PROTO+ | Decision 0013513
Date Published: Sep 28, 2017
CANCELLATION No 13513 C (REVOCATION)
Trademarkers Merkenbureau C.V. , Rijksweg Noord 72, 6071 KX Swalmen, The Netherlands (the applicant),
a g a i n s t
Industrial Maintenance Products Limited, New Britannia Works, Hulme Road, Radcliffe Manchester M26 1EY, United Kingdom (the EUTM proprietor), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative).
On 08/03/2017, 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 5 394 201 are revoked in their entirety as from 22/08/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 630.
REASONS
The applicant filed a request for revocation of European Union trade mark No 5 394 201 “PROTO+” (word mark). The request is directed against all the goods covered by the EUTM, namely:
Class 1: Chemicals used in industry; chemicals for automotive use; oil additives; petrol additives; diesel additives; octane booster; cetane booster; antifreeze; anti seize; anti seize agents; diesel antifreeze; chemical fluids for use as leak detectors; air conditioning leak detector; sealant preparations for motor vehicle radiators; radiator stop leak; sealant preparations for air conditioning; air conditioning leak sealer; leather-renovating chemicals; leather treatment; leather protector; upholstery protector; degreasers for use in manufacturing processes; chemical additives for oil; chemical additives to motor fuel; detergent additives to petrol; detergent additives to diesel; fuel saving preparations.
Class 3: Cleaning, polishing, scouring and abrasive preparations; cleaning, polishing, scouring and abrasive preparations for automotive use; diesel injector cleaner; petrol injector cleaner; common rail diesel injector cleaner; transmission treatment; eco oil system cleaner, carburettor cleaner; brake cleaner; throttle body cleaner; engine degreaser; upholstery cleaner; leather cleaner; air intake cleaner; polishes; car polish; leather preservatives [polishes]; glass cleaner; rubbing compounds; cooling system cleaners; nano technology surface treatments; gun cleaner; radiator flushes; lubricating system cleaner; air conditioning treatment; air conditioning sanitiser; radiator treatment; degreasers; detergents; oils for cleaning purposes; car shampoos; car polishing wax.
Class 4: Industrial oils and greases; lubricants; fuels; oils and greases for automotive use; lubricants for automotive use; fuels for automotive use; grease; gearbox improver; white grease; synthetic lubricant; diesel oil; fuel oil; motor oil; lubricating oil; engine oil; gearbox oil; chain lubricants, gun oils; marine lubricants; marine oils; industrial lubricants and oils; leather protector; preservatives for leather; oils and greases for preserving leather; non-chemical additives for oils, greases and lubricants; non-chemical additives to motor fuel; non-chemical anti-freezing additives for fuels..
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 04/10/2007. The revocation request was filed on 22/08/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 01/09/2016, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the goods for which it is registered.
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 goods 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 22/08/2016.
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. In the present case the applicant did not appoint a representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.
The Cancellation Division
José Antonio GARRIDO OTAOLA | Manuela Gabriele Ulrike MIEHLE | Agueda MAS PASTOR |
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.