KISSBANK | Decision 0013799
Date Published: Sep 25, 2017
CANCELLATION No 13799 C (REVOCATION)
KissKissBankBank & Co, 34 rue de Paradis, 75010 Paris, France (applicant), represented by B Cube, 37-39 rue Boissière, 75116 Paris, France (professional representative)
a g a i n s t
KissBank Limited, Suite 21, 3 Ludgate Square, London EC4M 7AS, United Kingdom (EUTM proprietor), represented by Beck Greener, Fulwood House 12 Fulwood Place, London WC1V 6HR, United Kingdom (professional representative).
On 12/07/2017, 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 9 850 355 are revoked in their entirety as from 22/09/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
REASONS
The applicant filed a request for revocation of European Union trade mark No 9 850 355 ‘KISSBANK’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:
Class 35: Advertising; business management; business administration; office functions; electronic data storage; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; advertising and information distribution services, namely, providing classified advertising space via the global computer network; promoting the goods and services of others over the Internet; compilation and management of on-line computer databases and on-line searchable databases; publication of advertising texts and dissemination of advertisements; rental of advertising space, sales promotion (for others), arranging newspaper subscriptions (for others), marketing studies; statistical information; providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks; administration of a gift card program for enabling participants to obtain goods and services through use of a card; providing an online directory information service featuring information regarding, and in the nature of classifieds.
Class 36: Insurance; financial services; real estate agency services; building society services; banking; stockbroking; financial services provided via the Internet; issuing of tokens of value in relation to bonus and loyalty schemes; provision of financial information; financial transaction processing services, namely clearing and reconciling financial transactions via computer and communication networks; electronic processing of bill payment data for users of computer and communication networks; electronic funds transfer services; bill payment services; financial exchange services, namely, providing a virtual currency for use by members of an online community via computer and communication networks; pre-paid gift card services, namely issuing gift card certificates that may be redeemed for goods or services; prepaid card, gift card, and stored value card services.
Class 38: Telecommunications services; chat room services; portal services; e-mail services; providing user access to the Internet; radio and television broadcasting; telecommunications via Internet networks, communications by computer terminals; providing online chat rooms for registered users for transmission of messages concerning classifieds, virtual community and social networking; providing an online directory information service featuring information regarding, and in the nature of, transmission of photographic images and information; data transmission and instant messaging services.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing an online directory information service featuring information regarding, and in the nature of, popular culture, photo sharing; online social club services; publishing services; online publishing; publication of books, magazines and texts, organisation of competitions and cultural events or entertainment, cultural information and information relating to entertainment.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design, drawing and commissioned writing for the compilation of web sites; creating, maintaining and hosting the web sites of others; design services; computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; and computer services in the nature of customized web pages featuring user-defined information, personal profiles and information; providing use of software applications through a website.
Class 45: Legal services; conveyancing services; security services for the protection of property and individuals; social work services; consultancy services relating to health and safety; consultancy services relating to personal appearance; provision of personal tarot readings; dating services; funeral services and undertaking services; fire-fighting services; detective agency services; personal and social services rendered by others to meet the needs of individuals; introduction and social networking services; social introduction, networking and dating services; providing social work services and information of a social nature in the field of personal development, including self-improvement, self-fulfilment, charitable, philanthropic, volunteer, public and community services, and humanitarian activities; providing information regarding social and political matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks; providing an online directory information service featuring information regarding, and in the nature of virtual community and social networking.
The applicant invoked Article 51(1)(a) EUTMR.
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.
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 16/09/2011. The revocation request was filed on 22/09/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 28/09/2016, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months, until 03/01/2017, to submit evidence of use of the EUTM for all the services for which it is registered. Upon request of the EUTM proprietor, this time limit was extended until 03/03/2017.
The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.
According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.
In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the services for which it is registered nor any indications of proper reasons for non-use.
Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.
Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 22/09/2016.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
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 costs of representation, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Maria INFANTE SECO DE HERRERA | Astrid POHLMEIER | Carmen SÁNCHEZ PALOMARES |
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 of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Annex 1 A(33) EUTMR).