CANCELLATION No 13 514 C (REVOCATION)

Trademarkers Merkenbureau C.V., Amersfoortsestraatweg 33 B, 1401 Bussum, The Netherlands (applicant)

a g a i n s t

Olivier Chen, 17, allée de la noiseraie, 93160 Noisy le Grand, France, (EUTM proprietor), represented by CMS Debacker, Chaussée de La Hulpe 178 Terhulpsesteenweg, 1170 Bruxelles, Belgium (professional representative).

On 05/02/2018, 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 9 340 101 are revoked as from 22/08/2016 for some of the contested goods, namely:

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

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

Class 14: Horological instruments.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 9 340 101 (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely

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.

The applicant invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested trade mark No 9 340 101 has not been put into genuine use.

The EUTM proprietor files evidence of use and argues that the contested mark has been continuously and genuinely used since its registration to designate jewellery and watches for men, women and children distributed by the French company CMC Diffusion SAS as a wholesaler to numerous retailers since 01/01/2006.

The applicant answers that it does not agree that there is evidence that trade mark has been put into genuine use. Goods such as bags, displays and business cards are not covered by the mark. Sometimes, the mark shown is ERNEST and not the figurative mark. There is no conclusive evidence that the goods were sold to end consumers. The information contained in Wikipedia lacks certainty. In the absence of evidence showing actual orders made, the evidence in itself merely shows that the goods bearing the subject mark “could be” delivered to customers in the EU but that they “were” actually delivered to end consumers in the EU. The evidence is inconclusive to show that there was sufficient extent of use of the subject mark during the relevant period. Gleaning from the evidence as a whole, it is apparent that the Owner offers watches, but the Owner has not given conclusive evidence pertaining to the technical specifications and the composition of the materials that those watches are made of. The sales figures provided are inconclusive to indicate that they are connected to goods which conform to Class 14 as specified.

The EUTM proprietor filed new evidence and argues that he has brought evidence that the mark is used for watches in France, Belgium and the Netherlands during the relevant period and even since 01/01/2006. The watches bearing the contested trade mark have been distributed via CMC Diffusion SAS (authorised use) to numerous customers throughout the European Union. Watches belong to the general category ‘horological and chronometrical instruments’ for which the mark is registered.

GROUNDS FOR THE DECISION

According to Article 58(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).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or 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 11/01/2011. 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. 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 22/08/2011 to 21/08/2016 inclusive, for the following contested goods:

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.

On 09/12/2016 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

1. Examples of products bearing the contested trade mark:

1. Examples of watches bearing the contested trade mark

2. Examples of packaging of watches bearing the contested trade mark

3. Examples of displays bearing the contested trade mark

4. Business cards bearing the contested trade mark

1. Article published on the website www.dlg-fashion.com on 18 March 2013 regarding the watches bearing the contested trade mark

2. Kbis extract of the company CMC Diffusion SAS

3. Extracts of the website www.priceminister.com

   1. Presentation of’ priceminister.com on Wikipedia

   2. Destination countries of deliveries for purchases made on the website www.priceminister.com

4.3 Official report from the bailiff establishing the website www.priceministrer.com on 9 August 2012, 16 October 2012, 21 January 2013, 26 June 2014 and 27 July 2014

4.4 Documents regarding the company Ferreira SARL selling watches bearing the contested trade mark on the website www.priceminister.com

5. Extracts of the websites www.ernest-horloge.nl and www.doorzo.nl

   1. Calendar showing print screens of the website

www.ernest-horloge.nl

2. Extracts of the website www.ernest-horloge.nl from 7 January 2014, 17 May 2014, 17 December 2014, 19 April 2015 and 21 May 201

3. Extract of the website www.ernest-horloge.nI re. client service for destination countries deliveries

4. Extracts of the website www.doorzo.nl from 26 February 2014 and 19 December 2014

5. Extracts of the website www.doorzo.nl re. client service for destination countries of deliveries

1. Orders from and invoices to customers of CMC Diffusion SAS for watches bearing the contested trade mark

6.1 Order from and invoices to ALPHA COUPE SARL dated December 2013/January 2014

6.2 Orders from and invoices to MATIVAL SARL between 2013 and 2015
6.3 Orders from and invoices MELI MELO FASHION SRL in 2014 and 2015
6.4 Order from and listing, stickers and invoice to SHOWROOMPRIVE.COM in May 2015

6.5 Order from and invoice to SODB SARL dated April 2015

6.6 Orders from TOPLOOK.COM SARL between 2011 and 2016

6.7 Orders and invoices to VERT ANIS DISTRIBUTION between 2013 and 2016

6.8 Order by email from SOLAR dated November 2012 for an amount of 2850 EUR.

6.9 Order from GROUP LC dated February 2011

6.10 Bailiffs report containing orders and stating the correspondences between e-mails and attachments

7. Bailiff’s report stating the correspondences between reference numbers and the watches bearing the contested trade mark
8. Affidavits from several customers of CMC Diffusion SAS selling watches bearing the contested trade mark, one of them mentioning it has purchased 457 079 EUR of ERNEST watches between 13/09/2011 and 17/08/2016 (SOLAR from the Netherlands).

9. Itunes application “ERNEST WATCH” updated 19/05/2016

10. Advertising material representing watches bearing the contested trade mark
10.1 Advertising for “LE CAM” magazine published in 2012
10.2 Posters representing watches bearing the contested trade mark published in 2012
10.3 Invoices related to the posters referred to under item 8.2
11. Documents related to seizure for counterfeiting referring to the watches bearing the contested trade mark

11.1 Expert’s report dated June 2010

11.2 Bailiff’s report dated 9 July 2010

11.3 Bailiffs notification of photographs dated 13 July 2010

12. Photographs of the point of sale of CMC Diffusion SAS

13. Turn-over generated by the company CMC Diffusion

Preliminary remarks

Following the applicant’s observations, the EUTM proprietor filed further evidence on 26/04/2017.

In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 26/04/2017 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the contested trade mark. A close examination of the additional evidence shows that it does not show genuine use of the mark for more goods that the evidence submitted with the time limit. Therefore, the Cancellation Division will not list it in the decision.

There is no limit on the methods and means of proving genuine use of a mark (15/09/2011, T‑427/09, Centrotherm, EU:T:2011:480, § 46).

As far as the affidavits are concerned, Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(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. As far as the probative value of this kind of evidence is concerned, 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.

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.

The applicant contests the evidence of use filed by the EUTM proprietor on the grounds that it does not originate from the EUTM proprietor itself but from another company.

According to Article 18(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).

Consequently, since it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 18(2) EUTMR, the Cancellation Division considers that the use 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

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, namely from 22/08/2011 to 21/08/2016 inclusive.

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.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).

The invoices for watches (item 6) display the contested figurative sign on the header. Other invoices mention the word mark ERNEST. The mark is affixed to watches sold on different websites, in particular in France, Belgium and the Netherlands (item 1, 2, 5). This can be inferred from the language of the documents (French, Dutch), the currency mentioned (Euro) and the addresses in France, Belgium and the Netherlands. Therefore, the evidence relates to the relevant territory.

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 view of the number of marks registered and potential conflicts between them, it is essential that the rights conferred by a mark for a given class of goods or services are maintained only where that mark has been used on the market for goods or services belonging to that class (15/01/2009, C‑495/07, Wellness, EU:C:2009:10, § 19).

In the present case, the mark is affixed to the goods and as such is used as a trade mark. Therefore there is trade mark use.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The evidence shows that the mark has been used as registered, namely . Although this is disputed by the applicant, it is not necessary that all the evidence displays the mark as registered as it is generally admitted that in some documents, a verbal reference to the mark is used (such as in item 2) as long as there is other type of evidence showing the mark is used as registered on the goods which is the case in items 5, 9 or 10. In item 9 for example, use of the contested mark as registered on the iTunes application is shown.

Extent of use

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 ‘[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 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.

As to the affidavits mentioning in particular the extent of use, they must be supported by additional evidence. One of the affidavit for example (in item 8) signed by Solar, a Dutch company, mentions the company has purchased 457 079 EUR of ERNEST watches between 13/09/2011 and 17/08/2016 which can be partially supported by the mail order in item 6.8 issued by the same company for an amount of 2 850 EUR.

The applicant considers that there is no evidence that the goods were sold to consumers, as part of the evidence for example is composed of sales to retailers (see item 4, 5 and numerous invoices in item 6). The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (judgments of 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 38). Outward use does not necessarily imply use aimed at end consumers. For instance, the relevant evidence can validly stem from an intermediary, whose activity consists of identifying professional purchasers, such as distribution companies, to whom the intermediary sells products it has had manufactured by original producers (judgment of 21/11/2013, T-524/12, RECARO, EU:T:2013:604, § 25-26). The sales to the retailers are therfore amounting to genuine use by the EUTM proprietor.

In addition, the applicant considers that the evidence in item 4.3 and 5.4 mosly refer to advertisement of the goods on a website but do not indicate whether in fact the goods were sold during the relevant period. In fact, this make it apparent that the EUTM proprietor has taken sufficient ‘active steps’, during the relevant period, to offer or advertise the goods bearing the subject mark. Advertisements together with invoices to retailers makes it credible that the goods advertised under the earlier mark were sold within the relevant territory.

The applicant also considers that it is not clear whether the sales figures provided are related to the goods marked with the contested mark. In some invoices to the retailers for example (item 6), Ernest is indicated on the top of each invoices as . This is regarded as an indication that the invoices refer to the trade mark but must be combined with the rest of the evidence that show that the figurative mark is used as registered.

In other type of evidence in item 6 for example, there are numerical references instead of an indication of the trade mark. The baiiliff’s report in item 7, even if dated after the relevant period, establishes the correspondances between the reference numbers indicated on the invoices issued during the relevant period. This allows to conclude that there is sufficient indications as to the extent of use even if not all the documents allow individually to connect directly the amounts of sales to the trade mark.

The evidence in addition shows use of the EUTM in several Member States, namely, France, Belgium and the Netherlands and regularly over the whole period.

Therefore, taken into account all the circumstances, the Cancellation Division considers that the evidence is sufficient to show extent of use.

Use in relation to the registered goods and services

Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered. The mark is used for watches who belong to the general category

The trade mark is used for watches, which belong to the general categories horological and chronometric instruments. The Cancellation Division finds that the use for watches is enough to consider that there is use for the category horological instrument since watches are the horological instruments by excellence and use for watches is use for the whole category.

As the GC stated in the ‘Aladin’ case: [The provisions of Article 43 of Regulation No 40/94 [now Article 47 EUTMR]] 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 of the mark has been established (i) are a limitation on the rights which the proprietor of the earlier trade mark gains from his registration …, and (ii) 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. That is particularly so when, as here, the goods and services for which the trade mark has been registered form a sufficiently narrowly-defined category. (Judgment of 14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 51, emphasis added.)

On the opposite, the watches displaying the contested trade mark do not seem to have chronometric functions as they appear to be rather standard watches. Consequently, the evidence shows use for horological instruments and not for chronometric instruments. There is no evidence as regards the remaining contested goods.

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 part of the goods and for the relevant factors: time, place, extent or nature of use of the mark as registered.

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

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

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 22/08/2016.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(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

Pierluigi M. VILLANI

Jessica LEWIS

Carmen SÁNCHEZ PALOMARES

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.