A G K | Decision 0012564
Date Published: Oct 2, 2017
CANCELLATION No 12 564 C (REVOCATION)
American Franchise Marketing Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (applicant)
a g a i n s t
AGKnordic A/S, Fabrikvej 17, 8800 Viborg, Denmark (EUTM proprietor), represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark (professional representative).
On 20/06/2017, 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 6 722 268 are revoked as from 22/02/2016 for some of the contested goods, namely:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; headsets for personal computers; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 11: Apparatus for heating, steam generating, refrigerating, drying and water supply purposes.
Class 21: Combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
3. The European Union trade mark remains registered for all the remaining goods, namely:
Class 9: Apparatus for recording, transmission or reproduction of sound or images only for Mp3/Mp4; loud speakers for personal computers; magnetic data carriers.
Class 11: Apparatus for lighting, cooking, ventilating and sanitary purposes.
Class 21: Household or kitchen utensils and containers (not of precious metals or coated herewith).
4. Each party bears its own costs.
REASONS
The applicant filed a request for revocation of European Union trade mark registration No 6 722 268 (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images only for Mp3/Mp4, headsets and loud speakers for personal computers; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 21: Household or kitchen utensils and containers (not of precious metals or coated herewith); combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
In the ‘Reasoned statement’ part of the application form, the applicant argues that the EUTM should be cancelled for non-use, as it has not been put to genuine use in the European Union in connection with all the protected goods in Classes 9, 11 and 21 within a continuous period of five years and there are no reasons for non-use. The applicant states that it conducted a search for any possible indication of genuine use of the contested EUTM in relation to the goods for which it is registered, which did not reveal any evidence indicating that the contested EUTM was, in fact, in use for the relevant goods. Finally, the applicant requests that the EUTM be revoked due to non-use for all the goods in Classes 9, 11 and 21.
The EUTM proprietor states that it is a company based in Denmark mainly conducting trade in household appliances and electronics and supplying large supermarket chains and do-it-yourself suppliers, especially in northern Europe. The EUTM proprietor claims that the use of the EUTM is widespread geographically and submits a list of specific goods in relation to which the contested EUTM is used, as well as evidence of use (listed below).
The EUTM proprietor also states that the search that the applicant claims to have conducted, which did not reveal use of the EUTM, must have been very superficial, since a simple search using ‘AGK Nordic’ would have revealed a large number of products within Classes 9, 11 and 21.
The EUTM proprietor also notes that the applicant has filed a large number of revocation applications within a short period of time, and claims that the filing of the revocation request is a clear misuse of the revocation procedure by the applicant.
The applicant expresses its strong belief that the documents submitted are not sufficient to prove that the use made of the contested mark constitutes genuine use. The applicant then proceeds with a detailed analysis of the documents submitted and claims that they do not show sufficiently the time, extent, place and nature of use of the contested EUTM, as well as the use in relation to all the contested goods. In addition, the applicant refers to previous decisions of the Office and the Court of Justice of the European Union, which the applicant finds relevant, to support its arguments. In conclusion, the applicant requests that the EUTM be cancelled for all the goods specified in Classes 9, 11 and 21 and that the EUTM proprietor bear the costs of the proceedings.
In the second round of observations, the EUTM proprietor submitted further evidence in relation to the evidence already submitted, and submitted additional evidence in relation to the genuine use of the contested EUTM, in particular regarding the extent of use. Finally, the EUTM proprietor requests that the application for revocation be dismissed.
GROUNDS FOR THE DECISION
According to Article 51(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 and 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 Rule 40(5) EUTMIR in conjunction with Rule 22(3) EUTMIR, the indications and evidence for the furnishing of proof of use must consist of indications concerning the place, time, extent and nature of use of the contested trade mark for the goods and 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 17/04/2009. The revocation request was filed on 22/02/2016. 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 22/02/2011 to 21/02/2016 inclusive, for the following contested goods:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images only for Mp3/Mp4, headsets and loud speakers for personal computers; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 21: Household or kitchen utensils and containers (not of precious metals or coated herewith); combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
On 01/06/2016, the EUTM proprietor submitted evidence as proof of use. The evidence is well structured and accompanied by a detailed description of all the items. A copy of the evidence submitted has been delivered to the applicant. Therefore, the Cancellation Division will not provide a detailed description of each and every piece of evidence but will rather describe the submitted evidence in general, referring to various groups of documents and summarising the information therein, and will refer whenever necessary to particular items using the numbering provided by the EUTM proprietor. The evidence to be taken into account is the following:
A. 17 invoices, issued by AGK Nordic A/S to clients in Denmark, the United Kingdom, the Netherlands and France, all dated within the relevant period, containing descriptions of the invoiced goods, including model/article numbers. The goods described are the following: file data backup (magnetic data carriers); cassette converters; DAB radios; grill equipment; external DVD drives; dummy cameras; keyboards; sandwich makers; indoor antennae for MPEG4 HD DVB-T; table ventilators; toilet seats; LED bulbs; speakers; mini choppers and stick mixer. The quantities sold vary from several hundred to several thousand items. The prices vary from several hundred to several thousand Danish kroner, pounds sterling, US dollars and euros. For instance, the invoice dated 26/08/2014 (Item 16.1) refers to the sale of 480 speakers, which are identified by the model number 10788, for the total price of EUR 12 600.00.
B. Pictures/extracts from catalogues/manuals showing various products identified with model/article numbers matching those shown in the invoices and bearing the contested EUTM either on the goods themselves and/or on their packaging. The contested EUTM appears in the form as registered. For instance, Item 16.2 refers to a manual, dated 2014, showing the product with the number 10788. On the packaging and in the manual, the following sign is shown: . On other products, the EUTM appears in the following forms: , , , , .
On 23/12/2016, together with the observations in reply to the applicant’s submissions the EUTM proprietor submitted additional evidence:
C. A large number of the documents that were submitted in the first round of observations (and listed above as Item B), accompanied by screenshots of documents showing that the documents were created within the relevant period.
D. A sales presentation to Netto A/S, showing various products featuring the contested EUTM.
E. Printouts of customer reviews on Trustpilot.com. The reviews were submitted during the relevant period.
F. Documents that appear to be annual financial reports for 2011-2016 for the company AGKnordic A/S in Danish, showing some financial figures.
With regard to the evidence submitted in the second round of observations, after the time limit set by the Office, the Cancellation Division considers that the EUTM proprietor did submit it within the time limit initially set by the Office and, therefore, the later evidence can be considered additional. The additional evidence does not introduce new elements, but merely enhances the conclusiveness of the evidence submitted within the time limit.
It should also be noted that the applicant strongly disputed the initial evidence submitted by the EUTM proprietor – a fact which justifies the submission of additional evidence in reply to the objection (29/09/2011, T-415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36).
For the above reasons, and in the exercise of its discretion pursuant to Article 76(2) EUTMR, the Cancellation Division will take into account the additional evidence submitted on 23/12/2016.
Preliminary remark
It should be noted, in relation to the EUTM proprietor’s argument that the filing of the application for revocation is a clear misuse of the revocation procedure (because it was filed in bad faith), that examining the applicant’s bad faith is not subject to the current proceedings based on the ground of Article 51(1)(a) EUTMR.
Article 56(1)(a) EUTMR grants all natural and legal persons the right to file an application for revocation on the basis of Article 51 EUTMR, without making that right subject to the balancing of the applicant’s possible personal interests in such a declaration with the general interests safeguarded by that provision. In that regard, Article 56(1)(a) EUTMR regulates the issue exhaustively and does not leave any scope to take account of possible bad faith on the part of the applicant for a revocation action, with the result that an abuse of rights cannot constitute an obstacle to the examination of an application for such a declaration.
In the context of cancellation proceedings based on Article 51(1)(a) EUTMR, the Office is required to assess whether, within a continuous period of five years, the contested trade mark has been put to genuine use in the European Union, without the motives and earlier conduct of the revocation applicant affecting the scope of the task.
Assessment of genuine use – factors
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.
Time of use
The evidence must show genuine use of the European Union trade mark within the relevant period.
All the invoices are dated within the relevant period. Some of the manuals bear a copyright notice that allows the document to be dated. For example, the date appearing on Item 16.2 is 2014, which falls within the relevant period. Others are undated, which is not unusual, bearing in mind the medium used, namely pictures and packaging. However, they have to be assessed together with the submitted invoices matching the respective product numbers. Therefore, the evidence of use submitted 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 15(1) EUTMR and Article 51(1)(a) EUTMR).
The invoices show that the place of use is the European Union. This can be inferred from the language of the documents (Danish, English, French), the currencies mentioned (Danish kroner, euro, pounds sterling) and some addresses in Denmark, the United Kingdom, the Netherlands and France. Therefore, the evidence relates to the relevant territory.
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 applicant argues that some of the invoices (e.g. those submitted as Items 5.1, 9.1, 10.1, 15.1 and 16.1) issued by the EUTM proprietor indicate use of the mark only as part of the EUTM proprietor’s company name. As already stated above, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. The EUTM proprietor has submitted pictures and excerpts from catalogues and manuals related to the invoices, which show the contested EUTM affixed on the products themselves and/or on their packaging. Therefore, it is clearly used as a trade mark. The fact that the trade mark and the company name of the EUTM proprietor both include the verbal element ‘AGK’ has no bearing on this finding.
Nature of use: use of the mark as registered
‘Nature of use’ in the context of Rule 22(3) EUTMIR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.
The evidence shows that the mark has been used as registered. In some cases, the verbal elements of the sign are presented on backgrounds that are different in colour from that of the registered sign. However, the Cancellation Division considers these differences to be mere variations of the contested mark as registered, which do not affect its distinctive character.
Extent of use
Concerning 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).
Contrary to the applicant’s arguments, the Cancellation Division finds that the quantities sold and the amounts shown in the invoices are sufficient to demonstrate the extent of use of the earlier mark. Moreover, it can be inferred from the invoice numbers, which are not consecutive, and the submitted annual financial reports, which show significant turnovers during the entire relevant period, that the submitted invoices are presented only as examples of sufficient volumes of use. Therefore, the EUTM proprietor has demonstrated a sufficient extent of use of the contested EUTM, at least in relation to some of the contested goods.
Use in relation to the registered goods and services
Article 51(1)(a) EUTMR and Rule 22(3) EUTMIR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.
The contested EUTM is registered for the goods specified above in the ‘Reasons’ section of this decision. 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 51(2) EUTMR, where there are grounds for revocation in respect of only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.
In the present case, the evidence shows genuine use of the trade mark for the following goods:
Class 9: Apparatus for recording, transmission or reproduction of sound or images only for Mp3/Mp4; loud speakers for personal computers; magnetic data carriers.
Class 11: Apparatus for lighting, cooking, ventilating and sanitary purposes.
Class 21: Household or kitchen utensils and containers (not of precious metals or coated herewith).
At the same time, the EUTM proprietor did not demonstrate any proper reasons for non-use of the EUTM for the remaining contested 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, it is evident that the EUTM has been registered with the intention of use and has been genuinely used, and not with the intention of maintaining a registration of the EUTM to prevent competitors from entering the market. The Cancellation Division considers that genuine use of the contested mark has been demonstrated sufficiently with regard to the relevant factors of time, place, extent and nature in relation to some of the goods covered in the specification of the trade mark as registered, namely those listed in the previous section of the decision.
For the sake of completeness of the examination, it should be noted that the Cancellation Division duly considered the case-law referred to by the applicant, in particular in relation to the decisions of the Cancellation Division and the judgments of the Court of Justice concerning the extent of use.
As also argued by the EUTM proprietor in its second round of observations, these decisions and judgments do not bear a sufficiently close resemblance to the case in question. The facts reflected in these decisions and judgments are not comparable and neither are the observations and the evidence submitted by the parties.
Conclusion
It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods, for which it must, therefore, be revoked:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;, headsets for personal computers; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 11: Apparatus for heating, steam generating, refrigerating, drying and water supply purposes.
Class 21: Combs and sponges; brushes; brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
The EUTM proprietor has proven genuine use for the remaining contested goods, namely:
Class 9: Apparatus for recording, transmission or reproduction of sound or images only for Mp3/Mp4; loud speakers for personal computers; magnetic data carriers.
Class 11: Apparatus for lighting, cooking, ventilating and sanitary purposes.
Class 21: Household or kitchen utensils and containers (not of precious metals or coated herewith).
Therefore, the application is not successful in this respect.
According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 22/02/2016.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Cancellation Division
Robert MULAC | Plamen IVANOV | Ana MUÑIZ RODRIGUEZ |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.