z o.o from 2013 to 2014.


Mobotec had licenced the trade mark ‘ROFA’ and the licensee sublicensed it to the applicant and its associated companies. Royalties were paid for this for many years. It is fair and reasonable to assume that at all of the modernisations made by the applicant and its associated companies at power plants in Poland and Eastern Europe concern the same goods and services as in the previous projects.


For obvious reasons Mobotec has not had access to documents from the applicant and its affiliated companies which relate to their use of the trade mark ‘ROFA’ for power plants in Poland. Nonetheless, Mobotec has been able to find out through publicly available documents that the applicant and its affiliated companies have, in fact, used the trade mark ‘ROFA’ for goods and services covered by Classes 11, 37 and 42 of the registration.


At Opole power station in Poland, payments were made by RRTec SP to Mobotec LLC for royalties according to the license agreement, dated 29/11/2012. Payments were made from 2013 to 2016. USD 1 382 876 was paid. In the EUTM proprietor’s opinion all projects made by the applicant and its affiliated companies in Poland are the same or at least highly similar to the project at Fiddlers Ferry.


Patnów power station is another Polish power plant where the applicant and/or its affiliated companies have used the trade mark ‘ROFA’ for goods and services in Classes 11, 37 and 42.


The EUTM proprietor concluded that the trade mark ‘ROFA’ has been genuinely used for the goods and services during the relevant period. Use has taken place at least in Poland and the United Kingdom and also possibly in the Czech Republic by companies allowed to use the trade mark ‘ROFA’ at least between 2013-2016. The applicant and its affiliated companies are still using the trade mark ‘ROFA’ in at least Poland, but without the EUTM proprietor’s permission and without paying the EUTM proprietor for such use.


In reply, the applicant argued that the contested EUTM has not been genuinely used, and criticised each piece of evidence taken individually. In particular, it argued that the explanations and evidence presented by the EUTM proprietor are either unreliable, do not concern the contested mark or have nothing to do with the relevant goods and services. It pointed out that the EUTM proprietor admitted that it has not used the contested trade mark itself within the relevant period.


The license agreement between the EUTM proprietor and Mobotec USA refers to ‘ROFA’ trade marks registered within the territory of Sweden, Canada and the USA, and not in relation to the EUTM since this trade mark does not constitute the object of the agreement. Furthermore, this agreement does not demonstrate any real commercial aspect of the use of the contested mark nor has the continuity between the entities who signed this agreement been shown.


The EUTM proprietor described various kinds of relationships between the companies but failed to give evidence of continuity in their relationships. The EUTM proprietor stated that SBB Energy was a sublicensee of the trade mark ‘ROFA’ but it submitted no proof in support of this statement.


The non-binding letter and the agreement, dated 29/11/2012, do not confirm the relationships between the companies and the use of the EUTM ‘ROFA’.


The EUTM proprietor indicated use of the trade mark in Poland and in the United Kingdom by two companies but it did not provide evidence as to whether the trade mark was actually used, and does not specify which particular trade mark was the object of such use and within which scope.


The evidence does not demonstrate any actual cooperation between the EUTM proprietor and Rugeley power station or Fiddlers Ferry Power station.


The material submitted by the EUTM proprietor in support of the use of the contested mark in the United Kingdom is of no relevance. The documents do not confirm the relationship of the EUTM proprietor with the companies in the United Kingdom, neither do they give evidence of the genuine use of the contested trade mark for the goods and services for which it was registered. In particular, there is no proof of actual distribution of goods and services marked with the EUTM in the United Kingdom.


The EUTM proprietor acknowledged that it is not possible to present definitive data or information related to the use of the trade mark in the territory of Poland. The information included in the letter is limited to assumptions, speculations and probabilities. The EUTM proprietor, in support of the use of the contested trade mark in Poland, submitted the agreement, dated 29/11/2012. This agreement does not confirm the relationship between the companies nor does it confirm the use of the EUTM ‘ROFA’.


Bank transfers have been made between RRTec and Mobotec LLC but no proof has been presented to confirm that they concern the EUTM. Therefore, they do not constitute proof of use of the EUTM in the territory of Poland.


The EUTM proprietor presented mutually contradictory standpoints with regard to the relationship with the applicant. In 2018, the EUTM proprietor sent a warning letter to the applicant in which it raised an infringement by the applicant of the right deriving from the registration of the EUTM.


The EUTM proprietor submitted printouts of various kinds from the Google search engine, but these documents demonstrate no relationship or reference between the Polish companies and the EUTM proprietor.


The EUTM proprietor did not establish that any use of the trade mark took place and did not establish the extent of use.


The applicant submitted the following evidence as proof of use:


  • Exhibit 1: a letter of the EUTM proprietor’s representative to the applicant, dated 16/10/2018.


In its final observations, the EUTM proprietor maintained that use of the trade mark ‘ROFA’ has been made by companies that have had the right to use it. The license agreement, dated 06/12/2007, was signed between the EUTM proprietor and Mobotec USA Inc., the agreement also governed some trade marks, in particular ‘ROFA’.


In December 2007, Nalco Inc purchased Mobotec USA Inc and renamed the company to Nalco Mobotec LLC.


On 29/11/2012, Nalco Mobotec LLC and Nalco Mobotec Polska SP.zoo, later renamed RRTec (the applicant) signed a license agreement. In the agreement, the licensee (the applicant) was given some rights regarding Mobotec’s trade marks in 23 Eastern European countries. In the agreement, it is stipulated that the licensee will not use any other trade mark or designation on the goods or services than the trade mark ‘ROFA’. In April 2013, an application for the contested EUTM was submitted by the EUTM proprietor and this trade mark right was integrated into the license agreement, dated 06/12/2007, because in this license agreement, the licensee (Nalco Mobotec) is granted a worldwide license and any other subsequent registrations of the mark ‘ROFA’ in any other countries.


The applicant has been paying license fees for the know-how behind the ‘ROFA’ technologies and also for its use of the trade mark ‘ROFA’ as listed in Exhibit A of the agreement of 29/11/2012. The document for the bank transfers clearly states ‘Royalties according to said licensee agreement dated 29/11/2012’. In January 2016, the applicant made the last payments of royalties according to the license agreement, dated 29/11/2012. In March 2017, Nalco Mobotec terminated the right to use the above license for SBB Energy (the applicant) in all countries.


The EUTM proprietor believed that 32 units (power plants) had been installed with technologies and trade marks emanating from Mobotec in Eastern Europe and that the trade mark ‘ROFA’ had been used in connection with all these units. There has been an extensive use of the trade mark ‘ROFA’ with the consent of the applicant or licensees.



GROUNDS FOR THE DECISION


According to Article 58(1)(a) EUTMR, the rights of the EUTM 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 15/08/2013. The revocation request was filed on 19/12/2018. 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 19/12/2013 to 18/12/2018 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.


On 24/04/2019, the EUTM proprietor submitted the following evidence as proof of use:


  • Exhibit 1: a license agreement, dated 06/12/2007, between Mobotec AB (licensor) and Mobotec USA, Inc.(licensee). The license provides to Mobotec USA an exclusive license to operate under the licensor’s patents, know-how and the following trade marks: US trade mark registration No 2 707 041 for the word mark ‘ROFA’, Canadian trade mark registration No TMA 597 797 for the word mark ‘ROFA’, Swedish trade mark registration No 306 852 for the word mark ‘ROFA’, international trade mark registration No 865 564 for the word mark ‘ROFA’ (Mobotec USA has been Nalco Mobotec LLC since December 2007 – Exhibit 3).


  • Exhibit 2: a non-binding letter of intent for Nalco Company and Mobotec AB LLC, dated 28/02/2013. Proposal for sale of Nalco Mobotec LLC., from the vice President of Nalco WPS Division to the Chief Executive Officer PJD Group Ltd.


  • Exhibit 3: a letter from the law firm Potter Clarkson to, Mobotec AB, dated 31/05/2013. It is indicated that PJD Group Ltd is expecting to acquire Nalco Mobotec LLC in the coming weeks. PJD requested an updated agreement to extend the license to EUTM No 11 712 304 for the word mark ‘ROFA’.


  • Exhibit 4: a letter from Mobotec AB to the Tech. Director of the Power Industrial Group Ltd, dated April 2014. According to the proprietor, the license would include the registrations identified in Appendix 1 and also any other subsequent later registrations of the trade mark ‘ROFA’ in any other countries.


  • Exhibit 5: business cards of SBB Energy and ORRTEC members. They are dated April 2017.


  • Exhibit 6: a printout of the applicant’s website. It refers to the company’s history.


  • Exhibit 7: a license agreement, dated 29/11/2012, between Nalco Mobotec LLC and Nalco Mobotec Polska Sp.z.o.o. It refers to patents, know-how and international registrations No 865 564 for the word mark ‘ROFA’ and No 868 308 for the word mark ‘ROTAMIX’.


  • Exhibit 8: a proposal from Mobotec for Rugeley Power Ltd, dated February 2014, entitled ‘Evaluation of NOx Abatement options for Rugeley power station’.


  • Exhibit 9: a contract award, dated 13/02/2014. Rugeley Power Limited accepted the proposal of Nalco Mobotec UK for the execution and completion of works for Rugeley power station. The maximum price is GBP 100 000. The commencement date of the contract is 12/02/2014.


  • Exhibit 10: a report from Nalco Mobotec to Fiddlers Ferry Power Station, dated 02/04/2012, entitled ‘CFD analysis of Fiddlers Ferry Power Station Unit 2 for ‘rofa’/‘Rotamix installation’.


  • Exhibit 11: a final contract (not signed), dated 18/05/2012, between Keadby Generation Limited and Nalco Mobotec (UK) Limited relating to works of advanced NOx Abatement Technology at Fiddler’s Ferry Power Station.


  • Exhibit 12: documents, dated 15/09/2013, 16/09/2013 and 19/09/2013 in relation to the tuning of the ‘ROFA’ system.


  • Exhibit 13: a payment certificate, dated 29/04/2014, for the FF Advanced NOx Abatement project. The contractor is Nalco Mobotec UK Ltd. Amount due is GBP 165 100.


  • Exhibit 14: a completion certificate. Project number GT00031, project entitled ‘FF NOx Abatement Retrofit’. The contractor is Nalco Mobotec UK Ltd. The completion was achieved on 31/01/2014.


  • Exhibit 15: a letter from Mobotec to Fiddler’s Ferry Power Station, dated 27/01/2015, in relation to failures due to elevated dust levels.


  • Exhibit 16: an email from SEE Energy to Mobotec, dated 21/08/2015, in relation to defects in the ZoloBoss System.


  • Exhibit 17: a letter from Mobotec to SEE Energy, dated 23/10/2015. Reply to the email of SEE Energy, dated 21/08/2015 (Exhibit 16). There is one reference to ‘ROFA’ testing on 30/10/2014.


  • Exhibit 18: an email from SEE Energy to Mobotec, dated 10/12/2015. Reply to the letter from Mobotec (Exhibit 17) in relation to Zoloboss System combustionopt and low NoxTuning.


  • Exhibit 19: a PowerPoint in relation to ‘ROFA’ and ‘ROTAMIX’ installations at Opole Power Station (two pages are not dated).


  • Exhibit 20: payments made by RRTec Sp to Mobotec LLC for Royalties according to the licence agreement, dated 29/11/2012. Payments were made from 2013 to 2016. The total amount is USD 1 382 876. There is no indication of the source of the document.


  • Exhibits 21-26: six bank transfers from RRTec to Mobotec LLC for payments of royalties according to the licence agreement, dated 29/11/2012. The sum of USD 169 932 on 10/03/2014; the sum of USD 202 676 on 02/05/2014; the sum of USD 411 295 on 31/10/2014; the sum of USD 40 978 on 02/03/2015; the sum of USD 104 748 on 07/04/2015 and the sum of USD 145 203 on 14/01/2016.


  • Exhibit 27: a proposal from Nalco Mobotec for NOx reduction at Opole Power plant, dated 08/08/2008.


  • Exhibit 27b: an implemented contract ,one page (not dated).


  • Exhibit 28: a printout of the applicant’s website (SBB Energy), dated 01/04/2019. It refers to retrofit projects in the power industry and other sectors at Chvaletice power plant (2016-2017), Opole (2013-2015) and Patnów (2013-2015).


  • Exhibit 29: an article in Polish partially translated (not dated).


  • Exhibit 30: a printout of the website, www.grupag7.com. References to ‘ROFA’ are dated between 2009 and 2013.


  • Exhibit 31: a printout of Mr M Z’s Linkedin. A reference is made to the implementation of ‘RROFA’ system for OP-430 boiler at ZEC Karolin CHP plant in Poznan CHP plant.


  • Exhibit 32: an email, dated 03/03/2018, from Mobotec AB to Mr F. It includes internet searches. One of them indicates that ‘Phase III includes the installation of ‘ROFA’ (RROFA) and Rotamix on boiler 2. The date of completion is planned for the 2nd half of the year 2016’.


  • Exhibit 33: a printout of the applicant’s website (SBB Energy) entitled ‘mechanical erection/installation’. The works were done by the company between 2006 and 2015.


  • Exhibits 34-36: a list of results of a search in Google for the terms ‘Opole power station ‘ROFA’. Many of the references including ‘Opole’ and ‘ROFA’ are dated before the relevant period.


  • Exhibit 37: a printout of the applicant’s website (SBB Energy). Reference is made to the installation of ‘RROFA’ at Opole power plant and it is indicated that the date of completion of the investment is planned for the second half of 2016.


  • Exhibit 38: a translation of a letter of reference for PAK Serwis SP z.o.o. From September 2011 to February 2012, Pak Serwis carried out, as a subcontractor, the task entitled ‘Modernisation of K5 boiler at Patnów Power plant in order to limit NOx emission’.


  • Exhibit 39: a document entitled ‘Energoprojekt- Katowice SA’. It indicates that the project ‘inspection of the detailed documentation for the process discipline for the boiler at Patnów Power plant’ was completed in 2014.


  • Exhibit 40: a report, dated 29/04/2017, entitled ‘adaptions of polish coal fired power plants to meet existing IED and new emission limits based on Patnów power plant’.


  • Exhibits 41- 42: a list of results of a search in Google for the terms ‘Bedzin power plant ‘Rofa’.


  • Exhibit 43: a list of results of a search in Google for the terms ‘Lagisza power plant ‘Rofa’.


  • Exhibit 44: an article, dated 24/01/2011, entitled ‘Nalco Mobotec signs major Air protection contract in Poland with Zespol Elektrowni PAK SA’.


  • Exhibit 45: a list of results of a search in Google for the terms ‘Patnów power station ‘Rofa’’ and a printout of the applicant’s website (SBB ENERGY), referring to the ‘ROFA’ system.


  • Exhibit 46: a list of results of a search in Google for the terms ‘polimex mostostal ‘rofa’.


  • Exhibit 47: a list of results of a search in Google for the terms ‘Belchatow power plant ‘Rofa’.


  • Exhibit 48: a printout of the applicant’s website (SBB Energy) entitled ‘retrofit projects in power industry and other sectors’.


  • Exhibit 49: a list of results of a search in Google for the terms ‘chvaletice power plant ‘Rofa’.


  • Exhibit 50: a list of results of a search in Google for the terms ‘edf gdnynia ‘Rofa’.


  • Exhibit 51: a printout of the applicant’s website (SBB Energy) entitled ‘mechanical erection/ installation’.


  • Exhibits 52-53: a list of results of a search in Google for the terms ‘Patnów power station ‘Rofa’.


  • Exhibits 54-55: a list of results of a search in Google for the terms ‘turow power plant ‘Rofa’.


  • Exhibit 56: a list of results of a search in Google for the terms ‘belchatow power plant ‘Rofa’.


  • Exhibit 57: a leaflet of MOBOTEC entitled ‘Emissions control and combustion optimisation’.



Assessment of genuine use — factors


According to Articles 18(1) and 47(2) EUTMR, it is in general the owner who has to put the earlier registered mark to genuine use. In the present case, the proprietor clearly specified that it has not used the EUTM ‘ROFA’ by itself during the relevant period.


However, according to Article 18(2) EUTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor. This means that the owner must have given its consent prior to the use of the mark by the third party (28/04/2016, R 240/2015‑1, silente PORTE & PORTE (Fig.), § 29). Acceptance later is insufficient.


At the evidence stage, it is prima facie sufficient that the proprietor only submits evidence that a third party has used the mark. The Office infers from such use, combined with the proprietor’s ability to present evidence of it, that the proprietor has given prior consent. However, the proprietor itself explained that it has not had access to documents from the applicant and its affiliated companies in relation to their use of the trade mark ‘ROFA’ for power plants in Poland and Eastern countries. The proprietor submitted only publicly available documents to demonstrate that the applicant and its affiliated companies have used the trade mark ‘ROFA’ for the contested goods and services.


As the applicant explicitly contests the proprietor’s consent, the burden is on the proprietor to submit further evidence that it gave its consent to use the mark.


To show its consent, the proprietor submitted two license agreements:


The first one is dated 06/12/2007, it is concluded between Mobotec AB (licensor) and Mobotec USA, Inc. (licensee). The license provides to Mobotec USA an exclusive license to operate under the licensor’s patents, know-how and the following trade marks: US trade mark registration No 2 707 041 for the word mark ‘ROFA’, Canadian trade mark registration No TMA 597 797 for the word mark ‘ROFA’, Swedish trade mark registration No 306 852 for the word mark ‘ROFA’, international trade mark registration No 865 564 for the word mark ‘ROFA’. Therefore, this agreement does not refer, and cannot refer (as it is dated 2007), to the contested EUTM. However, according to the proprietor, since the licensee is granted a ‘worldwide’ licence under the trade marks, this means that the license includes not only the above indicated registrations but also any other subsequent registrations including the contested EUTM. The Cancellation Division considers that even assuming that such an analysis is correct, it has to be noted that the agreement of 06/12/2007 has been transferred to Nalco Mobotec LLC (because the latter bought Mobotec USA) but not to Nalco Mobotec Polska SP. Indeed, the relations between Nalco Mobotec LLC and Nalco Mobotec Polska SP are governed by a new agreement, dated 29/11/2012. This is the reason why the payments made by RRTec SP to Mobotec LLC for royalties have been done according to the license agreement dated 29/11/2012, and not to the agreement dated 06/12/2007.


This license agreement dated 29/11/2012 clearly specifies under Article 1, point F that ‘The term ‘trade marks’ shall mean only the trade marks and/or trade names listed in Exhibit A attached hereto’ and Exhibit A only refers to the international registrations No 865 564 for the word mark ‘ROFA’ and No 868 308 for the word mark ‘ROTAMIX’ but does not refers to the contested EUTM. The agreement was signed by the parties after the filing of the contested EUTM. Therefore, they could have added that the agreement also includes the contested EUTM, if that had been their intention, but they did not.


Therefore, the proprietor’s consent has not been shown for the use carried out in Poland and Eastern European countries by Nalco Mobotec Polska Sp and its affiliates namely Remark-Rozruch SA, RRTec SP and SBB Energy SA. Consequently, in view of the above findings, the EUTM proprietor has failed to demonstrate genuine use of the contested EUTM in these countries. It remains necessary to examine the question of genuine use by the EUTM proprietor (or with its consent) in the United Kingdom.


According to the proprietor, the use of the trade mark ‘ROFA’ in the United Kingdom has been carried out in connection with two power plants (Rugeley Park and Fiddlers Ferry).


Genuine use of a trade mark cannot be proven 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).


The indications and evidence required to provide proof of use must concern the place, time, extent and nature of use of the EUTM proprietor’s trade mark for the relevant goods and services.


These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the EUTM proprietor is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).


At this point, the Cancellation Division considers it appropriate to focus the assessment of the evidence on the criteria of time and extent of use; in its opinion, the evidence submitted by the EUTM proprietor is insufficient to prove that these requirements have been met.



Time of use


The EUTM proprietor has to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 19/12/2013 to 18/12/2018.


The proprietor argued that in May 2012, ‘ROFA’ and ‘ROTAMIX’ technologies were installed on the Fiddlers Ferry Power Station. The project would cover both ‘ROFA’ branded products in Class 11 as well as services in Classes 37 and 42.


This project was sold to Keaby Generation Ltd by Nalco Mobotec Inc’s affiliate Nalco Mobotec UK in May 2012. In June 2013, the above said project was transferred to The Power Industrial Group Ltd. The proprietor refers in this respect to Exhibits 10 to 12.


Exhibit 10 is a report submitted by Nalco Mobotec to Fiddlers Ferry Power Station, it is entitled ‘CFD analysis of Fiddlers Ferry Power Station Unit 2 for ‘rofa’/Rotamix installation’ This report is dated 02/04/2012. Numerous references to the sign ‘ROFA’ are made in the document.


Exhibit 11 is the final contract between Keadby Generation Limited and Nalco Mobotec (UK) Limited. It relates to works of advanced NOx Abatement Retrofit at Fiddler’s Ferry Power Station. The contract is not signed but is dated 18/05/2012.


Exhibit 12 comprises documents which refer to the tuning of ‘ROFA’ and ‘ROTAMIX’ systems. They are dated 15/09/2013, 16/09/2013 and 19/09/2013.


The report (Exhibit 10) clearly refers to ‘ROFA’ technologies. However, this report, the final contract (Exhibit 11) and the tuning documents (Exhibit 12), are all dated before the relevant period. Furthermore, it is indicated several times in the contract that the completion date for the whole of the works is 31/12/2013 (e.g. pages 7, 29 and 32). Therefore, it appears from these documents that the design and construction of a NOx Abatement facility at Fiddler’s Ferry Power Station under the sign ‘ROFA’ were done before the beginning of the relevant period and completed at the same time the relevant period started. Therefore, the Exhibits 10-12 and, consequently, the main Fiddlers Ferry project do not refer to the relevant time period.


The remaining evidence related to the extra work at Fiddlers Ferry is dated within the relevant period.



Extent of use


It must be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the EUTM proprietor has seriously tried to acquire a commercial position in the relevant market for the contested goods and services.


Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).


The proprietor argued that Mobotec did extra work at Fiddlers Ferry Power Station for NOx Abatement retrofit. According to the proprietor these works were made under the ‘ROFA’ trade mark, outside of the scope of the main project and the main contract at Fiddlers Ferry. The proprietor referred to Exhibits 13-18.


It appears from these documents that some failures were detected after the completion of the main project. These defects concern three aspects:


  • Dust emissions;


  • ZoloBOSS performance;


  • Boiler Optimisation implementation.


With the exception of the repair of the ‘ROFA’ fan barring gear freewheel coupling units (but this work was completed without additional compensation events to the client) and a test of the ‘ROFA’ system for which no information has been provided. Exhibits 13-18 refer mainly to the Zoloboss system and to the default causing high dust emission. They do not demonstrate any additional work in relation to the ‘ROFA’ technology. To the contrary, the proprietor indicates in item 15 that ‘ROFA’ and ‘ROTAMIX’ systems are operating. Therefore, the proprietor has not proven that the additional work documented by Exhibits 13-18 was a genuine use of the sign ‘ROFA’ as the failures in question concern other failures than those referring to the ‘ROFA’ technologies.


The proprietor also argued that in 2014, the Power Industrial Group Ltd was commissioned to do an evaluation of operational, mechanical and technical options to incrementally reduce NOx emissions from the coal fired units at Rugeley power station. The proprietor submitted Exhibits 8 and 9 to evidence the use of the EUTM ‘ROFA’ at Rugeley Park.


Exhibit 8 is a proposal, dated February 2014, from Mobotec UK to Rugeley Power Ltd. The purpose of this proposal is the evaluation of NOx abatement options for Rugeley power station. However, contrary to the proprietor’s observations, it does not appear that this project was carried out under the ‘ROFA’ trade mark. Indeed, the five-page document only refers once to the sign ‘ROFA’, in particular only in one of the 10 points on which the study was focused, namely ‘Evaluate potential to optimize current BOFA design and/or upgrade to “ROFA”’. Furthermore, it appears that the upgrade to ‘ROFA’ is not certain as it depends on the result of the evaluation. No information was given concerning the outcome of the evaluation.


Exhibit 9 is a contract award, dated 13/02/2014, in which Rugeley Power Limited accepts the proposal of Nalco Mobotec UK for the execution and completion of works at Rugeley power station. The contract price is a maximum value of GBP 100 000 and the commencement of the contract is 12/02/2014. The contract award makes no reference at all to the trade mark ‘ROFA’. Reference to an amending email, dated 11/02/2014, is made twice in the document but this email has not been submitted by the proprietor. Therefore, the Cancellation Division cannot determine if the contract has been performed and if the amendment has had an impact on the use of the ‘ROFA’ trade mark.


In consequence, the Cancellation Division has no solid or objective indications relating to the extent of use (the commercial volume, the territorial scope, the duration and the frequency of use) and it cannot be deduced from the evidence submitted that the EUTM proprietor had seriously tried to acquire a commercial position in the relevant market during the relevant period in relation to the relevant goods and services.


For the sake of completeness only, it should be added that the extent of use of the contested trade mark ‘ROFA’ in Poland and Eastern European countries has not been proven either. The proprietor argued that the use of the trade mark ‘ROFA’ in the Czech Republic and Poland has been carried out by the applicant and its affiliated companies at a number of different power plants. However, as it has been seen above, the proprietor has not proven that it gave its consent to the use of the contested EUTM in Poland and Eastern European countries. Therefore, the EUTM proprietor has failed to demonstrate genuine use of the contested EUTM in these countries. However, as this argument was raised by the EUTM proprietor, that the documents filed do not provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Indeed, the proprietor has submitted documents showing payments made from 2013 to 2016 by RRTec SP to Mobotec LLC for royalties according to the license agreement, dated 29/11/2012. Apart from the fact that the agreement does not refer to the contested EUTM, it should be noted that the agreement covers not only the international trade mark ‘ROFA’ but also the trade mark ‘ROTAMIX’, three patents and know-how. Since there are no details regarding the distribution of the payments, it is impossible to determine for which rights the payment of Royalties corresponds.


The proprietor submitted other evidence regarding power plants in Poland, Bedzin Power Station, Turow Power station, EDF Gdynia, Wroclaw Power plant, Poznan Power plant, Belchatow power plant, Rubnik power plant, Veolia Energia, or in the Czech Republic Chvaletice Power plant. This evidence is mainly comprised of printouts of internet searches (Exhibits 34-36, 41, 42, 43, 45, 46, 47, 49, 50 and 52-55), printouts of the applicant’s website (Exhibits 28, 33, 37, 48 and 51), articles dated outside the relevant period (Exhibit 44), printout of Linkedin (Exhibit 31), and an article and report (Exhibits 40 and 44). These documents are not conclusive as regards the commercial extent of the use. Although they demonstrate the existence of the power plants, they do not prove that the goods and services have been effectively commercialised nor to what extent.


It follows that it is not possible to conclude, on the basis of the evidence submitted, without resorting to probabilities and presumptions, that the trade mark ‘ROFA’ was genuinely used during the relevant period for the relevant goods and services, to a sufficient extent.



Overall assessment


An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant services (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 43).


The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).


It follows from the above that, even taken as a whole, the evidence submitted by the EUTM proprietor is insufficient to demonstrate use of the EUTM for the relevant goods and services.



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.


According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 19/12/2018. 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



Nicole CLARKE

Richard BIANCHI

Andrea VALISA



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.

Latest News

  • FEDERAL CIRCUIT AFFIRMS TTAB DECISION ON REFUSAL
    May 28, 2021

    For the purpose of packaging of finished coils of cable and wire, Reelex Packaging Solutions, Inc. (“Reelex”) filed for the registration of its box designs under International Class 9 at the United States Patent and Trademark Office (“USPTO”).

  • THE FOURTH CIRCUIT DISMISSES NIKE’S APPEAL OVER INJUNCTION
    May 27, 2021

    Fleet Feet Inc, through franchises, company-owned retail stores, and online stores, sells running and fitness merchandise, and has 182 stores, including franchises, nationwide in the US.

  • UNO & UNA | DECISION 2661950
    May 22, 2021

    Marks And Spencer Plc, Waterside House, 35 North Wharf Road, London W2 1NW, United Kingdom, (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Grays Inn Road, London WC1X 8BT, United Kingdom (professional representative)