CANCELLATION No 10 867 C (REVOCATION)

Kid-System GmbH, Lüneburger Schanze 30, 21614 Buxtehude, Germany (applicant), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).

a g a i n s t

Sky International AG, Stockerhof, Dreikönigstrasse 31a, 8002 Zürich, Switzerland (EUTM proprietor) represented by Olswang LLP, 90 High Holborn, WC1V 6XX London, United Kingdom (professional representative).

On 10/05/2017, 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 250 506 are revoked in their entirety as from 12/05/2015.

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 No 250 506 ‘SKYPHONE’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:

Class 38:         Telecommunication services.

The applicant invoked Article 51(1)(a) EUTMR.

GROUNDS FOR THE DECISION

According to Article 51(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union or submit proper reasons for non-use.

In the present case, the EUTM was registered on 18/05/1998. The revocation request was filed on 12/05/2015. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 19/05/2015, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the services for which it is registered.

On 26/10/2015, the EUTM proprietor declared the total surrender of the contested EUTM. The examination of the surrender by the Office was suspended pending the outcome of the present cancellation proceedings.

On 04/11/2015, the Cancellation Division informed the parties of its intention, in view of the total surrender, to close the cancellation proceedings without a decision on the substance and invited them to submit observations.

On 03/12/2015, the applicant expressed its wish to continue with the present proceedings and to obtain a decision on the substance.

On 17/12/2015, the Cancellation Division decided to continue the present proceedings and gave to the EUTM proprietor another time limit of three months to submit evidence of use of the EUTM for all the services for which it is registered.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.

According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the services for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.

An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not proven sufficient legal interest in support of its request.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 12/05/2015.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Claudia SCHLIE

Raphaël MICHE

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 of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Annex 1 A(33) EUTMR).