accelerate | Decision 0010377
Date Published: Sep 25, 2017
CANCELLATION No 10377 C (REVOCATION)
Eci Software Solutions, Inc., 4400 Alliance Gateway Freeway, Suite 154, Fort Worth Texas 76177, United States of America (applicant), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative)
a g a i n s t
Accelerate Capital Management GbR, Zeche Westfalen 1, 59229 Ahlen, Germany (EUTM proprietor), represented by 24IP Law Group Sonnenberg Fortmann, Charlottenstraße 80, 10177 Berlin, Germany (professional representative).
On 19/07/2017, 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 4 726 899 are revoked as from 27/01/2015 for part of the contested goods and services, namely:
Class 16: Document files (stationery), pamphlets, books, handbooks (manuals), catalogues, prospectuses.
Class 35: Business management and organisation consultancy, business management consultancy, professional business consultancy, computer file management, business management, for others, commercial or business management assistance, business organisation consultancy, organisation consultancy, organisational project management in the field of computers, business management assistance, systemisation of data in computer databases.
Class 42: Updating of computer software, implementation of computer programs on networks, installation and maintenance of software for Internet access, installation of computer programs, configuration of computer networks using software, performance monitoring and analysis of network operations, server administration.
3. The European Union trade mark remains registered for all the remaining services, namely:
Class 42: Computer software consultancy, computer systems analysis, computer systems design, data management on servers, computer programming, computer consultancy, computer programming, software consultancy and consultancy in the field of computer hardware, hardware consultancy, technical project management in the field of computers.
4. Each party bears its own costs.
REASONS
The applicant filed a request for revocation of European Union trade mark registration No 4 726 899 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely
Class 16: Document files (stationery), pamphlets, books, handbooks (manuals), catalogues, prospectuses.
Class 35: Business management and organisation consultancy, business management consultancy, professional business consultancy, computer file management, business management, for others, commercial or business management assistance, business organisation consultancy, organisation consultancy, organisational project management in the field of computers, business management assistance, systemisation of data in computer databases.
Class 42: Updating of computer software, consultancy in the field of computer hardware, computer software consultancy, computer systems analysis, computer systems design, data management on servers, computer programming, computer consultancy, computer programming, hardware and software consultancy, implementation of computer programs on networks, installation and maintenance of software for Internet access, installation of computer programs, configuration of computer networks using software, performance monitoring and analysis of network operations, server administration, technical project management in the field of computers.
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested mark has not been put to genuine use in the European Union for a continuous period of five years and there are no good reasons to justify any non-use.
The EUTM proprietor filed and explained the evidence of use which will be analysed further in the decision. It also argues that it is actively and extensively using its trade mark in commerce.
In reply, the applicant states that the evidence filed falls far short of the minimum evidence required to demonstrate genuine use of the trade mark. It adds that the statement in writing concerning the alleged activities is made by an officer of the company and it is not independent, consequently the probative value of such statements have been held to be low by the Office.
The EUTM proprietor replies that it provided invoices from the relevant time period showing use of the trade mark in question which sum up to a total amount of 180 000 Euros showing use of the proprietor’s trade mark from 2006 to 2015. It also considers that statements including detailed information have a higher probative value than very general and abstractly drafted statements.
The applicant claims that together with the translations, further evidence has been submitted in the form of an affidavit from the EUTM proprietor which should not be taken into account.
Finally, the EUTM proprietor requests the Office to take into account the affidavit when taking the decision.
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 11/10/2006. The revocation request was filed on 27/01/2015. 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 27/01/2010 to 26/01/2015 inclusive, for the following contested goods and services:
Class 16: Document files (stationery), pamphlets, books, handbooks (manuals), catalogues, prospectuses.
Class 35: Business management and organisation consultancy, business management consultancy, professional business consultancy, computer file management, business management, for others, commercial or business management assistance, business organisation consultancy, organisation consultancy, organisational project management in the field of computers, business management assistance, systemisation of data in computer databases.
Class 42: Updating of computer software, consultancy in the field of computer hardware, computer software consultancy, computer systems analysis, computer systems design, data management on servers, computer programming, computer consultancy, computer programming, hardware and software consultancy, implementation of computer programs on networks, installation and maintenance of software for Internet access, installation of computer programs, configuration of computer networks using software, performance monitoring and analysis of network operations, server administration, technical project management in the field of computers.
On 07/05/2015 the EUTM proprietor submitted evidence as proof of use. At the request of the Office, the EUTM proprietor filed translation into English of such evidence on 10/06/2016. The evidence consists on the following:
- Attachment I: Extract from the website www.accelerate.de (non-dated) in German with a partial translation into English. It explains the services as ‘provides beginning with hosting through software as a service (SaaS) up to an application support and extensive range of services’. The sign is shown.
- Attachment II: Copy of a contract in German with a translation into English concerning the offer of software licenses and services for implementation of businessNavi for Alcatel dated 15/03/2012. It includes an explanation of the contract, the role of the proprietor and the invoices issued for the services. The invoices include the total amounts (more than 40.000 Euros). The sign is shown. According to the contract, ‘Accelerate is responsible for the development of the information system and is available for all questions concerning support’.
- Attachment III: A prospectus (non-dated) in German with a translation into English between Frauenthal and Accelerate consulting. It includes an explanation of the project and the role of the proprietor. It also includes an invoice dated 02/02/2011 issued for the services (i.e. implementation) including the experts but the amounts are not shown. The signis shown.
- Attachment IV: The project description (non-dated) in German with a translation into English between Kirchhoff and Accelerate IT Consulting. It includes an explanation of the project (i.e. introduction of a company-wide management information system) and the company profile of the proprietor. It also includes an invoice dated 21/11/2012 issued for the services (i.e. implementation). The invoices include the total amount (more than 48.000 Euros). The signis shown.
- Attachment V: The project description (non-dated) in German with a translation into English between Toll Collect GmbH and Accelerate IT Consulting. It includes an explanation of the project (i.e. building a structured data warehouse). It also includes two invoices dated 03/11/2006 and 02/02/2015 respectively issued for the fees of the different experts involved in the project (i.e. Project Manager, Senior Consultant). The invoices include the total amount (more than 72.000 Euros). The signis shown.
- Attachment VI: The project description (non-dated) in German with a translation into English between Jörg Vogelsang GmbH and Accelerate IT Consulting. It explains the project and it also includes two invoices dated 06/09/2010 and 02/02/2015 (accounted January 2015) issued for the fees of the different experts involved in the project (i.e. Partner, Consultant). The invoices include the total amount (more than 26.000 Euros). The signis shown.
- Attachment VII: An extract in German which, according to the EUTM proprietor, corresponds to the company profile of Accelerate IT Consulting GmbH dated 2012/2013 which shows the sign. A user manual of the businessNavi dated 27/03/2015. BusinessNavi is an information system developed on the basis of IBM Cognos Business Intelligent for the support of employees in the specialist field and the management when dealing with analytical questions and reporting. According to the EUTM proprietor, it is the publisher of the manual which belongs to Class 16 of the contested trade mark.
On 10/06/2016, after the expiry of time limit, along with the translations of the evidence of use filed on 07/05/2015, the proprietor submitted an affidavit signed by Mr. Klaus Thelen, Managing Director of the proprietor dated 23/03/2016 declaring that the contested trade mark has been widely used in Germany for many years for the claimed goods and services.
The applicant argues that the EUTM proprietor submitted the affidavit late and, therefore, it cannot be taken into account.
The fact that the applicant disputed the initial evidence submitted by the EUTM proprietor 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).
In the Cancellation Division’s view, the additional evidence does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit. In this regard, the Cancellation Division considers that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Office and, therefore, the affidavit can be considered to be additional.
For the above reasons, and in the exercise of its discretion pursuant to Article 76(2) EUTMR, the Cancellation Division therefore decides to take into account the additional evidence submitted on 10/06/2016.
Assessment of genuine use – factors
Time of use
The evidence must show genuine use of the European Union trade mark within the relevant period.
According to case-law, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (25/03/2009, T-191/07, Budweiser, EU:T:2009:83, § 108).
Concerning the factor of time of use, the Cancellation Division points out that some documents are not dated (attachment I) and others are dated beyond the relevant period (attachment VII user manual of businessNavi). However, it must be noted that the invoices included in the projects (attachments II, III and IV) and the contract concerning the offer of software licenses and services for implementation of businessNavi (attachment II) give sufficient indications as to the use of the contested mark during the relevant time period, namely, from 27/01/2010 to 26/01/2015.
Therefore, the evidence filed by the EUTM proprietor contains sufficient indications concerning the time of use.
Place of use
The evidence must show that the contested trade mark has been genuinely used in the European Union (see Article 15(1) and Article 51(1)(a) EUTMR).
In the present case, the documents are in German with translations into English. The invoices clearly indicate that the services were addressed at customers in various places in Germany (Berlin, Ahlen, Hagen).
The Cancellation Division must determine on a case-by-case basis whether the various indications and evidence can be combined for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered.
As the Court indicated, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816 § 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816 § 58).
The Cancellation Division considers that in light of the evidence provided and the relevant facts of the case, the fact that the contested mark has mainly been used in Germany could be considered as use of the contested mark in the European Union (see judgment of 15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57).
Therefore, the evidence relates to the relevant territory and is sufficient to show the place of use of the contested trade 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.
In the present case, the majority of the documents show that the sign is used in connection with certain services and therefore it is used as a trade mark. Consequently, the consumers can distinguish the services from those of different providers.
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.
In the present case, the majority of the evidence, namely, the prospectus and the invoices show the sign.
The evidence submitted shows use of the mark as registered and, therefore, such use constitutes use of the contested registration under Rule 22(3) EUTMIR.
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 General Court went further to point out that “to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment 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. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market” (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 41 and 42).
In the present case, the extracts from the website and the prospectus, only show that the company provides certain services. This set of evidence does not give any indication as regards sales figures or commercial volume.
However, the majority of the invoices enclosed together with the prospectus of the projects describe the services (i.e. development of information system, introduction of a company-wide management information system, development of a data warehousing), as well as the total amounts which range from 2011 until 2015. These documents provide sales figures for some of the services between 2010 and 2015. The majority of the invoices do contain a description of the services and the contested mark is included at the top of the invoices. Moreover, some of them show the fees amounted to the customers for the participation of the experts in the projects (consultants, project manager).
The evidence submitted by the EUTM proprietor in order to prove genuine use of the EUTM relates exclusively to Germany. 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.
The evidence, taken as a whole, is therefore sufficient to prove the extent of use of the registered mark, and exceeds mere token use, at least in respect of some of the services.
Consequently, the Cancellation Division finds that the documents filed provide sufficient information concerning the commercial volume, the duration and the frequency of use.
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 international registration is registered.
The contested mark is registered for goods and services in Classes 16, 35 and 42. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services 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 Cancellation Division’s view, the majority of the services shown in the evidence relate to IT software and hardware consultancy and analysis and design for programming and software because the projects show activities such as development of information system, introduction of a company-wide management information system, development of a data warehousing. Consequently, the Cancellation Division considers that the evidence shows genuine use of the trade mark for computer software consultancy, computer systems analysis, computer systems design, data management on servers, computer programming, computer consultancy, computer programming and software consultancy, and consultancy in the field of computer hardware, hardware consultancy, technical project management in the field of computers in Class 42.
However, the Cancellation Division considers that the evidence does not prove use for the goods in Class 16, the services in Class 38 and the remaining services in Class 42.
In relation to goods in Class 16, there is no evidence to consider that it can prove genuine use of the trade mark as regards these goods. The EUTM proprietor argues that it is the publisher of the user manual of the businessNavi therefore, this prove use in respect to goods in Class 16. However, the fact that the proprietor publishes certain documents does not lead to the conclusion that its activity is the production and manufacture of manuals for others and that it maintains or creates a share in the market for those goods in Class 16. Therefore, the proprietor’s argument is rejected as unfounded.
In respect of services in Class 35, in the Cancellation Division’s view, the evidence provided does not show use of the mark for business management and organisation consultancy, business management consultancy, professional business consultancy, computer file management, business management, for others, commercial or business management assistance, business organisation consultancy, organisation consultancy, organisational project management in the field of computers, business management assistance, systemisation of data in computer databases. Although some of these services involve the use of computers and/or data management, the fact remains that these services in class 35 relate to the actual data entry, data processing and collection and systematization of business data rather than the design and technical aspects of the development of software/hardware and data management solutions as such.
Business management and consultancy services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.
In the present case, the business management and consultancy services in Class 35 include activities for the management of a business whereas the evidence shows that the activity of the EUTM proprietor is in fact those services provided by experts or companies in the complex field of computer programs and data management. Therefore, the evidence does not show use which can be viewed as warranted in the economic sector concerned to maintain or create a share in the market for those services in Class 35.
On the other hand, the evidence shows that the mark refers to software and hardware consultancy, analysis and design for programming and software in Class 42. These services relate to the definition and the analysis of the software rather than the actual execution and implementation of it.
However, the evidence does not show that the mark was used for the operational part of the project, namely updating of computer software, implementation of computer programs on networks, installation and maintenance of software for Internet access, installation of computer programs, configuration of computer networks using software, performance monitoring and analysis of network operations, server administration.
In conclusion, in the present case, the evidence provided shows genuine use of the trade mark only for the following services:
Class 42: Computer software consultancy, computer systems analysis, computer systems design, data management on servers, computer programming, computer consultancy, computer programming and software consultancy, and consultancy in the field of computer hardware, hardware consultancy, technical project management in the field of computers.
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 Cancellation Division’s view, the evidence submitted shows use of the contested mark for the services computer software consultancy, computer systems analysis, computer systems design, data management on servers, computer programming, computer consultancy, computer programming and software consultancy, and consultancy in the field of computer hardware, hardware consultancy, technical project management in the field of computers (Class 42).
In this case, it can therefore be concluded from this evidence that a market share has been created for these services. The Cancellation Division holds that the EUTM proprietor has proven that the contested mark has been genuinely used for the abovementioned services included in Class 42. However, not enough evidence was provided to consider use to be proven in relation to the remaining goods and services in Classes 16, 35 and 42.
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 16: Document files (stationery), pamphlets, books, handbooks (manuals), catalogues, prospectuses.
Class 35: Business management and organisation consultancy, business management consultancy, professional business consultancy, computer file management, business management, for others, commercial or business management assistance, business organisation consultancy, organisation consultancy, organisational project management in the field of computers, business management assistance, systemisation of data in computer databases.
Class 42: Updating of computer software, implementation of computer programs on networks, installation and maintenance of software for Internet access, installation of computer programs, configuration of computer networks using software, performance monitoring and analysis of network operations, server administration.
The EUTM proprietor has proven genuine use for the remaining contested services; 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 27/01/2015.
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
Elisa ZAERA CUADRADO | Carmen SÁNCHEZ PALOMARES | Michaela SIMANDLOVA |
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.