CANCELLATION No 19 506 C (INVALIDITY)

Brigitte Müller, Rotthauser Str. 91, 45884 Gelsenkirchen, Germany (applicant)

a g a i n s t

Agfa NV, Septestraat 27, 2640 Mortsel, Belgium (EUTM proprietor).

On 18/07/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 14 448 501 ‘AVINCI’, namely against all the goods in Class 9. The application is based on European Union trade mark registration No 4 228 953 ‘DA VINCI’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that due to the identity of the goods and the high degree of similarity existing between the signs, there is a likelihood of confusion.

The EUTM proprietor requests the applicant to submit proof of use of its earlier mark.

The applicant submits documents in order to prove the use of its earlier right (listed below).

In its observations in reply, the EUTM proprietor argues that there is no likelihood of confusion between the public and explains the differences existing between the goods and the signs. It submits evidence in support of its argument.

In reply, the applicant reiterates its previous arguments.

PROOF OF USE

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant must furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity will be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 30/01/2018. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 30/01/2013 to 29/01/2018 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:

Class 9: Printers.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods for which it is registered and on which the application is based.

These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and, therefore, the absence of any one of them will lead to the rejection of the application under Article  64(2) EUTMR.

On 23/08/2018, in accordance with Article 19(2) EUTMDR, the Office gave the applicant until 28/10/2018 to submit evidence of use of the earlier trade mark.

On 19/10/2018, within the time limit, the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

1. License agreement between the applicant and XYZprinting, Inc., dated 22-24/09/2014.

2. Print outs from www.xyzprinting.com/eu with images of printers ‘da Vinci’, dated 26/04/2017.

3. Print outs from www.google.de/search with the results of ‘xyzpriting da vinci’, dated 25/08/2018.

Having examined the material listed above the Cancellation Division finds that the evidence is insufficient to establish genuine use of the trade mark.

None of the documents filed provides the Cancellation Division with information concerning the extent of use of the earlier mark. There is no indication among the evidence about the commercial volume, the duration, or the frequency of use of the earlier mark in the European Union. Therefore, it cannot be deduced from the submitted material that the owner has tried to acquire a commercial position in the relevant market in the European Union.

The Court has held that there is ‘genuine use’ of a mark where it 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 does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The Cancellation Division concludes that the evidence is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period. Therefore, the application must be rejected pursuant to Article 64(2) EUTMR.

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 applicant is the losing party, it must bear the costs incurred by the EUTM proprietor 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 EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case, the EUTM proprietor did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore it did not incur representation costs.

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRÍGUEZ

Ioana MOISESCU

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.