CANCELLATION No 10 455 C (REVOCATION)
Verena Resch, Kastellfeldgasse 43/16, 8010 Graz, Austria (applicant), represented by Piaty Müller-Mezin Schoeller, Glacisstr. 27/II, 8010 Graz, Austria (professional representative)
a g a i n s t
Puig France, Societe par Actions Simplifiee, 65-67 Avenue des Champs Elysees, 75008 Paris, France (EUTM proprietor), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).
On 28/06/2017, the Cancellation Division takes the following
DECISION
- The proceedings regarding the present revocation action are hereby closed.
- The EUTM proprietor bears the costs, fixed at EUR 1 150.
REASONS
On 16/02/2015, the applicant filed a request for revocation of European Union trade mark registration No 5 682 141 ‘1 MILLION’ (word mark) (the EUTM). The request was initially directed against some of the goods covered by the EUTM, namely:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; essential oils, cosmetics, hair lotions; dentifrices.
The applicant invoked Article 51(1)(a) EUTMR.
The EUTM application covered initially the entire class heading of Class 3, namely:
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
The application for revocation targeted all the goods except for perfumery, i.e.:
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; essential oils, cosmetics, hair lotions; dentifrices.
On 01/10/2015, after analysing the evidence of use filed by the EUTM proprietor, the applicant declared the following:
“it is requested that the Cancellation Division declares the CTM to be revoked for the goods ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; essential oils, cosmetics, hair lotions; dentifrices’ so that the trade mark only remains effective for the goods ‘perfumery, aftershave lotion; aftershave balm; deodorant stick; deodorant spray; shower gel’.
Therefore, as correctly mentioned several times by the EUTM proprietor in its observations in the course of these proceedings, the applicant indeed limited the scope of its revocation request and expressly excluded from it, apart from perfumery which was not initially contested, the following goods: aftershave lotion; aftershave balm; deodorant stick; deodorant spray; shower gel.
On 18/11/2015, following the applicant’s letter, the EUTM proprietor partially surrendered the EUTM and requested the list of goods to be amended in order that the EUTM covered only those goods specified by the applicant as not contested, namely perfumery, aftershave lotion; aftershave balm; deodorant stick; deodorant spray; shower gel. The EUTM proprietor also requested the closure of these proceedings, since, after said surrender covering all the contested goods in Class 3, they had become devoid of purpose.
On 18/08/2016, the Office informed the applicant (who did not reply) that the list of goods of EUTM 5 682 141 was amended following the partial surrender, as follows:
Class 3 Perfumery; Perfumery, including deodorant stick, deodorant spray, aftershave lotion, aftershave balm; Cosmetics, namely aftershave lotion, aftershave balm, shower gel; Cleaning preparations, namely shower gel; Soaps, namely shower gel.
Since the modified list of goods of the EUTM covers only goods which are out of the scope of the revocation action, the revocation action no longer has any object and, therefore, the proceedings are hereby closed.
COSTS
According to Article 85(3) EUTMR, the party who terminates the proceedings by (partially) surrendering the contested EUTM shall bear the fees and the costs incurred by the other party.
As the EUTM proprietor partially surrendered its European Union trade mark for all the goods against which the application for revocation was directed), it is the EUTM proprietor who terminated the proceedings and who must therefore bear the fees and costs incurred by the applicant.
Pursuant to Article 85(6) EUTMR in conjunction with Rule 94(3) EUTMIR, the EUTM proprietor must pay the applicant EUR 1 150 (EUR 450 as representation costs and EUR 700 as revocation application fee).
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The Cancellation Division
|
José Antonio GARRIDO OTAOLA |
Ioana MOISESCU |
Pierluigi M. VILLANI |
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.