CANCELLATION No 34 161 C (REVOCATION)

Karelia Tobacco Company Inc., Athinon Street, 24100 Kalamata, Greece (applicant), represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

a g a i n s t

Starbuzz Tobacco, Inc., 20155 Ellipse Foothill Ranch California 92610, United States of America (EUTM proprietor), represented by Kuhnen & Wacker Patent- und Rechtsanwaltsbüro, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany (professional representative)

On10/06/2020, 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 12 280 418 are revoked as from 21/03/2019 for some of the contested goods, namely for the following goods:

Class 34: Tobacco [with the exception of hookah tobacco]; smokers' articles; matches; ashtrays for smokers; cigar cases; cigars; cigarette cases; cigarette filters; cigarette tips; cigarette paper; books of cigarette papers; cigarette holders; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; pocket machines for rolling cigarettes; cigarillos; cigar cutters; cigar holders; electronic cigarettes; gas containers for cigar lighters; humidors; firestones; lighters for smokers; tips of yellow amber for cigar and cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco pipes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes; chewing tobacco; snuff; snuff boxes; spittoons for tobacco users; match boxes; match holders; matches; tobacco [with the exception of hookah tobacco]; tobacco jars; tobacco pouches; herbs for smoking.

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

Class 34: Hookah tobacco.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 12 280 418 for the word mark ‘MIST’ (the EUTM). The request is directed against all the goods covered by the EUTM, namely the following:

Class 34: Tobacco; smokers' articles; matches; ashtrays for smokers; cigar cases; cigars; cigarette cases; cigarette filters; cigarette tips; cigarette paper; books of cigarette papers; cigarette holders; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; pocket machines for rolling cigarettes; cigarillos; cigar cutters; cigar holders; electronic cigarettes; gas containers for cigar lighters; humidors; firestones; lighters for smokers; tips of yellow amber for cigar and cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco pipes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes; chewing tobacco; snuff; snuff boxes; spittoons for tobacco users; match boxes; match holders; matches; tobacco; tobacco jars; tobacco pouches; herbs for smoking.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 21/03/2019, claiming that the trade mark forming the subject of the contested European Union trade mark registration No  12 280 418 has not been put to genuine use in the European Union for a continuous period of five years prior to the date of this application for revocation (i.e. between the periods of 21/03/2014 to 20/03/2019) in relation to the contested goods in class 34. It further claims that there are no proper reasons for non-use of the registered mark or a variation which does not alter the distinctive character of the registered mark.

On 19/07/2019 the EUTM proprietor submits observations and evidence of use (listed below).

In its reply of 26/09/2019, the applicant argues that the EUTM proprietor has not provided an adequate indication of the extent of use of the challenged EUTM in the context of the tobacco industry at large, in particular due to the fact that no sales figures have been provided and the invoices have been redacted to such an extent that no monetary value is visible. The evidence shows no use other than perhaps, to a very limited extent, in relation to shisha tobacco. Moreover, the use shown for other marks that contain ‘MIST’, such as ‘BLUE MIST’ or ‘OCEAN MIST’ should be rejected since the additional elements alter the distinctive character of ‘MIST’ alone.

The applicant also contends the fact that there is no evidence of how many catalogues were distributed in the European Union, and that the invoices submitted that concern the catalogues are related only to the United States of America. Sales appear as only made to one or two customers and for extremely low quantities that, for instance, would correspond to the use of only few smokers for short periods of time. The total amount of ‘MIST’ tobacco distributed in the United Kingdom would only corresponds to 19.9 kilograms for the year 2015. Low amounts also corresponds to other years, such as 2016, 2017, 2018 and 2019, and sales to clients in the United Kingdom and Spain. The applicant claims that the total amount of sales is to be considered largely insignificant in view of the size of the tobacco market of the European Union, accordingly to the information given in several Annexes submitted by the applicant together with its observations.

Finally, the applicant argues that if use has been shown, it would be only for shisha tobacco, but not for any of the other goods in Class 34 covered by the challenged EUTM.

In its final submissions of 22/01/2020, the EUTM proprietor firstly claims that use on Spain and in the United Kingdom should be considered sufficient, since they represent a substantial part of the EU market for tobacco products.

Also, the EUTM proprietor underlines that only a small proportion of customers order the trade mark’s products based on catalogues. Most consumers buy the products in online shops, in local shops or directly at the trade fairs. In view of that, it should also be noted that the trade mark holder mainly sells its products through its authorized dealers. Therefore, according to the EUTM proprietor it should not be surprising that most of the sales in the United Kingdom and Spain which are apparent from the invoices were made by the authorized dealers there.

Moreover, the EUTM proprietor claims that the invoices indicate that the products with the contested sign ‘MIST’ were marketed regularly in the relevant territory in relation to different tobacco flavors. They are exemplary and show the continuous use throughout a period of at least four years in the relevant period of time.

The opinion of the EUTM proprietor is that the quantity of products which was sold during a continuous period of five years, bearing the contested mark ‘MIST’ (taken in isolation), is by no means so low that it may considered as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.

As regards the nature of use, all the invoices and catalogue extracts contain the sign ‘MIST’ taken in isolation and/or signs from the trade mark series with the common core element ‘MIST’.

The proof of use related to the sign ‘MIST’ alone is deemed to be sufficient to prove that use has been made in such a way as to preserve rights. The evidence of the use of the series of marks containing the common basic element ‘MIST’ further reinforces the assumption that the proprietor of the contested mark has created a share on the EU tobacco market.

The EUTM proprietor argues that the respective addition to the common basic element only indicates the flavor of the tobacco and is therefore, not dominant, but a weak element. The additions ‘Citrus’, ‘Apple’, ‘Margo’, ‘Peach, ‘Tropical’ only qualifies the element ‘Mist’ and further refine it, but do not alter the distinctive character of the mark ‘MIST’.

The same should apply to the series marks ‘Irish Mist’, ‘Hawaiian Mist’, ‘Caribbean Mist’, because in these cases the addition only refers to the geographical origin of the products.

The EUTM proprietor reminds that there is no precept in the European Union trade mark system that obliges the trade mark owner to prove the use of his earlier mark alone, independently of any other mark, when genuine use is required. The case could arise where two or more trade marks are used jointly and autonomously. Therefore, several signs may be used simultaneously without altering the distinctive character of the registered sign.

Due to the fact that the mark ‘MIST’ is used both alone and as the core element of the series marks, the element ‘MIST’ retains its independent role in the composite signs and the relevant public perceives it as an indication of origin.

Also, the EUTM proprietor claims that the contested mark was used in relation to tobacco, as the trade mark owner is not required to prove all the conceivable variations of the category of goods for which the mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, it is in accordance with case-law that genuine use is to be affirmed for the category tobacco.

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).

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 19/03/2014. The revocation request was filed on 21/03/2019. 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 21/03/2014 to 20/03/2019 inclusive, for the contested goods listed in the section ‘Reasons’ above.

On 19/07/2019 the EUTM proprietor submitted the following evidence as proof of use:

• Annexes 1-5: Extracts from the EUTM proprietor’s catalogues of the year between 2014 and 2018, in English, showing a large variety of hookah tobacco, including one labelled as ‘MIST’. When not together with other elements such as ‘BLUE’, ‘CITRUS’, ‘BLACK’ or ‘WHITE’, the sign is reproduced on the packaging as follows: .

• Annex 6: Declaration signed on 01/07/2019 in which SBM Mundial S.L. claims to be EUTM proprietor’s distributor in Spain for, inter alia, tobacco called ‘MIST’. A picture of the ‘MIST’ packaging is also included, namely the following: .

• Annex 7: Declaration signed on 26/06/2019 in which Starbuzz London Limited claims to be EUTM proprietor’s distributor in the United Kingdom for, inter alia, tobacco called ‘MIST’. A picture of the ‘MIST’ packaging is also included, namely the following: .

• Annexes 8-12: Invoices billed to the EUTM proprietor and pictures all related to tis participation at InterTabac trade fair for the years 2014, 2015, 2016 and 2018, together with an informative sheets and extracts in which it is explained that InterTabac is an international fair dedicated to the tobacco industry, held in Germany since the year 1978.

• Annex 13: Invoices dated in the years 2013 and 2016 related to the purchase and printing of ‘STARBUZZ’ catalogues.

• Annexes 14-19: Copies of eighty five invoices with dates covering the period comprised between April 2014 and March 2019 regarding the sales of, inter alia, ‘MIST’ products. All the invoices contain, among the goods listed, products such as ‘BLUE MIST’ or ‘CITRUS MIST’, distributed in different quantities to clients in the United Kingdom, Austria, Estonia, Slovakia, Poland, Germany, Lithuania, Spain. Of the eighty five invoices, thirty nine contain a reference to a product that is only called ‘MIST’, without any other specification. These thirty nine invoices are all address to clients in Spain and the United Kingdom. The prices of the products and the name and address of the customer, with the exception of the name of the country, are blanked out.

Preliminary remarks

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the EUTM is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

In addition, some of the evidence of use filed by the EUTM proprietor does not originate from the EUTM proprietor itself but from other companies, namely the distributors for inter alia, tobacco ‘MIST’ in Spain and the United Kingdom. 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. Therefore, the fact that the EUTM proprietor submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Consequently, it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was with its consent.

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

Also, as regards the declaration of Annex 6 and Annex 7 account must be taken of the fact that Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period.

The majority and a sufficient amount of the documents fall within or can safely be attributed to refer to use within the relevant period of time.

Consequently, in view of all the above, the Cancellation Division considers that the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The Cancellation Division deems that the documents submitted demonstrate that the place of use are, in particular, Spain and the United Kingdom. The invoices show sales of products ‘MIST’ to entities those two countries. The documents are in English and in Spanish.

Consequently, taking into account the relevant circumstances in the present case, the characteristics of the market and the territorial extent, it is considered that the evidence is sufficient to satisfy the European requirements or standards for genuine use. Therefore, the evidence relates to the relevant territory.

Extent of use

Concerning the 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 Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

It is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not. A de minimis rule cannot therefore be laid down. When it serves a real commercial purpose, even minimal use of the mark can be sufficient to establish genuine use (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 25, 27).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The Cancellation Division is aware of what the applicant claims as regards the use of the trade mark ‘MIST’ in connection with other elements. However, it cannot but to note that in the catalogues, in the declarations and in the invoices the mark ‘MIST’ also appear alone, without other specifications. It is then possible to proceed in the examination of the evidence only considering the documents in which the sign ‘MIST’ appear per se, without taking into account the situations in which ‘MIST’ is reproduced together with other element which might alter its distinctiveness. This is clearly the best scenario for the applicant.

The evidence submitted by the EUTM proprietor in order to prove genuine use of the contested EUTM relates to, in particular, Spain and the United Kingdom. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not and use of an EUTM in a part of the relevant territory, such as that of a single Member State, may be geographically sufficient (see, for example, 30/01/2015, T-278/13, now, EU:T:2015:57).

The material submitted, in particular the invoices, relates to years and dates within the relevant period and proves the frequency of use of the mark within that period. Use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous during the relevant period of five years. Moreover, the invoices submitted were issued to different customers and are, furthermore, non-consecutive. This permits the inference that the invoices have been submitted merely as examples of sales and do not represent the total amount of sales of goods under the contested mark realised by the EUTM proprietor during the relevant period. Although, the prices of the goods which were sold as well as the final customers are blanked out, the quantities are still visible.

The applicant claims that sales appear as only made to one or two customers. However, account must be taken of the fact that, on principle, genuine use is not excluded only because all use involves the same customer, as long as the trade mark is used publicly and outwardly and not solely within the undertaking that owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 50; 08/10/2014, T-300/12, Fairglobe, EU:T:2014:864, § 36).

Furthermore, the amounts of distributed goods expressed in kilograms in the invoices, provide sufficient information concerning the commercial volume of use, which, it is true, as pointed out by the applicant, is not at all particularly significant when put in relation with the total size of the whole of the European Union tobacco market, but still cannot be considered as, simply, token use.

It should be noted that the purpose of the provision requiring that the 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).

It is sufficient to submit evidence which proves that the minimum threshold for a finding of genuine use has been passed.

Therefore, the Cancellation Division considers that the evidence shows a real commercial exploitation of the EUTM which is not merely token and is of a sufficient extent and constancy as to strive to maintain or create a market share for the goods designated by the mark.

Nature of use: use as a trade mark

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.

The proof of use must establish a clear link between the use of the mark and the relevant goods or services. It is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38). A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

In the present case, the EUTM was used as a trade mark. The evidence filed by the EUTM proprietor shows that the contested sign was displayed on the packaging of the products and in catalogues, clearly as a trade mark, as well as in the list of goods contained in some of the invoices. Consequently, there is a sufficient link to prove that the goods concerned are provided under the contested mark.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The registered EUTM is the word mark ‘MIST’.

The evidence submitted shows use of the sign ‘MIST’ alone in some of the invoices (in the field containing the details of the goods). The packaging labels in the catalogues, as well as in the distributors’ declarations, also show the indication ‘MIST’, as in the picture that follows: .

Although in this case the word ‘MIST’ is depicted in fanciful light blue capital letters, together with other elements, namely the name of the EUTM proprietor and figurative elements, these elements do not materially affect the distinctive character of the sign. This is possible since several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438,§ 34).

Also, It is quite common in some market areas for goods to bear not only their individual mark, but also the mark of the business or product group (house mark). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 47 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are being used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO / PRESSO, § 42).

In view of the above, the Cancellation Division considers that the use of the mark in the manner described above does not materially affect its distinctiveness and the evidence does show use of the sign as registered within the meaning of Article 18(1)(a) EUTMR.

Nature of use: use in relation to the registered goods

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods for which the EUTM is registered.

The contested EUTM is registered for tobacco; smokers' articles; matches; ashtrays for smokers; cigar cases; cigars; cigarette cases; cigarette filters; cigarette tips; cigarette paper; books of cigarette papers; cigarette holders; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; pocket machines for rolling cigarettes; cigarillos; cigar cutters; cigar holders; electronic cigarettes; gas containers for cigar lighters; humidors; firestones; lighters for smokers; tips of yellow amber for cigar and cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco pipes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes; chewing tobacco; snuff; snuff boxes; spittoons for tobacco users; match boxes; match holders; matches; tobacco; tobacco jars; tobacco pouches; herbs for smoking in Class 34.

However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods for which it is registered.

According to Article 58(2) EUTMR, where there are grounds for revocation for only some of the goods for which the contested mark is registered, the proprietor’s rights will be revoked for those goods only.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)

Since consumers are searching primarily for a product to meet their specific needs, the purpose of the product in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 29).

The contested EUTM is registered for, inter alia, tobacco. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it.

Although a description of the goods is not present in the invoices, the catalogues contain supporting information about the type of goods distributed under, inter alia, the sign ‘MIST’. In fact, the evidence shows that the contested EUTM has been used for a specific type of tobacco, namely hookah tobacco. Also, this is the way the products are defined in the EUTM proprietor’s catalogues. It is clear from the evidence that no other type of tobacco has been associated to the sign ‘MIST’.

On the basis of the purpose of the goods used, the Cancellation Division finds that the use for hookah tobacco, which falls under the broad category of tobacco, constitutes use for the subcategory hookah tobacco.

Nevertheless, as regards the remaining goods in Class 34, namely tobacco; smokers' articles; matches; ashtrays for smokers; cigar cases; cigars; cigarette cases; cigarette filters; cigarette tips; cigarette paper; books of cigarette papers; cigarette holders; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; pocket machines for rolling cigarettes; cigarillos; cigar cutters; cigar holders; electronic cigarettes; gas containers for cigar lighters; humidors; firestones; lighters for smokers; tips of yellow amber for cigar and cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco pipes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes; chewing tobacco; snuff; snuff boxes; spittoons for tobacco users; match boxes; match holders; matches; tobacco; tobacco jars; tobacco pouches; herbs for smoking, there is no evidence for the use of the EUTM, since, as already said, there is no trace of these goods in any of the pieces of evidence that the EUTM proprietor has submitted.

Overall assessment

As already seen above, 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 ‘MIST’ has been sufficiently demonstrated for the relevant factors time, place, nature and extent for part of the goods only as indicated in the previous section. No genuine use has been demonstrated for the remaining goods.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods and services, for which it must, therefore, be revoked:

Class 34: Tobacco [with the exception of hookah tobacco]; smokers' articles; matches; ashtrays for smokers; cigar cases; cigars; cigarette cases; cigarette filters; cigarette tips; cigarette paper; books of cigarette papers; cigarette holders; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; pocket machines for rolling cigarettes; cigarillos; cigar cutters; cigar holders; electronic cigarettes; gas containers for cigar lighters; humidors; firestones; lighters for smokers; tips of yellow amber for cigar and cigarette holders; mouthpieces for cigarette holders; absorbent paper for tobacco pipes; tobacco pipes; pipe cleaners for tobacco pipes; pipe racks for tobacco pipes; chewing tobacco; snuff; snuff boxes; spittoons for tobacco users; match boxes; match holders; matches; tobacco [with the exception of hookah tobacco]; tobacco jars; tobacco pouches; herbs for smoking.

The EUTM proprietor has proven genuine use for hookah tobacco in Class 34; consequently, the application is not successful in this respect.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 21/03/2019.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Janja FELC

Andrea VALISA

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.