SMS | Decision 0012341
Date Published: May 17, 2018
CANCELLATION No 12 341 C (REVOCATION)
Seekers Event GmbH, Reinholdweg 2b, 07743 Jena, Germany (applicant), represented by Gruendelpartner Rechtsanwälte Steuerberater Wirtschaftsprüfer Part. mbB, Leutragraben 2-4, 07743 Jena, Germany (professional representative)
a g a i n s t
Kompagniet af 1991 A/S, Elholm 8, 6400 Sønderborg, Denmark (EUTM proprietor), represented by Løje, Arnesen & Meedom Advokatpartnerselskab, Øster Allé 42, 6, 2100 København Ø, Denmark (professional representative).
On 20/01/2017, 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 3 945 334 are revoked in their entirety as from 08/01/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
REASONS
The applicant filed a request for revocation of European Union trade mark registration No 3 945 334 ‘SMS’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The case for the applicant
In response to the evidence submitted by the EUTM proprietor, the applicant argues as follows:
- The sign is used in the following form
, which constitutes an unacceptable variation of its registered form, since the element ‘SMS’ is unrecognisable and the sign used would be spelled ‘SM2’.
- The EUTM proprietor has not submitted any licence agreement between it and the retailers using the contested trade mark.
- The submitted internet printouts (Item 9) are dated 19/04/2016, that is, after the relevant period.
The case for the EUTM proprietor
The EUTM proprietor argues that the addition of the element ‘registered trademark’ does not alter the distinctive character of the contested sign, since it is a non-distinctive element. As regards the stylisation of the sign, the EUTM proprietor argues that the letters ‘SMS’ are clearly legible and that the second letter ‘S’ is merely a mirror image of the first letter ‘S’. Therefore, the stylisation of the second letter ‘S’ does not alter the distinctive character of the contested sign as registered. In support of its arguments, the EUTM proprietor refers to two decisions of the Boards of Appeal involving acceptable alterations to the marks actually used ( for ‘AMYCOR’ (Decision of the Second Board of Appeal, 25/05/2009, R 1344/2008-2) and
for ‘MILENARIO’ (Decision of the Fourth Board of Appeal, 18/09/2009, R 0289/2008-4). Regarding the applicant’s second argument, the EUTM proprietor argues that use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor and that it is not necessary to submit licence agreements. Finally, regarding the internet printouts, the EUTM proprietor argues that they do in fact demonstrate use within the relevant period and, in support of its arguments, it submitted supplementary printouts from the Internet Archive Wayback Machine.
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 07/11/2005. The revocation request was filed on 08/01/2016. 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 08/01/2011 to 07/01/2016 inclusive, for the following contested goods:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
On 19/04/2016, the EUTM proprietor submitted evidence as proof of use. The proprietor also submitted additional evidence on 05/09/2016, that is, after the time limit for submitting proof of use had expired. It should be noted that the additional evidence merely strengthens and clarifies the relevant evidence submitted within the time limit.
Even though, according to Rule 40(5) EUTMIR, the EUTM proprietor has to submit proof of use within a time limit set by the Cancellation Division, this cannot be interpreted as preventing additional evidence from being taken into account where new factors emerge (12/12/2007, T-86/05, Corpo livre, EU:T:2007:379, § 50). In the present case, the Cancellation Division considers, first, that the EUTM proprietor did submit relevant evidence within the time limit initially set by the Cancellation Division and, therefore, the evidence submitted afterwards can be considered to be additional, and, second, that the fact that the applicant disputed the initial evidence submitted by the EUTM proprietor justifies the submission of this additional evidence (29/09/2011, T-415/09, Fishbone, EU:T:2011:550, § 30-33). Therefore, the Office will also take into account the evidence submitted by the proprietor on 05/09/2016, as a result of an objective and reasonable exercise of the discretion conferred on it by Article 76(2) EUTMR (29/09/2011, T-415/09, Fishbone, EU:T:2011:550, § 31; confirmed by 18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28, 30). Although these documents are considered admissible and are taken into account by the Cancellation Division, they do not alter the conclusions made based on the assessment of the evidence submitted within the time limit; therefore, it was not necessary to specifically invite the applicant to submit its observations with regard to the second batch of documents.
Consequently, the evidence submitted consists of the following documents:
First batch of documents, submitted on 19/04/2016:
- A company envelope bearing, inter alia, the sign
- Technical drawings dated 16/03/2011 and 22/07/2015 showing the details of designs for
- Printed hang tag bearing the abovementioned figurative trade mark.
- Photographs of jeans bearing the abovementioned figurative trade mark on labels and hang tags.
- Invoices dated within the relevant period, issued by the EUTM proprietor and addressed to clients in Denmark, Estonia, Finland, Germany and the Netherlands. The sign
- Two pages dated 24/05/2011 and 27/07/2015 extracted from a catalogue entitled ‘Pre Summer 2012’. They show trousers with the trade mark
- Internet printouts from some retailers’ websites offering ‘SMS’ Brevor shorts for sale (www.vuuh.dk; www.denlillerunde.dk and www.zophie-oliver.dk).
Second batch of documents, submitted on 05/09/2016:
- Printouts from the Internet Archive Wayback Machine related to the internet printouts submitted on 19/04/2016 (www.vuuh.dk; www.denlillerunde.dk and www.zophie-oliver.dk).
Preliminary remark
Some of the evidence of use does not originate from the EUTM proprietor itself but from other companies (e.g. retailers); however, it should be noted that, according to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. The fact that the EUTM proprietor submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).
To this extent, and in accordance with Article 15(2) EUTMR, the Cancellation Division considers that the use made by those other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.
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.
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 mark as used contains differences from its registered form that would affect its distinctive character or whether, in spite of some differences, the mark as used and its registered form are essentially the same.
In the present case, the registered EUTM is the word mark ‘SMS’. The evidence demonstrates use of the following figurative mark: .
Word marks are considered to be used as registered regardless of their typeface, use of upper/lower case or colour. However, a very particular highly stylised depiction may lead to a different conclusion.
In the present case, the string of letters ‘SMS’ is not recognisable. Even if it is accepted that the second letter ‘S’ is a mirror image of the first letter ‘S’, as claimed by the EUTM proprietor, this letter will not be perceived as an ‘S’ but rather as a stylised ‘2’. Furthermore, the contested sign ‘SMS’ is a short sign composed of three letters, and therefore the differences from the registered form are particularly striking. Consequently, although the addition of the non-distinctive word element ‘registered trademark’ alone would not alter the distinctive character of the mark, the depiction of the element does alter the distinctive character of the mark. The differences between the sign as registered and as used are not negligible and the signs cannot be regarded as broadly equivalent, even though the mark is registered as a word mark.
For the sake of completeness, it is worth mentioning that, although the internet printouts from some retailers’ websites refer to ‘SMS’ Brevor shorts offered for sale, this does not change the outcome outlined above. It is rather common in commerce to include only the verbal element of the mark in the description of goods, as it is sometimes impossible to include all of the figurative elements. Furthermore, in the present case, the goods mentioned are ‘Brevor’ shorts and trousers, and it is clear from the remaining documents submitted (the technical drawings, the tag, and the photographs showing tags and labels) that these goods bear the figurative sign .
Therefore, the Cancellation Division considers that the alteration of the EUTM proprietor’s trade mark to the form in which it is currently used is not an acceptable alteration, since it contains differences from the registered form that affect its distinctive character.
Consequently, use of the registered mark in accordance with Article 15 EUTMR is not shown.
The EUTM proprietor refers to two previous decisions of the Board of Appeal to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The previous cases referred to by the EUTM proprietor are not relevant to the present proceedings, since the signs are not comparable. In the ‘MILENARIO’ and ‘AMYCOR’ cases (R 0289/2008-4 and R 1344/2008-2, respectively), it was considered that the stylisation of the signs did not substantially change the distinctive character of the marks as registered, since the letters were clearly recognisable despite the stylisation.
Overall assessment
It follows from the above that the EUTM proprietor has clearly failed to prove genuine use. The evidence of the nature of use is insufficient, since the sign has been used in a particular depiction that makes one of the three letters of which the sign consists unrecognisable as such, thus altering the distinctive character of the contested EUTM. Therefore, it is considered that the sign has not been used as registered.
Conclusion
It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.
According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 08/01/2016.
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 representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Jessica LEWIS | Frédérique SULPICE | José Antonio GARRIDO OTAOLA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.