RBS | Decision 0011548

Date Published: Sep 25, 2017

CANCELLATION No 11 548 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

The Royal Bank of Scotland Group plc, 36 St Andrew Square, Edinburgh EH2 2YB, 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 partially upheld.

2.        The EUTM proprietor’s rights in respect of European Union trade mark No 97 469 are revoked as from 18/08/2015 for part of 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.

Class 16:        Paper, paper articles and advertising materials; printed matter (except for periodicals), stationery, newspapers and cheque books.

Class 35:        Accounting services; book-keeping; company registration services; payroll preparations; business appraisals, enquiries, investigations, research and business management advice.

Class 42:        Legal services.

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

Class 16:        Periodicals.

Class 35:        Share registration services.

Class 36:        Banking, financial and insurance services.

4.        Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 97 469 ‘RBS’ (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, 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.

Class 16:        Paper, paper articles and advertising materials; printed matter, stationery, newspapers, periodicals and cheque books.

Class 35:        Accounting services; book-keeping; company registration services; payroll preparations; business appraisals, enquiries, investigations, research and business management advice.

Class 42:        Legal services.

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).

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 23/03/1998. 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 following contested goods and services:

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.

Class 16:        Paper, paper articles and advertising materials; printed matter, stationery, newspapers, periodicals and cheque books.

Class 35:        Accounting services; book-keeping; company registration services; payroll preparations; business appraisals, enquiries, investigations, research and business management advice.

Class 42:        Legal services.

On 29/01/2016, 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 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 Royal Bank of Scotland was formed in 1727 and today the Group is one of the world’s leading financial institutions. It is claimed that the ‘RBS’ mark has been in use as early as the late nineteenth century and from 2002 it has been used extensively as the main brand. The Statutory Declaration contains information on the number of customers (tens of millions of customers worldwide) and employees of The Royal Bank of Scotland Group, listings, branches throughout the world and in Europe, investments in advertising campaigns, the range of bank cards issued by the EUTM proprietor. Mr Curtin gives data on the number of RBS branded ATM machines in the UK (approximately 4,500 machines in the period January 2013 – January 2015), the total number of RBS branded, LINK ATM compatible cash, debit and bank cards in circulation in the UK (more than 3,9 million cards in the period January 2013 – January 2015), the number of transactions made at RBS or NATWEST branded ATM machines and with RBS or NATWEST branded cards (it is indicated that this data is provided by LINK – the UK cash machine network and is to demonstrate the time and extent of use of the EUTM on bank cards and ATM machines). According to Mr Curtin the EUTM is extensively used on cheque books (the total annual volume of cheque books for 2013 exceeding 1,7 million). The Statutory Declaration further provides information on the exhibits thereto (Exhibit RC1 – Exhibit RC21).

• Exhibit RC1: Wikipedia extracts (dated 21/12/2015) about The Royal Bank of Scotland Group and about The Royal Bank of Scotland, including in relation to the history, restructuring, group structure, branding, etc.

• Exhibit RC2: Printouts of Fortune Magazine’s Global 500 Listing of the world’s largest corporations showing that The Royal Bank of Scotland was ranked 55th in 2010 and 303rd in 2015.

• Exhibit RC3: Blank letterheads and a statement of account template (in Greek and English) used, according to the EUTM proprietor, in Greece. The EUTM proprietor claims that this shows the place and nature of use of the RBS mark on stationery.

• Exhibit RC4: Excerpts from the website www.rbs.com dated in November 2010 with information on the history of the EUTM proprietor and key facts and figures.

• Exhibit RC5: Covers of product brochures from 2006/2007 in Swedish, German and English with the sign depicted on each page. According to the EUTM proprietor, this demonstrates the place, nature and time of use of the EUTM on printed matter and publications.

• Exhibit RC6: Copies of advertisement templates, designated as RBOS 2010 – 2015, M&CSAATCHI, for press and outdoor ad campaigns, held, according to the EUTM proprietor, in the UK between 2010 and 2015 promoting different banking services and financial products such as mortgages, emergency cash from the EUTM proprietor’s ATMs, current accounts, mobile banking services through mobile applications (including Apple Pay at RBS), etc., all bearing the sign . The Statutory Declaration provides information on the EUTM proprietor’s investment in the advertising campaigns (the lowest amount per campaign exceeding GBP 500,000) and on the time, place and media of the campaigns, however, the evidence bears no indications as to distribution period, quantity, frequency or territory.

• Exhibit RC7: Further examples of UK adverts dated between 2011 and 2014.

• Exhibit RC8 – RC9: Copies of two adverts (one in Spanish and one in Italian), not dated, disseminated, according to the EUTM proprietor, in Spain and Italy in 2011.

• Exhibit RC10: Copies of RBS advertisements (some of them bearing dates within the relevant period) in English and Spanish, run, according to the EUTM proprietor, in printed publications in France (for example, in Les Echos and La Figaro Economic), in Germany (for example, in Handelsblatt) and the Netherlands, however, the evidence bears no clear indications as to the publication and circulation numbers of the advertisements. According to the EUTM proprietor, the evidence in Exhibits RC6 – RC10 shows the time, place, nature and extent of use of the EUTM on printed matter and advertising materials.

• Exhibit RC11: Copies of the Summer 2011, Winter 2011 and Winter 2012 issues of a magazine entitled ‘Business Agenda Offshore’, the magazine for corporate customers of RBS International aiming at engaging the customers on issues pertinent to their organisation and provide opinion from the wider business community and the RBS International team (in the Statutory Declaration it is explained that these are e-bulletins were sent to corporate clients in 2011 and 2012, although in the magazine itself it is written that it is printed on paper produced from sustainable managed forests). On the cover of each edition the sign can be seen. In the magazine it is indicated that it is published on behalf of RBS International and also a contact phone for advertising sales is mentioned. According to the EUTM proprietor, the evidence shows the time, place, nature and extent of use of the EUTM on printed matter and advertising materials.

• Exhibit RC12: The front cover of the EUTM proprietor’s customer magazine ‘SENSE’ (August 2009 and New Year 2010 and Spring 2011 issues) and a printout of an article dated 31/03/2009 from MediaWeek wherein it is mentioned that the magazine has a circulation of 1.5 million, that the increase of circulation was financed by RBS by shifting its budget from traditional direct-mail activity and that the move to up the circulation was made in an attempt to reach out to the RBS and NatWest customers seeking financial assistance and tips on money management. On the cover of each edition the sign  can be seen.

• Exhibit RC13: A power point presentation dated 18/01/2016 and entitled ‘Card to stay the same’ on The Royal Bank of Scotland existing cards (with card images and card descriptions, such as RBS Business One Premium, RBS One Card Gold) and 2015 forecasts in the range between 70 and 62,536. According to the Statutory Declaration, these designs were approved and the cards issued to customers in 2015. On almost all cards the sign can be seen, however, from the evidence no conclusions can be drawn as to whether, when and how this presentation was used.

• Exhibit RC14: Authorisation to manufacture proof (dated 28/08/2013, 13/07/2012, 01/06/2012 and 01/02/2012; not signed) to produce RBS MasterCard and Visa credit 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.

• Exhibit RC15: A document entitled ‘Visa Debit Card Designs’. The document is not signed and it is not clear whether, when and how it was used. According to the EUTM proprietor, the document shows the design of debit and credit cards issued during 2013, evidencing the nature of use of RBS on debit and credit cards.

• Exhibit RC16: A document entitled ‘Our new credit and debit card designs’ (dated July 2014). The document is not signed and it is not clear whether, when and how it was used. According to the EUTM proprietor, the document shows the design of debit and credit cards issued during 2014, evidencing the nature of use of RBS on debit and credit cards.

• Exhibit RC17: Printouts from various websites, magazine and customer forums (such as www.moneysavingexpert.com, www.money.co.uk, www.moneyexpert.com) with information and comments (dated within the relevant period) on RBS cards.

• Exhibit RC18: 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, around 65,500 cash machines in the UK connect to LINK 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); examples of ATM machines operated by the EUTM proprietor (branded with ); printouts of three articles (published on www.thisismoney.co.uk and Express, dated within the relevant period or undated), reporting on RBS cash machine restrictions or RBS customer issued with debit card with ‘Please’ as his name.

• Exhibit RC19: Printouts from the forum of www.moneysavingexpert.com, with comments (dated in 2015 and 2016) on the new designs of RBS cheque books and cards as well as printouts (dated in March 2013) from the websites www.edinburghparkinsons.org and tarradaleblog.eublogs.org reporting on RBS award or fund raising, in both printouts depictions of RBS cheques can be seen. According to the EUTM proprietor, the exhibit shows the nature, time and place of use of RBS on cheques and cheque books.

• Exhibit RC20: Printouts taken from the website www.alamy.com with images of RBS cheque book and cards (dated 11/02/2009).

• Exhibit RC21: The .pdf artwork used, according to the EUTM proprietor, in the print press for the current RBS corporate and personal cheque books.

Preliminary remarks

The applicant argues that the EUTM proprietor did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the EUTM proprietor is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR, applicable by analogy to cancellation proceedings). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely advertisements, and their self-explanatory character, the Cancellation Division considers that there is no need to request a translation.

As far as the Statutory Declaration is 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 generally 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 disputed between the parties and, furthermore, the whole body of evidence bears witness to the fact that the EUTM proprietor has a significant presence on the market for the non-contested services in Class 36 (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.

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.

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, it is clear from the evidence submitted that the company has an established presence in the European market and worldwide (see, for example, Exhibit RC2 - Printouts of Fortune Magazine’s Global 500 Listing of the world’s largest corporations). The information contained in Exhibit RC18 (in relation to LINK the UK’s cash machine network), the advertisements (in English, Swedish, Spanish), website printouts and press articles and blogs 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 the following goods in Classes 9 and 16:

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.

Class 16:        Paper, paper articles and advertising materials; printed matter, stationery, newspapers, periodicals and cheque books.

Use in relation to the goods in Class 9 and to cheque books in Class 16:

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. 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, 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’ (Exhibit RC14) as well as by the evidence submitted by the applicant (Exhibit O1 – Copy of the EUTM proprietor’s terms and conditions for Personal & Private Current Account, 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.

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 terms and conditions for Personal & Private Current Account, 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 the EUTM proprietor has failed to prove that the contested EUTM was genuinely used for cheque books in Class 16.

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

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 (such as Exhibits RC5 – RC12).

However, according to the evidence submitted, the EUTM proprietor never offered advertising materials and stationery to third parties with a view to establishing and maintaining a commercial outlet. The submitted letter templates 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. Using 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 neither claimed nor submitted any evidence or arguments for use of the EUTM in relation to paper, paper articles and newspapers.

On the other hand, the evidence demonstrates use of the signs  and for the magazines ‘Business Agenda Offshore’ and ‘Senses’ which fall under the category periodicals in the EUTM proprietor’s specification in Class 16. It appears from the evidence that the magazines are offered exclusively to the EUTM proprietor’s customers and that ‘Business Agenda Offshore’ focuses on finance and business topics while the covers of the magazine ‘Senses’ also indicate subjects such as interiors, money, health, cars, sport.

The Cancellation Division takes note of the applicant’s argument that the magazines are for the EUTM proprietor’s customers only and are not magazines that customers actively subscribe to or choose to obtain. According to the applicant (backed with reference to the Office’s Guidelines), the use of the EUTM on the proprietor’s magazine is mere use to promote the banking services and therefore cannot be considered sufficient evidence of use for goods as magazines, printed matter, etc.

Indeed, from the evidence submitted it seems that the magazines are sent for free to the EUTM proprietor’s customers (see Exhibit RC12 where it is indicated that the increase of circulation was financed by RBS). However, goods and services offered free of charge may constitute genuine use when they are offered commercially, that is, with the intention of creating or maintaining an outlet for those goods or services in the EU, as opposed to 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).

Furthermore, even if it cannot be ruled out that the ultimate goal of these magazines is to encourage the relevant public to purchase the EUTM proprietor’s financial and banking services in Class 36, they are none the less in competition with other similar goods on the market, in particular when they are supplied by undertakings competing with the EUTM proprietor on the relevant market, which may also provide those goods free of charge (09/09/2011, T-289/09, Omnicare Clinical Research, EU:T:2011:452, § 70). In this competition, the efforts of the EUTM proprietor issuing a magazine providing, along with financial information, health information, business-related advice, stories, clearly shows that the intention of the EUTM proprietor is to create and maintain an outlet for these magazines. This conclusion is corroborated by the fact that the EUTM proprietor has indicated a contact phone for advertising sales (see Exhibit RC11). It is therefore considered that the above periodicals, even if being offered free of charge, are nevertheless offered commercially and not for mere promotional purposes.

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 Court has held that „use 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 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.

In this respect, the Cancellation Division finds is useful to recall that the Court clarified that it is impossible to determine a priori, and in the abstract, what territorial scope 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, Onel / Omel, EU:C:2012:816, § 55).

In the present case, the evidence submitted by the EUTM proprietor in order to prove genuine use of the EUTM relates mainly to the UK. However, the evidence submitted indicates that use was not concentrated into a small geographical area considering the fact that the EUTM proprietor is established in the UK and ranked among the world’s largest corporations and the periodicals were distributed to the EUTM proprietor’s clients. Bearing this in mind, and taking into account the size and importance of the UK market within the European Union, it can be concluded that the territorial extent of use was sufficiently shown.

As for the quantitative extent and the frequency of use, it can be discerned that the magazines had several issues in the period 2009 – 2012. Moreover, according to the information in Exhibit RC12 (printout of an article dated 31/03/2009 from MediaWeek), the magazine ‘SENSE’ has a circulation of 1.5 million.

The Cancellation Division concurs with the applicant’s claim that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the said goods for which the EUTM is registered because, for example, the MediaWeek article is before the relevant period and no supporting evidence for circulation figures during the relevant period was provided.

The applicant’s argument is based, however, on an individual assessment of each item of evidence regarding all the relevant factors. 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.

Furthermore, the Court has found that, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, while not providing direct information on turnover, can also be sufficient for proving extent of use in an overall assessment (08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

It should furthermore be noted that as the Cancellation Division does not assess commercial success, even minimal use can be sufficient to be deemed “genuine”, as long as it is viewed as warranted in the economic sector concerned to maintain or acquire a share in the market.

In the present case, the Cancellation Division considers the evidence in its totality (namely the very high circulation number for the year just before the beginning of the relevant period, the several issues of the periodicals covering a substantial part of the relevant period, the regularity of the issues and, indeed, the fact that these are customer magazines of an undertaking with significant market presence in the market for services in Class 36, as evident from various pieces of evidence) as sufficient to establish genuine use of the EUTM in terms of extent for magazines falling in the category periodicals. The Cancellation Division finds that the category of periodicals concerned is not sufficiently broad for several subcategories to be identified within it. Consequently, the evidence shows use of the category of periodicals for which the mark was registered.

These goods fall within the category of printed matter. However, in the present case the EUTM proprietor did not show sufficient use of the EUTM for any other items within the above category which altogether could justify use for the whole category of printed matter.

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.

Therefore, the Cancellation Division does not accept the use of the contested EUTM for periodicals to justify use also for the broad category of printed matter as listed in the specification of the EUTM.

Use in relation to the services in Classes 35 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 35:        Accounting services; book-keeping; company registration services; payroll preparations; business appraisals, enquiries, investigations, research and business management advice.

Class 42:        Legal services.

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 evidence of use, and in particular the magazines and further materials in Exhibits RC11 and RC12, clearly show the use of the sign 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.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the form in which the contested trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the contested EUTM have the same distinctive character.

In the present case, while some of the evidence in relation to periodicals shows use of the trade mark as registered, in most of the documents in Exhibits RC11 and RC12 it appears with the addition of a figurative element, namely  and/or with the addition of the word ‘International’. The Cancellation Division considers that in this case the added element does not alter the distinctive character of the EUTM as registered given that the additional word element is non-distinctive and that the additional figurative element is rather decorative and plays only a secondary role in comparison to the word element.

Consequently, the evidence shows the use of the sign as registered within the meaning of Article 15 EUTMR.

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 taking into account the evidence in its entirety, although this evidence is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory. The contested sign was used as a trade mark for a part of the contested goods, namely for periodicals in Class 16.

However, there is not sufficient evidence of use of the EUTM within the relevant period for any of the other goods and services at issue.

Conclusion

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

Class 9:        Magnetically encoded cards for carrying data; multifunction cards for financial services; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards.

Class 16:        Paper, paper articles and advertising materials; printed matter (except for periodicals), stationery, newspapers and cheque books.

Class 35:        Accounting services; book-keeping; company registration services; payroll preparations; business appraisals, enquiries, investigations, research and business management advice.

Class 42:        Legal services.

The EUTM proprietor has proven genuine use for the remaining contested goods, namely periodicals in Class 16; therefore, the application is not successful in this respect.

The EUTM remains on the register also for all the uncontested services, namely for share registration services in Class 35 and for banking, financial and insurance services in Class 36.

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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

 

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.