CANCELLATION No 39 440 C (REVOCATION)

iRhythm Technologies, Inc., 2 Marriott Drive, Lincolnshire, Illinois 60069, United States of America (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative)

a g a i n s t

Chang-An Chou, Spittelberggasse 3, 1070 Vienna, Austria (EUTM proprietor).

On 12/08/2020, 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 12 160 412 are revoked in their entirety as from 31/10/2019.

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 12 160 412 ‘iRhythm’ (word mark), (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 9: Computer software for use in medical decision support systems; Electronic heart rate recorders [other than for medical use]; Electronic temperature monitors, other than for medical use; Remote monitoring apparatus; Pedometers; Electronic monitoring instruments, other than for medical use; Computer software for communicating with users of hand-held computers; Computer software for communicating purposes between microcomputers.

Class 10: Air inflatable limb compression apparatus; Apparatus for analysing brain wave frequencies; Apparatus for analysing measured physical signals; Apparatus for the diagnosis of cardiovascular diseases; Arterial blood pressure measuring apparatus; Belts for attaching medical monitors to patients; Belts for medical purposes; Blood pressure measuring apparatus; Blood pressure monitors; Body-fat monitors; Cardiac electrodes; Cardiographic instruments; Cardiovascular monitors; Digital electronic sphygmomanometers; Electrocardiograph apparatus; Electrocardiograph instruments; Electrocardiograph monitoring apparatus; Electrocardiographic recorders; Electrocardiographs; Electrodes for medical purposes; Electrodes for medical use; Electrodes for picking up electrophysiological parameters; Electrodes for picking up biological parameters; Electrodes for use with medical apparatus; Electroencephalographs; Electronic blood oxygen saturation monitors [for medical use]; Electronic blood oxygen saturation recorders [for medical use]; Electronic blood pressure meters [for medical use]; Electronic blood pressure monitors [for medical use]; Electronic blood pressure recorders [for medical use]; Electronic heart rate monitors [for medical use]; Electronic heart rate recorders [for medical use]; Electronic heart signal monitors [for medical use]; Electronic heart signal recorders [for medical use]; Electronic temperature monitors for medical use; Electronic temperature recorders for medical use; Heart monitors; Heart monitors to be worn during exercise; Heart rate calculators; Heart rate monitors; Heart signal monitors; Heartbeat measuring apparatus; Impulse measuring instruments for medical use; Instruments for massage; Massage apparatus, electric or non-electric; Medical apparatus for measuring the oxygen content of blood; Medical apparatus for neurographic purposes; Medical electrodes; Medical masks; Medical pulse pressure transducers; Meters for measuring blood glucose; Patient monitoring instruments; Patient monitoring sensors and alarms; Transcutaneous electrical nerve stimulators; Transcutaneous electrical muscle stimulators; Transcutaneous electrical nerve stimulation electrodes; Transcutaneous electrical nerve stimulation instruments; Temperature measuring instruments for medical use; Temperature meters for medical use; Temperature monitors for medical use; Temperature sensing apparatus for medical use; Temperature sensors for medical use; Sphygmomanometers; Sphygmotensiometers; Pulse measuring devices; Pulse meters; Pulse oximeters; Pulse rate monitors; Pumps for medical purposes; Radio cardiographic apparatus for medical purposes; Respiration monitors; Acupuncture apparatus; Apparatus for electrical muscle stimulation; Apparatus for nerve stimulation; Apparatus for the electrical stimulation of groups of muscles; Apparatus for the stimulation of acupuncture points; Apparatus for the therapeutic stimulation of the muscles; Apparatus for the therapeutic stimulation of the body; Electrical nerve stimulators; Electro-stimulation apparatus for use in therapeutic treatment; Electronic stimulator for medical use; Nerve muscle stimulators; Skin temperature indicators for medical use.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested mark has not been put to genuine use during a continuous period of five years. Having reviewed the evidence submitted by the proprietor, the applicant contests the evidence and argues that it is insufficient to prove genuine use.

The EUTM proprietor argues that the evidence is sufficient to prove use of the contested sign. He claims that he has sold certain ‘Vion’ goods which contain a software package that is branded ‘iRhythm’ and provides orders and invoices from 2016-2019 and a picture of a CD cover and gift box for a ‘Vion’ product bearing the ‘iRhythm’ sign. The evidence will be listed in detail further below.

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 16/01/2014. The revocation request was filed on 31/10/2019. 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 EUTM during the five-year period preceding the date of the revocation request, that is, from 31/10/2014 to 30/10/2019 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 10/01/2020 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

 Items 1-6: Orders and invoices issued by MD Biomedical dated between 2016-2019 for the sale of goods indicated for example as 880E, BP700X, BP750X, ‘Vion. ‘880E ECG-Pen’ etc to companies in Germany, Italy, the Netherlands, Poland, Spain and the UK.

 Item 7: Picture of a gift box containing a Vion.ECG Pen 800E which indicates on the back of the box that it contains a “iRhythm” technology along with another technology.

 Item 8: Picture of a Software CD which bears the trademark ‘BP ECG Studio’ and indicates in smaller letters that it contains “iRhythm” analysis technology along with another technology.

 Item 9: Screen Capture of software which bears the trademark ‘vion: ECG Studio’ and which indicates below that the copyright owner is MD Biomedical and that it owns the registered trade marks ‘Vion’, ‘iRhythm’ and ‘icardi’. The screen capture indicates that there is ‘iRhythm’ technology inside the software.

Preliminary remarks

The orders and invoices are issued from MD Biomedical and not from the EUTM proprietor itself.

According to Article 18(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The fact that the EUTM proprietor submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use by those other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

Assessment of genuine use – factors

Nature of use: use as a trade mark and in relation to the registered goods

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

Moreover, Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

The Cancellation Division notes that the orders and invoices all refer to goods indicated for example as ‘880E, BP700X, BP750X’, 880E ECG-Pen’ etc. The additional evidence, being the gift box, the CD and the screen capture all show use of the signs ‘Vion.ECG Pen 800E’, ‘BP ECG Studio’ and ‘vion: ECG Studio’. The goods being sold to the end customer are therefore branded under different signs than the sign at issue ‘iRhythm’ in the present case. The Cancellation Division further notes that the evidence in items 7-9 also contain an indication that the goods contain ‘iRhythm’ and ‘icardi’ technologies. So the contested sign appears on the CD package and the screenshot beneath the actual mark on the goods and on the back of the gift box in small letters. However, in this instance the sign is not being used as a trade mark to distinguish the goods from the goods of other commercial entities, nor is it use of two signs simultaneously, but only refers to a technology used within the goods which are branded under a different sign. The contested sign is not being used as the trade mark under which the goods are sold and therefore, this evidence cannot show use as a trade mark in relation to the contested goods. The fact that the sign is used in combination with a registered trade mark symbol ® does not show use of a trade mark in relation to the goods as it is not used to indicate the brand of the goods being sold but merely a component thereof. Moreover, the evidence stating that ‘iRhythm’ is a registered trade mark is not sufficient to show use as a trade mark because there is no evidence of any goods actually being marketed under said sign. Therefore, the applicant has failed to prove the use as a trade mark in relation to the registered goods.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

In the present case, the Cancellation Division considers that genuine use of the contested mark has not been sufficiently demonstrated for the relevant factor of nature of use as a trade mark in relation to the registered goods. The factors of use are cumulative and therefore the failure to prove one factor must lead to the conclusion that use has not been shown for any of the contested goods.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods 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 31/10/2019.

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

Julie, Marie-Charlotte HAMEL

Nicole CLARKE

María Belén IBARRA DE DIEGO

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.