HvE | Decision 0012092 | Trademarkers LLC

HvE | Decision 0012092

Date Published: Sep 25, 2017

CANCELLATION No 12 092 C (REVOCATION)

Trademarkers N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (applicant)

a g a i n s t

Bent Angelo Jensen, Turnerstr. 11, 20357 Hamburg, Germany (EUTM proprietor) represented by Rechtsanwälte Weinert Levermann HEEG, Kattrepel 2, 20095 Hamburg, Germany (professional representative).

On 03/07/2017, 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 6 950 695 are revoked as from 17/11/2015 for part of the contested goods, namely:

Class 3: Hair pomade; perfume and toilet water (except those for men); aftershave, deodorants, soaps.

Class 9: Ophthalmic frames, spectacle frames, frames for sunglasses, clips, covers and cases for spectacles and sunglasses, parts and accessories for all the aforesaid goods; image, sound and data carriers of all kinds, recorded magnetic, magneto-optical and optical carriers for sound and/or images and/or data, including DVDs, CDs, CD-ROMs, computer diskettes, video and audio cassettes and discs.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes (except cufflinks), jewellery (except cufflinks), precious stones, horological and chronometric instruments.

Class 18: Leather and imitations of leather and goods made from these materials, not included in other classes, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, luggage, rucksacks, bags, briefcases, wallets, purses, covers, credit card holders, notebook holders, coin containers, key cases.

Class 25: Clothing, footwear, headgear (except those for men).

3. The European Union trade mark remains registered for all the remaining goods, namely:

Class 3: Perfume and toilet water for men.

Class 14: Cufflinks.

Class 25: Clothing, footwear, headgear; all for men.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 6 950 695 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 3: Hair pomade, perfume and toilet water, aftershave, deodorants, shaving soaps.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewellery, precious stones, horological and chronometric instruments.

Class 25: Clothing, footwear, headgear.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM was not put to genuine use in the European Union within the five-year period from 19/01/2009 (registration date). Further or in alternative, it adds that the EUTM was not put to genuine use for an uninterrupted period of at least five years prior to the date of the application for revocation. The applicant therefore requests that the EUTM be revoked with a date of effect of 19/01/2014.

The EUTM proprietor submitted evidence of use (listed below) for a series of products in Classes 3, 9, 14, 18 and 25 (suits, blousons, men underpants, braces, cardigans, coats, cummerbunds, dressing gowns, shirts, trousers, jackets, ties, headgear, waistcoats, square pockets, scarfs, bow ties, footwear, perfumes, shaving products, sunglasses, jewellery, umbrellas; all for men). It argues that the figurative mark has been used to identify the EUTM proprietor’s products, that it sells products online in all Member States of the European Union and that the trade mark is well known since celebrities wear ‘Herr von Eden’ products.

The applicant replies that the evidence of use should relate to the place, time, scope and nature of use as well as to the goods for which the trade mark is registered. It alleges that the evidence submitted is insufficient for these purposes and proceeds to point out the deficiencies of each and every document submitted. In particular it emphasises that the evidence only relates to suits in Class 25 and that the evidence relating to advertising does not show sufficient extent of use. It claims that the EUTM proprietor has not indicated the audience of the magazines and there is no information relating to advertising expenditure, market share and turnover of goods.

In its final observations, the EUTM proprietor argues that the names and the dates of the magazines have been provided and they are well-known magazines distributed in Germany and in other countries of the European Union. It also argues that store sales and online shop sales have been provided, including the location of the store in Germany and the delivery address of the customers. Finally, it points out that the evidence not only concerns suits but also blousons, braces, cardigans, cummerbunds, dressing gowns, shirts, trousers, jackets, ties, headgear, square pockets, scarfs, bow ties, footwear, perfumes, shaving products, sunglasses, umbrellas.

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 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 19/01/2009. The revocation request was filed on 17/11/2015. 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 17/11/2010 to 16/11/2015 inclusive, for the following contested goods:

Class 3: Hair pomade, perfume and toilet water, aftershave, deodorants, soaps.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewellery, precious stones, horological and chronometric instruments.

Class 25: Clothing, footwear, headgear.

On 05/08/2016 the EUTM proprietor submitted evidence as proof of use. On 28/10/2016, upon request of the Cancellation Division, the EUTM proprietor submitted translation of the relevant parts of the evidence.

The voluminous evidence of use is sorted by goods and the Cancellation Division will follow the same structure.

The evidence is the following:

Suits

Photographs of suits for men showing the sign .
Advertisings in magazines dated 2011 and 2012.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (6763 suits sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of suits, all dated within the relevant period.
Overview of online shop sales from 04/07/2014 to 18/07/2016. It shows the total number of sales for the relevant period and the sales figures indicate that 410 suits were sold during the relevant period.
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some products ordered online.

Blousons

Photographs of blousons for men showing the sign .
Advertisings in magazines dated 04/2016 (after the relevant period).
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The documents provide orders, sales and stocks numbers.
Examples of store sales through product history and sales documents concerning some specific models of blousons, all dated within the relevant period.

Boxer shorts (men underpants)

Photographs of goods showing the sign .
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The documents provide orders, sales and stocks numbers.
Examples of store sales through product history and sales documents concerning some specific models of boxer shorts, all dated within the relevant period.

Braces

Photographs of braces for men showing the sign .
Advertisings in magazines dated 2014, 2015 and 2016.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (2078 braces sold).
Examples of store sales through product history and sales documents concerning some specific models of braces, all dated within the relevant period.
Overview of online shop sales from 16/11/2014 to 18/07/2016. It shows the total number of sales for the relevant period and the sales figures indicate that 239 braces were sold during the relevant period.

Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some braces ordered online.

Cardigans

Photographs of cardigans for men showing the sign .

Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. 12 cardigans were sold during the relevant period.
Examples of store sales through product history and sales documents concerning some specific models of cardigans, all dated within the relevant period
Overview of online shop sales from 24/10/2015 to 04/03/2016. It shows the total number of sales for the relevant period (57 cardigans sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some cardigans ordered online.

Coats

Photographs of coats for men showing the sign .
Advertisings in magazines dated 04/2011 and 01/2016.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. 25 coats were sold during the relevant period.
Examples of store sales through product history and sales documents concerning some specific models of coats, all dated within the relevant period
Overview of online shop sales from 01/02/2015 to 15/04/2016. It shows the total number of sales for the relevant period (40 coats sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some coats ordered online.

Cummerbunds

Photographs of goods showing the sign .
Advertisings in magazines dated 2011, 2015 and 05/2016.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers.

Examples of store sales through product history and sales documents concerning some specific models of cummerbunds, all dated within the relevant period. 90 cummerbunds were sold during the relevant period.
Overview of online shop sales from 11/12/2015 to 03/07/2016. It shows the total number of sales for the relevant period (9 cummerbunds sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some cummerbunds ordered online.

Dressing gowns

Photographs of dressing gowns for men showing the sign .
Advertisings in magazines dated 2014, 2015 and spring 2016.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. 33 dressing gowns were sold during the relevant period.
Examples of store sales through product history and sales documents concerning some specific models of dressing gowns, all dated within the relevant period.
Overview of online shop sales from 09/10/2015 to 14/05/2016. It shows the total number of sales for the relevant period (52 dressing gowns sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some dressing gowns ordered online.

Shirts

Photographs of shirts for men showing the sign .
Advertisings in magazines dated 2011, 2013, 2014 and 04/2016.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (8001 shirts sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of shirts, all dated within the relevant period.
Overview of online shop sales from 23/10/2014 to 20/07/2016. It shows the total number of sales for the relevant period (366 shirts sold during the relevant period).

Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some shirts ordered online.

Trousers

Photographs of trousers for men showing the sign .
Advertisings in magazines dated 2010, 2012, 2013/2014.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (875 trousers sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of trousers, all dated within the relevant period.

Jackets

Photographs of jackets for men showing the sign .
Advertisings in magazines dated 2011, 2012, 2013.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (854 jackets sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of jackets, all dated within the relevant period.
Overview of online shop sales from 01/11/2015 to 13/04/2016. It shows the total number of sales for the relevant period (28 jackets sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some jackets ordered online.

Ties

Photographs of goods showing the sign .
Advertisings in magazines dated 2011, 2014, 01/2016, March/April/May 2016.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (1063 ties sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of ties, all dated within the relevant period.
Overview of online shop sales from 19/12/2013 to 20/07/2016. It shows the total number of sales for the relevant period (162 ties sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some ties ordered online.

Headgear

Photographs of caps for men showing the sign .
Advertisings in magazines dated 2014 and 02/2016 showing berets.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers (580 articles sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of hats, all dated within the relevant period.
Overview of online shop sales from 20/12/2014 to 28/12/2015. It shows the total number of sales for the relevant period (75 units sold).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some berets ordered online.

Waistcoats

Photographs of goods showing the sign .
Advertisings in magazines dated 2011, 2012.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers (213 waistcoats sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of waistcoats, all dated within the relevant period.
Overview of online shop sales from 25/10/2014 to 05/07/2016. It shows the total number of sales for the relevant period (173 waistcoats sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some waistcoats ordered online.

Square pockets

Photographs of goods showing the sign .
Advertisings in magazines dated 2011, 2013, March and April 2016.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (1145 square pockets sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of square pockets, all dated within the relevant period.
Overview of online shop sales from 25/10/2014 to 18/07/2016. It shows the total number of sales for the relevant period (172 square pockets sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some square pockets ordered online.

Scarfs

Photographs of scarfs for men showing the sign .
Advertisings in a magazine dated 20th September (the year is not mentioned).
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers (137 scarfs sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of scarfs, all dated within the relevant period.
Overview of online shop sales from 13/02/2015 to 08/04/2016. It shows the total number of sales for the relevant period (18 scarfs sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some scarfs ordered online.

Bow ties

Photographs of goods showing the sign .

Advertisings in magazines dated 2010/2011 and 2015.
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures are significant (1098 bow ties sold during the relevant period).
Examples of store sales through product history and sales documents concerning some specific models of bow ties, all dated within the relevant period.
Overview of online shop sales from 24/11/2014 to 19/07/2016. It shows the total number of sales for the relevant period (157 bow ties sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning some bow ties ordered online.

Footwear

Photographs of shoes for men showing the sign .
Advertisings in magazines dated 2010 and 2011.
Supplier’s invoice dated within the relevant period and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. 77 pairs of shoes were sold during the relevant period.
Examples of store sales through product history and sales documents concerning some specific models of shoes for men, all dated within the relevant period.

Shaving products

Photographs of shaving sets, razors, shaving brushes showing the sign .

Advertisings in magazines dated 2015 for shaving sets (razor and shaving brush).
Extracts from German websites showing shaving sets, razors, shaving brushes and porcelain soap boxes offered for sale under the signs and .
Supplier’s invoices dated within the relevant period and addressed to the EUTM proprietor for shaving sets, razors, shaving brushes, porcelain soap boxes identified with the sign ‘HVE’
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures indicate that 82 shaving products were sold during the relevant period.
Examples of store sales through products history and sales documents concerning porcelain soap boxes, razors and shaving brushes, all dated within the relevant period.
Overview of online shop sales for which the range of dates indicated seems to be wrong (30/06/2016-22/06/2016) (after the relevant period). It shows the total number of sales for the relevant period (90 shaving products sold).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning porcelain soap boxes and shaving sets ordered online.

Perfumes

Photographs of perfumes for men showing the sign .
Extracts of German websites offering for sale perfumes bearing the above mentioned trade mark.

Supplier’s invoices dated 2008 (before the relevant period) and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. 92 perfumes were sold during the relevant period).
Examples of store sales through products history and sales documents concerning perfumes, all dated within the relevant period.

Sunglasses

Photographs of sunglasses bearing the sign .

One supplier’s invoice dated 2009 (before the relevant period) and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures show that 2 sunglasses were sold during the relevant period.
Products history and sales documents concerning these goods.

Jewellery

Photographs of rings, cufflinks, pendants bearing the sign .
Two supplier’s invoices dated 2015 and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures show that 72 jewellery products were sold during the relevant period.
Products history and sales documents concerning cufflinks, all dated within the relevant period.
Overview of online shop sales for which the range of dates indicated seems to be wrong (30/06/2016-22/06/2016) (after the relevant period). It shows the total number of sales for the relevant period (12 cufflinks sold during the relevant period).
Examples of online shop sales through orders confirmations, payment receipts and photographs concerning cufflinks ordered online during the relevant period.

Umbrellas

Photographs of umbrellas showing the sign .
One advertising, undated.
Two supplier’s invoices dated 2008 (before the relevant period) and addressed to the EUTM proprietor.
Overview of the total store sales from 01/03/2011 to 30/11/2015. The document provides orders, sales and stocks numbers. The sales figures show that 8 umbrellas were sold during the relevant period.
Examples of store sales through products history and sales documents concerning umbrellas, some dated within the relevant period.

In addition to the above mentioned evidence sorted by goods, the EUTM proprietor has also submitted the following evidence:

Glossary with translations into English of some German terms used in the evidence.
Licence agreement with ‘futura4retail’ dated 01/01/2007. According to the EUTM proprietor, the evidence of use concerning the store-sales originate from the merchandise management system of ‘futura4retail’ used by the proprietor to manage his stock since 2007.
Advertising campaigns showing clothing, headgear, footwear, all for men, cufflinks, shaving sets. According to the EUTM proprietor, they are dated within the relevant period.
Extracts from the EUTM proprietor’s website showing some goods offered for sale online: clothing and headgear for men, ties, cufflinks, shaving products, shirts, pocket squares, braces, bow ties, underpants, etc.
Photographs of stores in Hamburg, Berlin and Cologne.
Results of ‘Google’ search for ‘herr von eden hve’.
2 affidavits from fabric suppliers, dated 2016. They declare that they produce and provide the EUTM proprietor materials for outer clothing and hats and that these goods have been labelled with the figurative trade mark.
Affidavit dated 28/07/2016 from a clothing manufacturer. He declares that the goods provided have been labelled with the figurative trade markand that the EUTM proprietor also produces a wide range of goods in Classes 3, 9, 14, 18 and 25 and that these goods bear the above mentioned figurative mark.
3 affidavits respectively from the EUTM proprietor (Mr. Bent Angelo Jensen), from the Director of ‘Herr von Eden’ (Mr. Töbe) and from the Branch Manager of ‘Herr von Eden’ (Mr. Teetz), dated 2016. They declare the following: all the distributed products bear the ‘HvE’ logo (the products listed include many goods in Classes 3, 9, 14, 18 and 25), they are sold in the Hamburg, Berlin and Cologne stores and since 2011 the products are also sold online via the website www.herrvoneden.com.

Assessment of genuine use – factors

Genuine use of a trade mark cannot be proven 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 (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

It is relevant that genuine use implies real use of the mark on the market concerned for the purpose of identifying goods or services. Genuine use is therefore to be regarded as excluding minimal or insufficient use for the purpose of determining that a mark is being put to real, effective use on a given market.

The indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the EUTM proprietor’s trade mark for the relevant goods and services.

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

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the EUTM is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Extent of use and use in relation to the registered goods

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 assessment of genuine use 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. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39).

The use must be public, that is to say it must be external and apparent to actual or potential customers of the goods or services. Use in the private sphere or purely internal use within a company or a group of companies does not amount to genuine use (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 22; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37; 09/09/2015, T-584/14, ZARA, EU:T:2015:604, § 33).

Concerning use in relation to the registered goods, 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.

According to Article 51(2) EUTMR, where there are grounds for revocation for 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.

According to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(Applied by analogy with 14/07/2005, T-126/03, Aladin, EU:T:2005:288.)

In reply to the applicant’s arguments, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the EUTM proprietor has seriously tried to acquire a commercial position in the relevant market. This does not mean that the EUTM proprietor has to reveal the total volume of sales, turnover figures or market share. The methods and means of proving genuine use of a mark are unlimited and if marketing expenditure constitutes an indication of the extent of use, it is not a mandatory factor. The question whether use is sufficient to preserve or create market share for those goods or services depends on several factors and on a case-by-case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence that the proprietor is able to provide, are among the factors that may be taken into account A de minimis rule cannot be laid down (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 22, 25).

In the present case, in addition to the invoices originating from suppliers, the EUTM proprietor has also submitted store sales and online store sales figures extracted from its merchandise management system, together with concrete examples of sales to third parties, in relation to part of the goods.

Concerning the goods in Class 25, the contested EUTM is registered for clothing, footwear, headgear.

The evidence shows that sales in Germany for suits, shirts, trousers, ties, bow ties, square pockets, scarfs, cummerbunds, headgear (all for men) were made regularly over the relevant period and the amounts are significant. For footwear (for men), although the sales figures may not be overwhelmingly high (77 pairs of shoes sold between 01/03/2011 and 30/11/2015), genuine use does not require commercial success but only requires real exploitation on the market. Therefore, the Cancellation Division is of the opinion that, for these goods, token use can safely be excluded on the basis of the commercial volume of the sales for those goods, as reflected in the sales figures, together with the fact that these sales took place over several years during the relevant period.

The categories clothing, footwear, headgear are sufficiently broad for several subcategories to be identified within them.

Bearing in mind that use is demonstrated for different items which cover a broad spectrum of clothing (suits, shirts, trousers, ties, bow ties, square pockets, scarfs, cummerbunds), but all for men, the Cancellation Division finds that use for these goods, which fall under the broad category of clothing, constitutes use for the subcategory clothing for men. Likewise, use for caps, berets, hats and different kinds of shoes for men constitutes use for the subcategories headgear and footwear for men.

Therefore, the Cancellation Division considers that the extent of use was sufficiently proven for clothing, footwear and headgear; all for men in Class 25.

Concerning the goods in Class 3, the sales figures indicate that 92 perfumes for men were sold between 01/03/2011 and 30/11/2015. Since genuine use does not require commercial success but only requires real exploitation on the market, the Cancellation Division is of the opinion that, in view of the regularity and length of use, it is considered that the mark was used in a serious attempt to create and maintain an outlet for these goods.

The contested mark is registered for perfume and toilet water. Bearing in mind that use is shown for perfumes for men, the Cancellation Division considers that use is shown for the subcategory perfume and toilet water for men. It has to be noted that perfume and toilet water designate very similar products (a fragrant liquid used to impart a pleasant, made from essential oils extracted from flowers and spices; toilet water being a dilute form of perfume), therefore, use for perfumes extends to toilet water.

Regarding the remaining goods in Class 3, namely hair pomade, after shave, deodorants and soaps, the evidence submitted does not show that the mark was used in relation to these goods. Hair pomade, deodorants are not mentioned at all in the evidence. Furthermore, although shaving soaps and after shaves are offered on sale in the EUTM proprietor’s website, it seems that they bear another trade mark (‘Mühle’). In addition, there are no clear sales figures in relation to these goods and the examples of sales submitted by the proprietor only concern porcelain soap boxes, shaving brushes and razors which are not covered by the contested mark. Indeed, these goods do not fall within any of the categories of goods for which the mark is registered.

Regarding the goods in Class 9, the evidence submitted only concerns sunglasses. The sales figures are very low (2 units). Taking into account the nature of the goods concerned and the mass market for these goods, these modest quantities can be considered to demonstrate only sporadic sales and are therefore clearly insufficient to prove genuine use. The same can be said for umbrellas in Class 18 in relation to which 8 units only demonstrate sporadic use.

Therefore, for sunglasses in Class 9 and umbrellas in Class 18, the total amount of transactions over the relevant period seems to be so token as to suggest that, in the absence of supporting documents or convincing explanations to demonstrate otherwise, the use by the proprietor cannot be held to be warranted, in the economic sector concerned and taking into account the nature of the goods concerned, for the purpose of maintaining or creating market shares for the goods protected by the EUTM (30/04/2008, T-131/06, Sonia Rykiel, EU:T:2008:135, § 60).

For the remaining goods in classes 9 and 18, the evidence does not show any use since these goods are not mentioned at all.

Finally, for the goods in Class 14, the sales figures show that 72 items of jewellery were sold between 01/03/2011 and 30/11/2015. Although these figures may not be overwhelmingly high, it is considered that the mark was used in a serious attempt to create and maintain an outlet for the goods. The examples of sales submitted by the proprietor only concern cufflinks which belong to the broad categories of jewellery and goods in precious metals or coated therewith, not included in other classes. These categories are sufficiently broad for several subcategories to be identified within them. However, since the examples of sales only concern cufflinks and not several products which may be considered to form a broad spectrum within any possible sub-category, the Cancellation Division considers that the extent of use was sufficiently proven only for cufflinks in Class 14.

For the remaining goods in class 14, the evidence does not show any use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145; and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

In light of the foregoing, the analysis of the remaining factors for proof of use will continue only in relation to the goods for which the Cancellation Division has concluded that use of the trade mark took place to a sufficient extent, namely:

Class 3: Perfume and toilet water for men.

Class 14: Cufflinks.

Class 25: Clothing, footwear, headgear; all for men.

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, namely from 17/11/2010 to 16/11/2015 inclusive.

Even though some documents are undated or dated after the relevant period, the vast majority of the documents (advertisings, invoices, sales figures) are dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 15(1) EUTMR and Article 51(1)(a) EUTMR).

Following the Court judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816, § 44, Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether or not an EUTM has been put to ‘genuine use’ in the Union.

In territorial terms, and in view of the unitary character of the EUTM, the appropriate approach is that not of political boundaries but of market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

As the Court indicated in the judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816, it is impossible to determine, a priori, and in the abstract, the territorial scope that should be chosen in order to determine whether the use of the mark is genuine or not. A de Minimis rule cannot be laid down (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 (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 58).

The evidence shows that the place of use is Germany which is a very densely populated country within the European Union. This can be inferred from the language of the documents, from the advertisings published in German magazines and from the sales figures originating from shops located in Germany (Berlin, Hamburg, Cologne).

Consequently, the evidence submitted suffices to establish genuine use in Germany and also in the European Union.

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 goods are clearly identified and offered on the market under the EUTM, as can be inferred from the photographs of the products, labels and advertisings. Furthermore, the documents submitted prove that the products sold by the EUTM proprietor bear the contested sign, usually on a sewn-in label in relation to clothing for example. Therefore, the contested EUTM was clearly used as a trade mark.

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, for the goods concerned, namely perfume and toilet water for men in Class 3, cufflinks in Class 14 and clothing, footwear, headgear; all for men in Class 25, the evidence submitted shows use of the sign as registered.

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, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors in relation to some of the contested goods, namely:

Class 3: Perfume and toilet water for men.

Class 14: Cufflinks.

Class 25: Clothing, footwear, headgear; all for men.

There are sufficient indications concerning the place, time, extent and nature of use to deem the use of the mark proven for these goods.

Regarding the remaining goods, the evidence submitted does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for those goods.

The Cancellation Division does not judge the commercial success of a business; however, it cannot make its assessment based on assumptions. The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

It follows from the above that the EUTM proprietor has failed to prove genuine use for the remaining goods.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods, for which it must, therefore, be revoked:

Class 3: Hair pomade; perfume and toilet water (except those for men); aftershave, deodorants, soaps.

Class 25: Clothing, footwear, headgear (except those for men).

The EUTM proprietor has proven genuine use for the remaining contested goods, namely: perfume and toilet water for men in Class 3; cufflinks in Class 14 and clothing, footwear, headgear; all for men in Class 25; 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 17/11/2015. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown sufficient legal interest to justify it.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Jessica LEWIS

Frédérique SULPICE

Catherine MEDINA

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.

HvE | Decision 0012092

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