CANCELLATION No C 44 145
Peter Hofer Holding Gmbh, Simmeringer Hauptstr. 28, 1110 Wien, Austria (applicant), represented by Kunze Rechtsanwälte - Solicitor (England & Wales) PartG mbB, Maximiliansplatz 12 b, 80333 München, Germany (professional representative)
a g a i n s t
Sea Ranch Aps, Skudehavnsvej 36 B, 2150 Nordhavn, Denmark (EUTM proprietor), represented by Rechtsanwälte Waldowski Stünkel Arendt & Pratner, Königsallee 31, 40212 Düsseldorf, Germany (professional representative).
On 17/12/2020, the Cancellation Division takes the following
2. The EUTM proprietor’s rights in respect of European Union trade mark No 12 867 602 are revoked in their entirety as from 26/05/2020.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed a request for revocation of European Union trade mark No 12 867 602 'Key West Race Week' (word mark) (the EUTM). The request is directed against all the goods and services, covered by the EUTM, namely
Class 18: Bags.
Class 25: Clothing and headgear hereunder jackets, caps, technical clothing and shoes, foul weather clothing, shirts, pants.
Class 35: Advertising, marketing and promotional services; retail services connected with the sale of clothing, hereunder jackets, technical clothing and shoes, foul weather clothing, caps, shirts, pants; retail services connected with the sale of bags, towels, water bottles, drink cups, flags, name cards, lanyards and trophies.
Class 36: Financial sponsorship.
Class 41: Entertainment; arranging of sporting events; organising event for cultural and entertainment purposes; providing online electronic publications.
The applicant invoked Article 58(1)(a) EUTMR.
GROUNDS FOR THE DECISION
According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.
In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union or submit proper reasons for non-use.
In the present case, the EUTM was registered on 07/10/2014. The revocation request was submitted on 26/05/2020. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 08/06/2020, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of 18/08/2020 to submit evidence of use of the European Union trade mark for the contested goods and services. This time limit was extended until the 18/10/2020 (being a Sunday).
The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit. The Office wrote on 26/10/2020 informing the EUTM proprietor that the Office will rule on the application for revocation on the basis of the evidence before it. The EUTM proprietor replied on 03/11/2020 that it had requested a new extension of deadline on 19/10/2020 and filed a fax report in order to prove that. The Office answered on 27/11/2020 that the fax report was not about C 44 145 and EUTM 12 867 602 but about another proceeding concerning EUTM 1 831 805. As a conclusion, there is no valid evidence that the Office received a new extension of time limit within the new deadline (ending on 19/10/2020 at midnight).
According to Article 19(1) EUTMDR, if the proprietor of the European Union trade mark does not submit proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.
In the absence of a relevant reply from the EUTM proprietor, there is neither any evidence that the contested EUTM has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use.
Pursuant to Article 62(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.
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(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
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.