CANCELLATION DIVISION



CANCELLATION No 35 742 C (REVOCATION)


Lidl Stiftung & Co. KG, Stiftsbergstraße 1, 74172 Neckarsulm, Germany (applicant), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)


a g a i n s t


Sweet Street Desserts, Inc.,722 Hiesters Lane, Reading, Pennsylvania 19601, United States of America (EUTM proprietor), represented by Kilburn & Strode LLP, Laapersveld 75, 1213 VB Hilversum, Netherlands (professional representative).


On 29/09/2020, the Cancellation Division takes the following



DECISION



1. The application for revocation is partially upheld.


2. The EUTM proprietor’s rights in respect of European Union trade mark No 11 982 816 are revoked as from 27/05/2019 for some of the contested goods and services, namely:


Class 21: Household or kitchen utensils and containers; boxes; caddies; cake stands; cups; cake moulds; candy boxes; non-electric portable cold boxes; thermally insulated containers for food; pastry bags; containers for household or kitchen use; cookery moulds; cookie jars; cups of paper or plastic; kitchen containers.


Class 30: Bread, confectionery, chilled and frozen confections; caramels, chocolate, chocolate confections, confectionery bars, dessert mousses, fondants, ice cream and ice cream products, including powders for ice cream, jellies and fruit jellies, marzipan, mousses, pralines, puddings, quiches, scones, sherbets, sorbets and strattas.


Class 35: Retail services, including online, connected with the sale of bread, pastry, baked savoury goods, snacks, confectionery, chilled and frozen confections, desserts, biscuits, blondies, brownies, brulees, bundt cakes, cakes (sweet), cakes (savoury), cheesecakes, caramels, chocolate, chocolate confections, confectionery bars, cereal bars, snack food (cereal based), cookies, crumbles, cupcakes, dessert mousses, fondants, gingerbread, gluten-free desserts, ice cream and ice cream products, powders for ice cream, jellies and fruit jellies, layer cakes, macaroons, marshmallow bars and squares, marzipan, molten cakes, mousses, pastries, pancakes, pies (sweet), pies (savoury), pralines, puddings, pullman cakes, petit-beurre biscuits, petits fours, quiches, scones, sherbets, sorbets, strattas, sweets, tarts, tiramisus, tortes, household or kitchen utensils and containers, boxes, caddies, cake stands, cups, cake moulds, candy boxes, non-electric portable cold boxes, thermally insulated containers for food, pastry bags, containers for household or kitchen use, cookery moulds, cookie jars, cups of paper or plastic and kitchen containers.


Class 43: Services for providing food and drink; catering services; restaurant and café services.


3. The European Union trade mark remains registered for all the remaining goods, namely:


Class 30: Pastry, baked savoury goods, chilled and frozen desserts; biscuits, blondies, brownies, brulees, bundt cakes, cakes (sweet), cakes (savoury), cheesecakes, cereal bars, snack food (cereal based), cookies, crumbles, cupcakes, gingerbread, gluten-free desserts, layer cakes, macaroons, marshmallow bars and squares, molten cakes, pastries, pancakes, pies (sweet), pies (savoury), pullman cakes, petit-beurre biscuits, petits fours, sweets, tarts, tiramisus and tortes.


4. Each party bears its own costs.



REASONS


The applicant filed a request for revocation of European Union trade mark registration No 11 982 816 ‘SWEET STREET’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:


Class 21: Household or kitchen utensils and containers; boxes; caddies; cake stands; cups; cake moulds; candy boxes; non-electric portable cold boxes; thermally insulated containers for food; pastry bags; containers for household or kitchen use; cookery moulds; cookie jars; cups of paper or plastic; kitchen containers.


Class 30: Bread, pastry, baked savoury goods, confectionery, chilled and frozen confections and desserts; biscuits, blondies, brownies, brulees, bundt cakes, cakes (sweet), cakes (savoury), cheesecakes, caramels, chocolate, chocolate confections, confectionery bars, cereal bars, snack food (cereal based), cookies, crumbles, cupcakes, dessert mousses, fondants, gingerbread, gluten-free desserts, ice cream and ice cream products, including powders for ice cream, jellies and fruit jellies, layer cakes, macaroons, marshmallow bars and squares, marzipan, molten cakes, mousses, pastries, pancakes, pies (sweet), pies (savoury), pralines, puddings, pullman cakes, petit-beurre biscuits, petits fours, quiches, scones, sherbets, sorbets, strattas, sweets, tarts, tiramisus and tortes.


Class 35: Retail services, including online, connected with the sale of bread, pastry, baked savoury goods, snacks, confectionery, chilled and frozen confections, desserts, biscuits, blondies, brownies, brulees, bundt cakes, cakes (sweet), cakes (savoury), cheesecakes, caramels, chocolate, chocolate confections, confectionery bars, cereal bars, snack food (cereal based), cookies, crumbles, cupcakes, dessert mousses, fondants, gingerbread, gluten-free desserts, ice cream and ice cream products, powders for ice cream, jellies and fruit jellies, layer cakes, macaroons, marshmallow bars and squares, marzipan, molten cakes, mousses, pastries, pancakes, pies (sweet), pies (savoury), pralines, puddings, pullman cakes, petit-beurre biscuits, petits fours, quiches, scones, sherbets, sorbets, strattas, sweets, tarts, tiramisus ,tortes, household or kitchen utensils and containers, boxes, caddies, cake stands, cups, cake moulds, candy boxes, non-electric portable cold boxes, thermally insulated containers for food, pastry bags, containers for household or kitchen use, cookery moulds, cookie jars, cups of paper or plastic and kitchen containers.


Class 43: Services for providing food and drink; catering services; restaurant and café services.


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



SUMMARY OF THE PARTIES’ ARGUMENTS


The applicant argued that the contested mark had not been used for a continuous period of five years in relation to all the goods and services for which it was registered and there had been no proper reasons for non-use.


The EUTM proprietor filed evidence of use of the contested EUTM (listed below). It argued that although part of the evidence showed use of the sign ‘SWEET STREET DESSERTS’, the word ‘DESSERT’ was descriptive in relation to the goods and services in Classes 30 and 35, the dominant and distinctive element of the mark being ‘SWEET STREET’. Therefore, the evidence showed use of the contested mark in an acceptable variation. The word ‘pie’, for which the contested EUTM was registered, could have multiple meanings for foodstuffs, including both savoury and sweet pies.


In reply, the applicant reiterated that the contested mark had not been used for a continuous period of five years and there had been no proper reasons for non-use. It requested that the contested mark should have been revoked as of 11/12/2018, which was when the five-year non-use grace period ended.


The EUTM proprietor replied that the applicant’s later request to revoke the contested mark at a date earlier than the date of the application for evocation was inappropriate.


In its final submissions, the applicant argued that there was no evidence for most of the goods and services in Classes 21, 30, 35 and 43 and for the remaining goods and services at issue, the documents filed were not sufficient to show genuine use of the contested EUTM. The majority of the documents featured the contested EUTM as the proprietor’s company name ‘SWEET STREET DESSERTS’ or included a sign which was not the mark as registered (such as ‘SS’ or ‘SWEET STREET EST. 1979’). Moreover, the use was not proven in relation to the relevant goods and services or it referred to an insignificant amount (which was a rather sporadic use and certainly not sufficient to acquire a commercial position in the relevant market). Also, most of the documents came from the sphere of the proprietor and were not supported by additional, objective and independent material, so their probative value was very low. Further, the evidence did not show use within the relevant time, at the relevant place and to a sufficient extent. Moreover, many of the documents were not in the language of the proceedings or they were undated/dated outside the relevant period, so they should have been rejected as inadmissible from the outset.


The applicant explained that it had a legitimate interest in the fixing of an earlier effective date of revocation since the proprietor had opposed the applicant’s EUTM application No 15 458 722 ‘SWEET ST.’ in opposition proceedings B 2 760 570 and its UK trade mark application No 3 374 708 ‘SWEET ST.’ in opposition procedure No 417 058, based on an alleged likelihood of confusion with, among others, the contested EUTM. In support of this request, the applicant referred to the decision of the Cancellation Division of 08/09/2019 in revocation case No 11 498 C.


The proprietor replied to the applicant’s observations. Firstly, it affirmed that the evidence showed the sign in an acceptable variation. The sign ‘SWEET STREET’ was sometimes used with the descriptive elements ‘DESSERTS’ and/or ‘est. 1979’ which did not alter the distinctive character of the sign, and the stylised variations had a very mild stylisation where the terms ‘SWEET STREET’ were clearly visible and dominant. Moreover, the affidavit provided an explanation on how the sign was used with regard to the goods and services as well as the commercial strategy behind the sign and provided substantial global figures of sales in the European Union. The additional evidence (catalogues, promotional materials, articles, photographs) displayed goods, as well as goods-related services, which showed a strong presence in the market and high promotional activity. There was an immediately perceivable link between the secondary and primary evidence, since the products and product-related services being promoted were displayed on price lists (Exhibit 5) and produced and sold in purchase orders (Exhibit 6).


The witness statement filed clearly indicated the place and date where the photographs had been taken. Furthermore, brochures clearly displayed the © year as well as the contact details for the European, UK & Ireland and Dutch offices on the final page. The proprietor therefore submitted that the applicant’s allegations regarding the time and place of use must be dismissed.


The proprietor pointed out that the numbers of the purchase orders filed as evidence of use were not consecutive, which allowed for the correct inference that these documents were just examples of sales. To that end, the claim made by the applicant that the annual turnover figures specified in the witness statement of the proprietor were not supported by the purchase orders and must be dismissed. It added that, when assessing the evidence as a whole, it must be considered that the materials submitted were sufficient to show that the EUTM proprietor had genuinely worked to maintain or create a commercial position in the relevant market and that there was sufficient information concerning the commercial volume, the duration, and the frequency of use as regards Classes 30 and 35.


As regards use of the contested sign in relation to the goods in Class 21, those could be seen contained in cups and packages pertaining to Class 21 bearing the contested sign. While the packages were not directly sold per se, they did add value to the Class 30 goods in question.


Finally, it claimed that the applicant’s arguments were substantially based on an individual assessment of each item of evidence regarding all the relevant factors. Moreover, it pointed out that the proprietor was not under any obligation to translate the evidence of use, unless it was specifically requested to do so by the Office.



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 10/12/2013. The revocation request was filed on 27/05/2019. 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 EUTMR during the five-year period preceding the date of the revocation request, that is, from 27/05/2014 to 26/05/2019 inclusive, for the contested goods and services listed in the section ‘Reasons’ above.


On 03/10/2019, the EUTM proprietor submitted evidence as proof of use.


As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.


The evidence to be taken into account is the following:


a witness statement of the vice president and managing director (International) of Sweet Street Desserts, Inc., dated 03/10/2019. It includes approximate revenue figures for the sale of confectionery, chilled and frozen confections and desserts; biscuits, brownies, blondies, cakes, cheesecakes, chocolate confections, confectionery bars, cookies, cupcakes, fondants, gluten-free desserts, layer cakes, dessert bars, marshmallow bars and squares, molten cakes, pies (sweet), puddings, petit fours, sweets, tarts, tortes in the European Union in 2014-2018. The proprietor’s goods are available to distributors and wholesalers in the European Union, who then sell them to restaurants and caterers, inter alia. It further includes a list of distributors in the European Union.


The information contained in this document is supported by the following evidence:


Exhibits 1-4: brochures for the years 2016, 2017, 2018 and 2019, which display the signs and , and show pies, cakes, crumbles, cookies, brownies, cupcakes and sweet bars. All the goods are identified. In all cases, the final page of the brochure provides a copyright notice which verifies the date of publication. According to the witness statement, the brochures are distributed to customers in the European Union to provide them with a list of the available products. On the last page of all brochures are references to various sales offices in the European Union.


Exhibit 5: a selection of price lists from 2015, 2016, 2017, 2018 and 2019, allegedly used in conjunction with the brochures distributed to customers in the European Union. The lists reproduce the signs and , where prices are indicated in euros and weight in kilos. The lists are addressed to various distributors in the European Union, as specified in the headers of all lists. The goods are identified with codes which can be cross-referenced with those included in the brochures showing pictures of them.


Exhibit 6: a selection of purchase orders dated 2014-2019, which show orders from companies located in the European Union for the purchase of goods identified with codes, which can be cross-referenced with those shown in the brochures exhibited in Exhibits 1-4.


Exhibit 6A: a printout from the website Massari S.r.l., written in Italian and dated 03/10/2019, with results from the search ‘SWEET STREET’. All of them show pictures of cakes and cupcakes.


Exhibit 7: a photograph of an EUTM proprietor’s stand at SIAL Paris, 2018, which shows the sign