COUTTS | Decision 0011547 | Trademarkers LLC

COUTTS | Decision 0011547

Date Published: Sep 25, 2017

CANCELLATION No 11 547 C (REVOCATION)

Yoyo.Email Limited, 38 Market Square, Toddington, Dunstable, Bedfordshire LU5 6BS, United Kingdom (applicant), represented by CSY St Albans, 45 Grosvenor Road, St. Albans, Hertfordshire AL1 3AW, United Kingdom (professional representative)

a g a i n s t

Coutts & Co. (Private Unlimited Company), 440 Strand, London WC2R 0QS, United Kingdom (EUTM proprietor), represented by Lincoln IP Limited, 9 Victoria Street, Aberdeen, Aberdeenshire AB10 1XB, United Kingdom (professional representative).

On 10/07/2017, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 4 275 971 are revoked as from 18/08/2015 for all the contested goods and services, namely:

Class 9: Magnetically encoded cards for carrying data; multifunction cards for financial services; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and web sites); computer software and telecommunication apparatus (including modems) to enable connection to databases, computer networks and the Internet; computer software to enable searching of data; parts and fittings for all of the aforesaid goods; hand-held devices for payment and value exchange services and for enabling processing of other personal information services; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; ATM machines, point of sale card readers, remote access devices; data carriers; computer software for the provision of banking services, financial services, bank account management services, monetary transfer services, payment services, financial analysis and financial reports, financial management services, and information services relating to banking and finance; computer software to enable the searching of data relating to the foregoing; publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in electronic form supplied on-line from databases or from facilities provided on the Internet (Including web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format, or provided by CD-ROM or diskette.

Class 16: Paper, paper articles and advertising materials; printed matter, stationery, newspapers, periodicals and cheque books; print red publications, newsletters, magazines, pamphlets, leaflets; printed invitations; printed service guides; brochures; posters; printed forms and statements; printed plastic cards (other than encoded or magnetic); plastic covered cards bearing printed matter.

Class 35: Accounting services; book-keeping; payroll preparations; business appraisals, enquiries, investigations, research and business management advice; legal services (business); business management consulting; advertising and promotion services and information services relating thereto; business and commercial information services, all provided on-line from a computer database, computer network, global computer network or the Internet; compilation of advertisements for use as web pages on the Internet; business management services; business advisory services; compilation of directories for publishing on global computer networks or the Internet; compilation of advertisements for use on or as web pages or web sites on global computer networks or the Internet; provision of space on web sites for advertising goods and services; business administration services for the processing of sales made on the Internet; business planning; market analysis and research; data collection, storage and processing; publication of advertising material; advisory, consultancy and information services relating to all of the aforesaid services.

Class 36: Issuing of tokens of value in relation to incentive schemes; sponsorship of sports, sports teams and sporting events; information relating to financial, banking, insurance, economic and investment services provided on-line (not downloadable); advisory, consultancy and information services relating to all of the aforesaid services.

Class 37: Installation, maintenance and repair of electronic data capture and transmission systems for the purposes of electronic funds transfer or electronic funds transfer from points of sale; all included in class 37; roadside motor vehicle repair services.

Class 38: Data transmission and transfer services; telecommunication services provided In relation to the Internet; telecommunication of information (including web pages and web sites), computer programs and any other data; electronic mall services; provision of telecommunications access and links to computer databases, computer networks and the Internet; radio, television and cable television broadcasting services; transmission of radio and television programmes; providing access to and leasing access time to computer databases and computer networks; advisory, consultancy and information services relating to all of the aforesaid services.

Class 39: Recovery of vehicles; inspection of vehicles; vehicle towing services; delivery and storage of spare parts for motor vehicles; repatriation services for patients; transportation services for medical personnel; provision of information relating to road and traffic conditions; travel agency; advisory services relating to travel; route planning; chartering of aircraft; air ambulance services; agency services for arranging and planning travel; services for the provision of information relating to traffic and road conditions and motor and rail transport; services for arranging for the transportation of unwell travellers; storage and delivery services, all for spare parts of vehicles.

Class 41: Education and entertainment services; electronic publications provided on-line (not downloadable); organisation of sporting events and competitions; arranging and conducting of seminars, congresses, conventions, conferences and exhibitions; education and training related to banking, financial, insurance, economic and investment services; publication of printed matter, periodicals, newsletters, magazines, pamphlets, leaflets and other text relating to banking, financial, insurance, economic and investment on-line (not downloadable); advisory, consultancy and information services relating to all of the aforesaid services.

Class 42: Legal services; computer rental; design, drawing and commissioned writing, all for the compilation of web pages and web sites on the Internet; company registration services; services for the provision of information to travel routes; advisory, consultancy and information services relating to all of the aforesaid services.

Class 45: Concierge services; concierge services for others comprising making requested personal arrangements and providing customers-specific information to meet the needs of individuals.

3. The European Union trade mark remains registered for all the uncontested services, namely:

Class 36: Financial services; banking services; monetary transfer; payment services; automated banking services; home banking; lnternet banking; savings services; bill payment services; payment and credit services; credit card, debit card, charge card, cash card and bank card services; cash management; safe deposit services; bankers' clearing services; account debiting services; personnel (payroll) services; escrow services; cheque encashment services; credit brokerage; automatic cash dispensing services, automatic teller machine services; insurance services; financing of loans; loans (financial) against security; financial investment services; capital investment services; trustee services; financial management services; brokers and agents (for bonds and other securities); financial consultation services; investment advice; financial guarantees (surety services); financial analysis and providing reports; financial information services; financial research services; financing services (securing funds for others); financial advisory services; services for the provision and purchase of financial and/or credit information; administration of financial affairs; computerised financial services; advice and enquiries regarding credit; services for the provision of credit; acceptance of deposits; discount of bills (notes); domestic remittance, liability guarantee, acceptance of bills, lending securities, acquisition and transfer of monetary claims; trustee services; trusteeship of money; futures contracts; securities, monetary claims, personal property, land, land fixture surface rights and land leasing rights; money exchange, foreign exchange transactions, currency exchange services, travellers cheque services; letter of credit-related business, securities trading, index fixtures, securities options, overseas market securities futures, underwriting securities, selling securities, handling subscriptions and offerings of securities, providing stock market information, life insurance brokerage, life insurance underwriting, agencies for non-life insurance, claim adjustment for non-fife insurance, non-life insurance underwriting, insurance actuarial services; mortgage services; discount card services; share registration services; advisory, consultancy and information services relating to all of the aforesaid services.

4. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 4 275 971 ‘COUTTS’ (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely

Class 45: Concierge services; concierge services for others comprising making requested personal arrangements and providing customers-specific information to meet the needs of individuals.

The applicant invoked Article 51(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that, while the EUTM proprietor has used the contested mark on a very large scale in connection with banking, financial and insurance services, the EUTM has not been put to genuine use in connection with the contested goods and services. The applicant claims that the EUTM proprietor has used some of the contested goods or carried out some of the contested activities in the course of banking services but has only done so to complement its main services and not on their own right. The applicant explains that it has an interest in limiting the goods and services for which the EUTM is registered because the EUTM proprietor had alleged infringement of its EUTM in proceedings before the English High Court. Since the EUTM proprietor had not specified the goods or services to which the applicant’s goods or services would be allegedly similar or identical and it would therefore not be clear what goods or services may be challenged by counterclaim in those proceedings, the applicant considered it more appropriate to apply for revocation before the EUIPO.

The EUTM proprietor submits evidence of use, described in detail further below in this decision.

The applicant files observations on the EUTM proprietor’s proof of use and questions every single piece of evidence submitted. Furthermore, the applicant analyses in detail the evidence of use in relation to the contested goods and services, referring to evidence to support some of its arguments, and requests the Office to cancel the registration for the contested goods and services and to award in its favour the costs in the present proceedings.

The EUTM proprietor files observations in response to the applicant’s arguments and addresses the objections raised by the applicant. The EUTM proprietor maintains that the revocation application should be refused for all the contested goods and services.

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 20/04/2006. The revocation request was filed on 18/08/2015. 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 18/08/2010 to 17/08/2015 inclusive, for the contested goods and services reproduced at the beginning of this decision.

On 29/01/2016 and on 01/02/2016 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

Statutory Declaration signed on 27/01/2016 by Mr Richard Curtin, Head of Intellectual Property at The Royal Bank of Scotland Group plc and certified by a Public Notary. Mr Curtin submits that the EUTM proprietor is a wholly owned subsidiary of The Royal Bank of Scotland plc and emphasises that the revocation applicant has acknowledged and has not challenged the use of the EUTM for banking, financial and insurance services in Class 36 and, consequently, the submitted evidence should be considered in the light of that acknowledgment. Mr Curtin explains that the EUTM proprietor is a private bank and wealth manager and that the bank which was to become Coutts & Co was founded in 1692 and is the seventh oldest bank in the world. The Statutory Declaration contains information on the history of the name ‘Coutts’ and of the EUTM proprietor and on the opened branches in Europe (in Geneva, Athens, Cannes, Monte Carlo, etc.). Mr Curtin points out that Coutts is famous for its noble clients. Today the EUTM proprietor is wealth manager to a wider range of clients and operates stringent requirements to being accepted as a client based on total financial assets, resulting into serving a quite smaller customer base that the customer base and marked targeted by a conventional bank. The Statutory Declaration contains further information on the number of customers of the EUTM proprietor (for the period 2010 – 2015 the number of Coutts customers are more than 80,000 UK residents and more than 10,000 non UK residents), on the number of cards bearing the EUTM in circulation (approximately 40,000 credit/charge cards and 85,000 debit cards), as well as on the number of transactions made between 2010 and 2015 using COUTTS branded cards at LINK machines in the UK (between approximately 1,800,000 and 2,300,000 in the years 2013 – 2015; it is indicated that this data is provided by LINK – the UK cash machine network). It is clarified that the EUTM proprietor itself operates only five ATM machines in London and one at Eton. It is mentioned that the EUTM proprietor often collaborates with British fashion designers to design its ‘distinctive debit and credit cards’. Mr Curtin describes further goods and services under the contested EUTM, such as education services (in particular, hosting and sponsoring of education events relating to finance), entertainment events (in particular, supporting and sponsoring entertainment and sporting events), sponsorship of various public events, printed matter, magazines and newsletter, concierge services and travel services, stationery. The Statutory Declaration further provides information on the exhibits thereto (Exhibit RC1 – Exhibit RC27).

Exhibit RC1: A copy of a document with information on the relationship between The Royal Bank of Scotland Group plc and Coutts & Co. (with copyright Royal Bank of Scotland 2015).

Exhibit RC2: Excerpts dated 18/01/2016 from the website www.coutts.co.uk with information on the various types of credit, currency and bank cards issued by the EUTM proprietor. The EUTM proprietor claims that this demonstrates the nature of use of the EUTM on different types of bank cards.

Exhibit RC3: Printouts from various websites, magazine and customer forums (such as www.buddyloans.com, www.luxuryplastic.com, www.berkshire.b4-business.com) with information and comments (mostly dated within the relevant period) on Coutts credit cards (mentioned among the World’s most exclusive credit cards). The EUTM proprietor claims that this demonstrates the time and nature of use of the EUTM on various types of bank cards.

Exhibits RC4 – RC8: Authorisation to manufacture proof (dated in 2011, 2012, 2013, 2014 and 2015; most of them not signed) to produce Coutts MasterCard and Visa cards, with indication on the top of each page ‘Giesecke & Devrient’. According to the Statutory Declaration, the proofs were used to check text, type fonts, symbols and the layout of credit cards, which were then manufactured and sent to customers. The exhibit contains further a printout from the website of ‘Giesecke & Devrient’ dated 26/01/2016 wherein it is explained that the company is a global technology leader in banknote production and processing and supplies banks, mobile phone оperators, original equipment manufacturers, etc. with end-to-end solutions comprising hardware, software and services for mobile security applications, especially in telecommunications and electronic payment. It is, furthermore, indicated that the portfolio of the company ranges from classic magnetic strip cards through smartcard products to solutions for secure payment transactions. Among the examples various products designated or suitable for banks (credit or debit cards or even pre-paid cards, card bodies and devices, innovative card designs) are presented. Several banks are mentioned among the clients of Giesecke & Devrient. The EUTM proprietor claims that this shows the time and nature of use of the EUTM on various types of bank cards.

Exhibit RC9: A power point presentation entitled ‘Wealth Management’, undated (marked as confidential and for internal use only) with images and card descriptions of different cards issued by the EUTM proprietor.

Exhibit RC10: Printouts of an article published on 23/11/2004 on www.marketingweek.com with information on credit cards issued by the EUTM proprietor and designed by Ozwald Boateng and of an article published on 10/10/2006 on www.vogue.co.uk reporting that the EUTM proprietor had commissioned Stella McCartney to design a current account card. The EUTM proprietor claims that this demonstrates the time, place and nature of use of the EUTM on bank, credit and debit cards.

Exhibit RC11: Information in relation to LINK – the UK’s cash machine network from the website www.link.co.uk dated 19/01/2016 (according to the Statutory Declaration, the printout and the EUTM proprietor´s observations, around 65,500 cash machines in the UK connect to LINK and the LINK network is a fundamental part of the UK’s financial payment and LINK operating rules would state that each LINK ATM must bear the name of the Acquirer or operator member that is responsible for the ATM’s operation).

Exhibit RC12: Two images of ATM machines branded with (not dated). According to the EUTM proprietor this demonstrates the time, place, nature and extent of use of the EUTM on ATM machines.

Exhibit RC13: Copy of slides of a presentation entitled ‘2011 Investment Outlook’ dated February 2011 bearing the sign (the evidence bears no indications as to if, when and to what audience the presentation was held); information on the event ‘Investment Management at Coutts’ (on 28/09/2011) with objectives, inter alia, to raise the profile of/introduce Coutts wealth management to clients and prospects and to demonstrate expertise; information on the event ‘Finance 101 Understanding the basics of personal finance’ held in 2012 and 2013 (on top of the information materials the sign is depicted) at the London Stock Exchange; e-mail invitation to an ‘exclusive dinner’ hosted by the Managing Director of the EUTM proprietor in January 2014; event profile form in relation to the event ‘Coutts Forum for Philanthrophy’ scheduled for 19/05/2011 and 03/02/2012 mentioning that it ‘is an opportunity to invite existing clients and prospects to come along to an interactive education and netwoking event’ and ‘a great opportunity to introduce the philantrophy services that Coutts offers to clients and potential clients’. The EUTM proprietor claims that the evidence relates to educational events, seminars and workshops organised by the EUTM proprietor and demonstrates the nature, time, place and extent of use.

Exhibit RC14: Invitation to ‘an exclusive viewing’ of the Monaco Grand Prix in 2013; invitation to the London Royal Opera House in 2014 for a performance of ‘The Sleeping Beauty’ with information that ‘Coutts is proud to be a production sponsor’; layouts of advertising materials in relation to a jewellery exhibition in London in 2013/2014, sponsored, inter alia, by the EUTM proprietor; advertising materials and publications in relation to the RHS Chelsea Flower Show 2014 in London, sponsored by the EUTM proprietor in collaboration with ABF The Soldier’s Charity. The EUTM proprietor explains that the contested mark is used in connection with entertainment events, particularly supporting and sponsoring well known entertainment and sporting events.

Exhibit RC15: Invitations and materials in relation to the annual Russian Ballet Icons Gala and Dinner 2013 sponsored by the EUTM proprietor and the performance of the Sleeping Beauty at the London Royal Opera House in 2013/2014.

Exhibit RC16: Press publication in relation to the Cannes Film Festival 2012 (where representatives of the UK bank Coutts are mentioned among the ‘familiar faces’); ‘The Complete 2011 Cannes Film Festival Party Grid’ listing also a Coutts & Co Reception; printout from the website creativeengland.co.uk of a publication entitled ‘Creative England at Cannes 2015’ mentioning an event on the ‘Coutts Yacht’; a press release with regard to the London Design Festival 2014 wherein Coutts is mentioned among the supporters as well as further publications in relation to this event within the relevant period referring to the ‘Coutts Lifetime Achievement Medal’ and the sponsorship of Coutts.

Exhibit RC17: Copies of advertisement templates (mainly in English and in Russian) run, according to the EUTM proprietor, in Europe from 2010 to 2015, from the materials themselves, however, no publication dates, media or circulation numbers are evident; copy of an advertising feature commissioned by Coutts in 2012 and entitled ‘Intellectual Power Games’, providing information on an ‘Initiative by Coutts called Futurescope. According to the EUTM proprietor, all of the adverts show the contested mark and demonstrate the nature of use on advertising materials.

Exhibit RC18: The Summer 2014, Winter 2014, Spring 2015 and Winter 2015 copies of the magazine entitled ‘THE QUILL The Magazine for Coutts Pensioners’, with the sign depicted on top (sent, according to the EUTM proprietor, to Coutts pensioners and ex staff three times a year; a total of 2000 copies in each run, published both in print copy and electronically, however, the evidence bears no indications as to the publication and circulation numbers).

Exhibit RC19: The October 2014 and February 2015 copies of a newsletter entitled ‘REAL ESTATE PERSPECTIVE’ sent, according to the EUTM proprietor, to all clients of the EUTM proprietor every quarter by email as a pdf, however, the evidence bears no indications as to the publication and circulation numbers.

Exhibit RC20: Copies of newsletters/reports entitled ‘THE MILLION POUND DONORS REPORT (MDDR)’ sent to philanthropy clients of the EUTM proprietor once per year (distributed both in print copy and electronically, the distributed number varying between 400 in 2014 and 5000 in 2015, according to the EUTM proprietor, however, the evidence bears no indications as to the publication and circulation numbers). In the reports it is mentioned that ‘[t]his publication is a summary of the full Million Dollar Donors Report, which can be found online at coutts.com/donorsreport’.

Exhibit RC21: Copies of newsletters/reports entitled ‘INVESTMENT OUTLOOK (FIVE RISKS AND TEN OPPORTUNITIES)’ (in English and Russian) sent to investment clients of the EUTM proprietor once per year (distributed both in print copy and electronically, 20,000 copies in 2014 and 21,000 in 2016, according to the EUTM proprietor, however, the evidence bears no indications as to the publication and circulation numbers).

Exhibit RC22: Copies of magazine/newsletter entitled ‘COUTTS INDEX’ sent to all clients of the EUTM proprietor once per year (distributed both in print copy and electronically, 10,000 copies in 2013 and 7,000 in 2015, according to the EUTM proprietor, however, the evidence bears no indications as to the publication and circulation numbers).

Exhibit RC23: Extracts from further publications of the EUTM proprietor dated between 2009 and 2015 (the number of copies issued to customers varying between 150 and 15,000, according to the EUTM proprietor, however, the evidence bears no indications as to the publication and circulation numbers).

Exhibit RC24: An example of a template of the ISA (Individual Savings Accounts) report the EUTM proprietor indicates it sends to around 4000 customers, twice per year, however, the evidence bears no indications as to the publication and circulation numbers.

Exhibit RC25: Template of a booklet entitled ‘Excellence in private banking’ of the EUTM proprietor with information on the services provided under the contested EUTM (including COUTTS ONLINE) and a printout dated 18/01/2016 of the internet site of Coutts Online.

Exhibit RC26: Printouts (undated or dated after the relevant period) from the EUTM proprietor’s website in relation to concierge service offered to clients (restaurant bookings, travel, tickets, etc.). The Exhibit contains a printout of the FAQs wherein it is explained that the online concierge service is an online platform that allows carrying out online of the typical requests made of the concierge service, including restaurant, ticket, hotels and flight bookings, etc. In the FAQs it is clarified that the services are provided by a third party (Ten Lifestyle Management Limited) and that the relationship of the client will be rather with Ten than with the EUTM proprietor. According to the EUTM proprietor, this demonstrates use of the contested mark on the Class 45 concierge services as well as travel services in Class 39.

Exhibit RC27: Examples of stationery used by the EUTM proprietor.

Written Statement signed on 01/02/2016 by Ms Karen Veitch of Lincoln IP (the EUTM Proprietor’s representative in the present proceedings) describing Exhibits A-C to the Written Statement.

Exhibit A: Table (neither dated nor signed) with information on the number of cheque books issued to clients of the EUTM proprietor in the period 2010 – 2015 (the total number varying between approximately 80.000 in 2015 and approximately 160.000 in 2010). This demonstrates, according to the Written Statement, the extent of use of the contested mark on cheque books.

Exhibit B: Images of Coutts Cheque and Credit Books 2015 (with indication of the volume produced). This shows, according to the Written Statement, the nature of use of the contested mark on cheque books.

Exhibit C: Copy of a performance analysis generated in December 2015 in relation to the use of Coutts Online Concierge during the said month (the document contains some information on the performance starting from August 2015, showing that in August 188 users made 427 requests). According to the Written Statement, this provides an idea of the extent of use of the EUTM on concierge services.

Preliminary remarks

The applicant argues that the declaration and the Witness Statement filed by the EUTM proprietor cannot in themselves prove genuine use. The Cancellation Division points out that, as far as the Statutory Declaration and the Witness Statement are concerned, Rule 22(4) EUTMIR (applicable to cancellation proceedings by virtue of Rule 40(6) EUTMIR) expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(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.

The EUTM proprietor emphasises that the Statutory Declaration was sworn and declared as fact before a Public Notary and should, therefore, be given additional value. However, neither the EUTMR nor the EUTMIR supports the conclusion that the evidential value of items of evidence of use of the mark, including affirmations, must be assessed in the light of the national law of a Member State (judgments of 28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 33; 09/12/2014, T-278/12 PROFLEX, EU:T:2014:1045, § 53). The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (judgment of 07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42). In general, statements drawn up by the interested parties themselves or their employees are 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

The Cancellation Division finds it useful to establish upfront that it is not disputable between the parties and, furthermore, the whole body of evidence bears witness to the fact that the EUTM proprietor may have a certain presence on the market for the non-contested services in Class 36 (falling in the categories of banking, financial and insurance services).

However, the contested goods and services, for which the EUTM is registered, are listed in the ‘Reasons’ section of the present decision. The Cancellation Division considers it relevant to point out that use must be proven for the goods and services as actually registered, not for those similar or comparable to them, and also not for goods and services rendered in connection with the registered ones.

These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the EUTM proprietor is obliged not only to indicate but also to prove each of these requirements.

In particular, the evidence must show genuine use of the European Union trade mark within the relevant period and in the European Union (see Article 15(1) EUTMR and Article 51(1)(a) EUTMR).

With a view to the above, the Cancellation Division is convinced that the evidence submitted is sufficient to prove the time of use and the place of use of the contested EUTM.

While indeed, as noted by the applicant, some pieces of evidence are not dated or dated outside the relevant period, most of the evidence is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Furthermore, in the present case, the information contained in the Statutory Declaration and in Exhibits RC1-2 and the materials and printouts in Exhibits RC3 and RC13 refer to the relevant territory. Therefore, the evidence relates to the relevant territory.

Use in relation to the registered goods and services and extent of use

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 evidence submitted as well as the arguments put forward by the EUTM proprietor concern predominantly contested goods in Class 9, in particular, various bank cards, cheque books, software and electronic publications, ATM machines, the goods in Class 16, the sponsorship services in Class 36, the travel services in Class 39, the education and entertainment services in Class 41 and the concierge services in Class 45:

Use in relation to goods in Class 9 and to cheque books in Class 16, as follows:

Class 9: Magnetically encoded cards for carrying data; multifunction cards for financial services; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; parts and fittings for all of the aforesaid goods; ATM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; ATM machines, point of sale card readers, remote access devices; data carriers.

Class 16: Cheque books.

The Cancellation Division is of the view that there is no doubt that the EUTM proprietor has been issuing a wide range of bank cards (credit cards, debit cards, cash cards, etc.) within the relevant period as part of its financial services (for example, of its credit card, debit card, charge card, cash card and bank card services for which the EUTM is protected in Class 36). However, as argued by the applicant and supported by relevant decisions of the Boards of Appeal (such as decision of 7/05/2012, R 1662/2011-5 and R 1919/2011-5, ‘CITIBANK’, as well as decision of 17/05/2013, R 84/2013-5, ‘ПЪРВА ИНВЕСТИЦИОННА БАНКА’), the fact that the EUTM proprietor provides to its clients the possibility of obtaining banking cards bearing its trade mark does not amount to use of the contested EUTM for the various cards listed in the specification in Class 9, which are different types of data carriers, used in the process of or closely related to the EUTM proprietor’s non-contested services in Class 36.

On the other hand, there is no evidence showing that the proprietor has produced or offered the production of data carriers of any types (or parts and fittings for such), only that it offered credit and other bank card services to its clients. There is also no evidence that the proprietor has offered magnetic cards to customers for purposes independent from its banking services offered.

Although banking cards are issued by banks to their clients as part of the financial services offered, the cards are not physically made or produced by banks. Rather, they are ordered by the bank to specialized card manufacturers (which then also apply the respective brand on the cards; however, contrary to the EUTM proprietor´s arguments, this does not amount to use of the contested EUTM under the authorisation of the EUTM proprietor). This conclusion is supported not only by the case-law quoted above but is also in line with the Office’s Guidelines (Guidelines for Examination of European Union trade marks, European Union Intellectual Property Office (EUIPO), Part C Opposition, Section 2 Double Identity and Likelihood of Confusion, Chapter 2 Comparison of Goods and Services, Annex II, paragraph 8.3.) establishing that ‘[t]he customers are aware of the fact that financial institutions are not responsible for the technological aspects of issuing magnetic or chip cards’.

Furthermore, this finding is confirmed by the evidence on file, namely by the EUTM proprietor’s submissions that the cards are manufactured by ‘Giesecke & Devrient’ (Exhibits RC4 – RC8) as well as by the evidence submitted by the applicant (Exhibit O1 – Copy of the EUTM proprietor’s ‘Private Client Conditions of Use’, containing explicit provisions that the card remains the bank’s property and Exhibit O2 – printout from the website of the International Card Manufacturers Association, showing a list of companies whose primary business is manufacturing but may also do personalization, wherein the EUTM proprietor is not mentioned but its supplier ‘Giesecke & Devrient’ is, and the document is referring to the ‘card industry’).

The EUTM proprietor disputes the applicant’s arguments and evidence and argues that if this line of reasoning was to be accepted, software providers could never make genuine use of a trade mark on software as in many cases the ownership is not actually ‘sold’. The Cancellation Division finds, however, that due to the specific and different nature of software and bank cards and in the absence of a concrete factual or legal situation allowing drawing of an analogy to software, this argument of the EUTM proprietor has no impact on the outcome.

Furthermore, the EUTM proprietor draws an analogy to ‘the use of well-known marks, such as HARLEY DAVIDSON USA …. on clothing in class 25’ and that the relevant public would not necessarily expect a well-known clothing brand such as GAP to manufacture their own goods in-house. The Cancellation Division points out that the above arguments of the EUTM proprietor are not in the context of particular cancellation actions or case-law concerning genuine use of the trade marks referred to by the EUTM proprietor on any goods to be taken into account in the present case. Furthermore, the Cancellation Division is of the view that no analogy can be drawn between the rather abstract examples of the EUTM proprietor and the present case, since the goods and services or even the industries in question are not comparable; the EUTM proprietor refers to a case where a well-known company may or may not manufacture in-house the goods that are subsequently sold by that company with a view to creating and maintaining a market share in the clothing market, unlike in the present case where the EUTM proprietor is a client of the manufacturer of bank cards (of the card industry, in general) and is a provider of the services of issuing bank cards, covered by the non-contested services in Class 36.

Consequently, the EUTM proprietor has failed to prove that the contested EUTM was genuinely used for the contested goods in Class 9 falling in the category of bank cards and data carriers.

Along the same line of reasoning, which finds further confirmation in the evidence submitted by the applicant (Exhibits O1 - Copy of the EUTM proprietor’s ‘Private Client Conditions of Use’, containing explicit provisions on the return of unused cheques to the bank on closure of the account and O3 – List of accredited cheque printers and certified bank giro credit printers as of January 2016, wherein neither the EUTM proprietor nor any bank is mentioned), the Cancellation Division finds that although the EUTM proprietor is providing cheque-related financial services to its clients (such as cheque encashment services in Class 36), it has failed to prove that the contested EUTM was genuinely used for cheque books in Class 16.

The above reasoning is also applicable in relation to the claimed use of the contested EUTM in relation to ATM machines. The Cancellation Division points out that while it is not disputed and it is clear that the EUTM was put on ATM machines, as explained in the Statutory Declaration, the ATM machines are used in relation to cash withdrawal services. Consequently, the Cancellation Division finds that although the EUTM proprietor is providing to its clients automatic cash dispensing services and automatic teller machine services (for which protection is granted in Class 36), it has failed to prove that the contested EUTM was genuinely used for ATM machines in Class 9.

For the sake of completeness, the Cancellation Division points out that the EUTM proprietor has neither provided arguments nor any evidence in relation to use of the contested EUTM for point of sale card readers, remote access devices.

Use in relation to the remaining contested goods in Class 9 falling in the category of hardware, software and electronic publications as well as in relation to some of the contested services in Class 36, as follows:

Class 9: Computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and web sites); computer software and telecommunication apparatus (including modems) to enable connection to databases, computer networks and the Internet; computer software to enable searching of data; parts and fittings for all of the aforesaid goods; hand-held devices for payment and value exchange services and for enabling processing of other personal information services; computer software for the provision of banking services, financial services, bank account management services, monetary transfer services, payment services, financial analysis and financial reports, financial management services, and information services relating to banking and finance; computer software to enable the searching of data relating to the foregoing; publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in electronic form supplied on-line from databases or from facilities provided on the Internet (Including web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format, or provided by CD-ROM or diskette.

Class 36: Information relating to financial, banking, insurance, economic and investment services provided on-line (not downloadable); advisory, consultancy and information services relating to all of the aforesaid services.

The EUTM proprietor explains that it would be common knowledge that banking and credit card facilities are almost always offered digitally; by way of example, it is mentioned that ‘most credit card services provide mobile phone software in the form of “apps”’. It is, furthermore, claimed that it would be very unusual in today’s market for a credit card or a bank account to be offered without an associated digital or online presence and, therefore, the EUTM proprietor’s software goods in Class 9 would be all of the kind that the general public would reasonably assume a bank to provide, such goods being not only intrinsically linked to but also necessary to provide a credit card service which is fit for purpose.

The EUTM proprietor seeks to rely on the printout dated 18/01/2016 from the internet site of Coutts Online in Exhibit RC25 in conjunction with the information in the Statutory Declaration as evidence that the EUTM was used on mobile apps.

Furthermore, the EUTM proprietor refers to the Statutory Declaration providing examples of electronic publications under the EUTM and to Exhibits RC18 – RC22 and explains that all of the publications also have electronic editions. In this respect, the Cancellation Division takes note of the applicant´s arguments that no evidence of the supply of any electronic publication to third parties to create and maintain a share in the market for electronic publications has been submitted and that providing of electronic publications to customers to advertise one´s own services does not constitute the creation or maintenance of a share in the market for electronic publications.

In any event, regardless of whether the EUTM proprietor’s use of the contested EUTM is considered to be with a view to creating or maintaining a market share for the above goods in Class 9, the EUTM proprietor did not provide sufficient evidence which would allow any safe conclusions to be drawn as to the extent to which they were distributed amongst its clients or to third parties. It is true that the EUTM proprietor has provided in Exhibits RC18 – RC25 various examples of publications (magazines, reports, newsletters) and has claimed that all the materials were also distributed electronically. However, with the exception of one reference in Exhibit RC20 that ‘[t]his publication is a summary of the full Million Dollar Donors Report, which can be found online at coutts.com/donorsreport’, none of the pieces of evidence bear indications as to distribution period, quantity, frequency or territory in relation to the distribution of electronic publications or to the distribution of publications in a digital, electronic form, from a CD, online, etc. The impressive figures in the Statutory Declaration on the use of the EUTM for the goods in question in Class 9 are not corroborated by any objective evidence or evidence originating from independent sources (for example, statements of the advertising agencies responsible for the distribution of the publications, number of downloads of /access to the software or to electronic publications, reports on the circulations, financial reports or data, etc.). The Class 9 goods in question cannot be related to any other piece of evidence submitted by the EUTM proprietor which bears witness to a certain extent of use.

Therefore, it may be likely that the EUTM proprietor has used a number of the Class 9 goods at stake with the contested EUTM on them and it may be even reasonable to assume that a bank could provide such goods. However, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (27/09/2007, T-418/03, La Mer, EU:T:2007:299, § 59). In the absence of any solid and objective evidence concerning the extent of use, one of the indispensable conditions for genuine use has not been shown by the EUTM proprietor.

Along a similar line of reasoning, the Cancellation Division is of the view that the EUTM proprietor has failed to show genuine use of the contested EUTM for the above mentioned contested services in Class 36 (information relating to financial, banking, insurance, economic and investment services provided on-line (not downloadable); advisory, consultancy and information services relating to all of the aforesaid services).

Use in relation to goods in Class 16 (except for cheque books), as follows:

Class 16: Paper, paper articles and advertising materials; printed matter, stationery, newspapers, periodicals; print red publications, newsletters, magazines, pamphlets, leaflets; printed invitations; printed service guides; brochures; posters; printed forms and statements; printed plastic cards (other than encoded or magnetic); plastic covered cards bearing printed matter.

The EUTM proprietor has provided various pieces of evidence with a view to establishing use of the contested EUTM for advertising materials; printed matter and stationery in Class 16 (Exhibits RC17 and RC27).

However, according to the evidence submitted, the EUTM proprietor never offered advertising materials, printed invitations and stationery to third parties with a view to establishing and maintaining a commercial outlet. The submitted stationery materials depicting the contested EUTM may be used by the EUTM proprietor in the course of running its own business but do not prove that the EUTM proprietor provides the said contested goods to third parties. The fact that the EUTM appears on stationery, advertising materials or printed matter does not constitute use for goods in Class 16 but rather constitutes use in advertising for the services in Class 36 that are not contested. Use of printed matter, stationery or advertising materials by an establishment does not amount to use of the EUTM for such goods and does not correspond to offering those goods to other clients but rather shows that the EUTM proprietor is a client of other advertising establishments instead.

The EUTM proprietor submitted several examples of printed materials (newsletters, reports, Individual Savings Accounts, booklets, etc., Exhibits RC19 – RC25), all of which are related to services provided by the EUTM proprietor: Exhibit 19 concerns real estate investments (the materials contain notes such as ‘[f]or more information on any of our lending products please speak to your Private Banker. If you are new to Coutts please speak to Business Development..’ or ‘[i]f you require further advice regarding residential and commercial real estate services we offer…’); Exhibit RC20 is on the subject matter of philanthropy and refers to the ‘Coutts Philanthropy Services’, mentioning that ‘Coutts was the first private bank in the UK to establish a dedicated philanthropy advisory team’ and that the ‘Coutts Forums for Philanthropy create opportunities for clients to learn from some of the world’s leading practitioners…’; Exhibit RC20 is entitled ‘Investment Outlook (Five Risks and Ten Opportunities)’, mentioning, inter alia, that ‘the risks and opportunities we have identified …. will influence the investment decisions we make to protect and enhance your wealth over the long term’ and, evident from the edition in Russian, is not (only) targeting EU clients; the ‘Coutts Index’ in Exhibit RC22 is ‘a financial promotion’ as indicated in the publication itself; the publications in Exhibit RC23 refer to the ‘Coutts Entrepreneurs proposition’ or to the ‘Excellence in private banking’ or comprise reports and advice on different topics such as Management Buy Outs, business exits, private banking; the Individual Savings Accounts template in Exhibit RC24 is related to equity markets and to the performance of the EUTM proprietor’s ‘Coutts Tracker ISA’ and the booklet template in Exhibit RC25 is clearly promotional material.

The applicant claims that the publications of the EUTM proprietor are sent to ex staff and clients and that the provision of printed matter to clients, prospective clients and ex staff does not constitute use to maintain or create a market share in those goods. In relation thereto, the EUTM proprietor is correct in noting that just because a publication is targeted to a particular client base does not mean that the use of the EUTM on such publication is not genuine.

However, having reviewed the abovementioned material, the Cancellation Division concurs with the cancellation applicant that the use of the EUTM on the proprietor’s publications is mere use to promote the services of the EUTM proprietor and therefore cannot be considered sufficient evidence of use for goods as magazines, newsletters, periodicals, printed publications, other types of printed matter, etc. The commercial raison d’être of a mark is to create or preserve an outlet for the goods or services that bear the sign of which it is composed, as distinct from the goods or services of other undertakings. That condition is not fulfilled where promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter. In such situation, those items are not at all distributed with the aim of penetrating the market for goods in the same class.

From the evidence submitted it is not clear whether the publications are sent for free to the EUTM proprietor’s clients. Though goods (and services) offered free of charge may constitute genuine use when they are offered commercially, i.e. with the intention of creating or maintaining an outlet for those goods or services in the European Union, as against the goods or services of other undertakings, and therefore of competing with them (09/09/2011, T290/09, Omnicare, EU:T:2011:453, § 67-68), in the present case the use of the EUTM on items such as those described (promotional publications) in the evidence cannot be considered as sufficient evidence of use within the meaning of trade mark law.

As regards the magazine ‘The Quill’ in Exhibit RC18, it appears from the evidence that the magazine is offered exclusively to the EUTM proprietor’s ex staff and is not (solely) aimed at promoting the EUTM proprietor’s services but is intended to entertain and provide information to the readers. In any event, regardless of whether the EUTM proprietor’s use of the contested EUTM for ‘The Quill’ magazine is considered to be in line with its commercial raison d’être, the EUTM proprietor did not provide sufficient evidence which would allow any safe conclusions to be drawn as to the extent to which this magazine was distributed amongst its ex staff.

The evidence of use filed by the EUTM proprietor with regard to the abovementioned magazine is limited to printouts of four editions of the magazine and a mere statement in the affidavit that the goods have been distributed in the relevant period in the European Union, three times a year, a total of 2000 copies in each run and is not sufficient proof of genuine use. The Statutory Declaration, even though it is a valid means of evidence within the meaning of Article 78(1)(f) EUTMR, emanates from an employee of the EUTM proprietor and its credibility has to be assessed with that proviso in mind. The distribution figures in the Statutory Declaration on the use of the EUTM for the goods in question in Class 16 are not corroborated by any objective evidence or evidence originating from independent sources (for example, statements of the advertising agencies responsible for the distribution of the publications, number of downloads of electronic versions of the publications, reports on the circulations, number of ex staff and territory of distribution, etc.). The materials in Exhibit RC18 cover a limited period of time within the relevant period and, furthermore, from the totality of the evidence on file and not applying a piecemeal approach, no conclusive data on the territorial scope, duration and frequency of use as well as on the commercial volume under the EUTM can be deducted. Even considering that the bank serves an exclusive clientele and is effectively targeting a niche market, which means that proof of a very limited commercial volume might have been sufficient, the evidence is manifestly insufficient to prove even that. The publication in question cannot be related to any other piece of evidence submitted by the EUTM proprietor (whether dated within the relevant period or not) which bears witness to a certain extent of use (such as references in third party publications).

The EUTM proprietor neither claimed nor submitted any evidence or arguments for use of the EUTM in relation to paper, paper articles, newspapers, pamphlets, leaflets; printed service guides; brochures; posters; printed forms and statements; printed plastic cards (other than encoded or magnetic); plastic covered cards bearing printed matter.

Use in relation to the following contested services in Class 36:

Class 36: Sponsorship of sports, sports teams and sporting events; advisory, consultancy and information services relating to all of the aforesaid services.

The EUTM proprietor has provided various pieces of evidence with a view to establishing use of the contested EUTM for sponsorship services in Class 36 (namely Exhibits RC14 – RC16, as well as Exhibit RC18).

While it is true that Exhibits RC14 - RC16 contain evidence showing the use of the EUTM for various sponsorship activities, it should be born in mind that the specification of the contested services in Class 36 explicitly clarifies that the contested EUTM is protected for sponsorship of sports, sports teams and sporting events. The Cancellation Division is of the opinion that neither of the events referred to in Exhibits RC14 - RC16 and sponsored by the EUTM proprietor (the performance of ‘The Sleeping Beauty’ at the London Opera House, jewellery exhibition, a flower show, the Russian Ballet performance, the London Design Festival) can be considered to be or to relate to sports, sports teams and sporting events.

As regards to the evidence in relation to the Monaco Grand Prix (which is a sporting event), it is to be pointed out that the material submitted consists of an invitation to ‘an exclusive viewing …. held on a private terrace’ and there is no mention of the EUTM proprietor being a sponsor of the event.

Finally, with respect to the references made by the EUTM proprietor to Exhibit RC18 in support of the alleged use of the EUTM for sports sponsorship, it is acknowledged that ‘The Quill’ magazine contains articles mentioning the ‘Coutts Bowls Club’ and the ‘Coutts Sailing Club’. However, in the absence of further information as to the actual involvement of the EUTM proprietor in sponsoring such teams and considering the above conclusions of the insufficient evidence as to the extent of use in relation to the evidence in Exhibit RC18, the few instances of mentioning the ‘Coutts Bowls Club’ and the ‘Coutts Sailing Club’ are not sufficient to prove use of the EUTM for the above contested services in Class 36.

Use in relation to the contested services in Class 41, as follows:

The EUTM proprietor refers to the evidence provided in Exhibit RC13 for the purposes of showing use of the contested EUTM on education services and on the evidence in Exhibits RC14 – RC16, as well as Exhibit RC18 for showing use in relation to entertainment and organising of sporting events and competitions.

Even though the evidence in Exhibit RC13 shows invitations to several events hosted by the EUTM proprietor, from the invitations to the events it is evident that a prime objective is to raise the profile of the Coutts services or to introduce them to clients and prospects and to ‘demonstrate expertise’. This conclusion is not prejudiced by the EUTM proprietor’s argument that the content of these events was not just about its core services but covered broad ranging topics as the ‘Macro-economic outlook for 2011’, since, considering the EUTM proprietor’s explanation as to the profile of its clientele (with investment assets over a particular value) as well as the fact that the non-contested services in Class 36 cover, for example, financial investment services and overseas market securities futures, there is a clear link between the topics of the seminars and the EUTM proprietor’s core business. Consequently and along a similar line of reasoning as in relation to the promotional publications in Exhibits RC19 – RC25, the Cancellation Division is of the view that the use of the EUTM in relation to the above events was not with the aim of penetrating the market for the abovementioned services in Class 41 and that the evidence cannot be considered as sufficient evidence of use within the meaning of trade mark law. For the sake of completeness, the Cancellation Division points out that the evidence in Exhibit RC13, whether alone or in combination with other documents, does not provide a clear picture of whether the events actually took place, how many persons actually attended, whether those services are provided or not. This is clearly insufficient to show the genuine use of the sign in relation to these services.

With regard to the EUTM proprietor’s assertions concerning the use of the contested mark on entertainment and organising of sporting events and competitions, the Cancellation Division finds that the submitted materials show that the EUTM proprietor appears to be the sponsor of entertainment or cultural events rather than the organiser. It does not establish that the EUTM proprietor itself provided the services. There is no indication that entertainment services were ever marketed or planned to be marketed by the EUTM proprietor at all, nor does the evidence in any way establish that the objective of the EUTM proprietor’s involvement in these events was to create or preserve an outlet for those services. Instead, the evidence leads to the conclusion that the EUTM proprietor merely contributed to such activities to promote the sale of the non-contested services in Class 36.

As regards the references to sporting events and to the photography competitions mentioned in ‘The Quill’, reference is made to the reasoning with regard to use of the contested EUTM for sponsorship services in Class 36.

Use in relation to some of the contested services in Class 39 and to the contested services in 45, as follows:

Class 39: Travel agency; advisory services relating to travel; agency services for arranging and planning travel.

Class 45: Concierge services; concierge services for others comprising making requested personal arrangements and providing customers-specific information to meet the needs of individuals.

The EUTM proprietor seeks to rely on the evidence provided in Exhibit RC26 and Exhibit C for the purposes of showing use of the contested EUTM on the above services in Classes 39 and 45.

However, and without taking a stand on the question whether the use of the EUTM in relation to an online platform allowing the customers to carry out online reservations of restaurants, hotels, tickets, etc. can be considered use in relation to the above mentioned contested services and whether such use should be considered as merely promotional, the Cancellation Division finds that the evidence is insufficient to prove the extent of use.

In particular, the evidence in Exhibit RC26 is either not dated or dated outside the relevant period (namely 22/01/2016) and there are no indications as to a link to the relevant period. The performance analysis (Exhibit C) is generated in December 2015 and is thus also outside the relevant period, however, it contains data on the performance starting from August 2015. In any event, from the performance analysis it can be only established that in the whole month of August 2015 (the relevant period ending on 17/08/2015) the total number of users making requests is 188 and this is clearly insufficient to maintain the registration of a EUTM. Furthermore, the evidence also lacks information as regards the territorial aspect of the extent of use, as there are no indications whether the users making requests and/or the requested services relate to the relevant territory.

Use in relation to the remaining contested services in Classes 35, 36, 37, 38, 39 and 42:

In the present case, the EUTM proprietor did neither claim nor submit any evidence for use of the EUTM in relation to the following services:

Class 36: Issuing of tokens of value in relation to incentive schemes; advisory, consultancy and information services relating to all of the aforesaid services.

Class 39: Recovery of vehicles; inspection of vehicles; vehicle towing services; delivery and storage of spare parts for motor vehicles; repatriation services for patients; transportation services for medical personnel; provision of information relating to road and traffic conditions; route planning; chartering of aircraft; air ambulance services; services for the provision of information relating to traffic and road conditions and motor and rail transport; services for arranging for the transportation of unwell travellers; storage and delivery services, all for spare parts of vehicles.

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, an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods and services (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested goods and services. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested goods and services.

The EUTM remains on the register for all the uncontested services.

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, i.e. as of 18/08/2015.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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 Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) 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

Vanessa PAGE

Denitza STOYANOVA-VALCHANOVA

José Antonio GARRIDO

OTAOLA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

COUTTS | Decision 0011547

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