CANCELLATION No 11983 C (REVOCATION)

CKL Holdings N.V., Leeuwenstraat 4, 2000 Antwerp, Belgium (applicant)

a g a i n s t

Synopsys, Inc., 700 East Middlefield Road, 94043 Mountain View, California, USA (EUTM proprietor), represented by Mitscherlich, Patent-und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 Múnchen, Germany (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 3 139 482 are revoked in their entirety as from 26/10/2015.

3.        The EUTM proprietor bears the costs, fixed at EUR 700.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 3 139 482 IDENTIFY (word) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 9:        Computer software for debugging electronic circuit designs.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested trade mark has not been put to genuine use in the EU in relation to the contested goods within five years following the registration date. In the alternative, it considers that the contested trade mark has not been put to genuine use for an uninterrupted period of at least five years prior to the application for revocation. Finally, it requests that the date of revocation be effective from 24/01/2012.

The EUTM proprietor submits evidence of use listed in the section below. It argues that the documents show that the contested trade mark has been genuinely and extensively used during the relevant time for the registered goods in Class 9.

In reply, the applicant challenges the EUTM proprietor’s evidence. In addition of challenging each document, the applicant considers that the evidence does not prove that the contested trade mark has been used in relation to the specific goods in Class 9 within the relevant period in the European Union. Moreover, it considers that the EUTM proprietor has not taken any active septs during the relevant period to offer or advertise the contested goods. In its arguments, the applicant quotes abundant case-law and decisions from the Cancellation Division.

The EUTM proprietor requested an extension of the deadline to reply to the applicant’s observations. The Cancellation Division extended the deadline for reply until 07/12/2016. However, the EUTM proprietor did not submit any observations within the time limit.

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).

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 24/01/2008. The revocation request was filed on 26/10/2015.  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 26/10/2010 to 25/10/2015 inclusive, for the following contested goods:

Class 9:        Computer software for debugging electronic circuit designs.

On 12/04/2016, the EUTM proprietor submitted evidence as proof of use.

As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Exhibit A1: information regarding ‘IDENTIFY RTL Debugger’ software from the EUTM proprietor’s web page (www.synopsys.com), printed on 04/04/2016. There is no particular information to any relevant territory;
• Exhibit A2: screenshots of the EUTM proprietor’s website regarding ‘IDENTIFY’ software at eight different points in time between 19/03/2011 and 08/09/2015 created through ‘Wayback Machine’;
• Exhibit A3: Wikipedia excerpt on ‘Wayback Machine’;
• Exhibit A4: datasheet on ‘IDENTIFY’ software allegedly to be downloadable from www.synopsys.com, also by the European public. Although there is no particular date on the datasheet, the document contains the following reference: ©2011 Synopsis Inc. ;
• Exhibit A5: order form for customers (allegedly also for EU customers although there is not reference to any relevant territory) wanting to purchase ‘IDENTIFY’ product through www.synopsys.com. Undated;
• Exhibit A6: screenshot of the webpage where allegedly EU customers download ‘IDENTIFY’ software (although there is not reference to any relevant territory) Undated;  
• Exhibit A7: screenshot of ‘IDENTIFY’ software splash page. Undated;
• Exhibit A8: nine invoices (01/12/2008, 12/02/2010, 24/02/2010 (x3), 07/11/2011, 05/06/2012, 04/04/2012 and 01/11/2014) issued by Synopsys Global Kft (Hungary), Synopsis International Limited (Ireland) or Synopsis Inc (USA). The value of the products is indicated in USD and the customers’ details (including location) have been deleted except in the invoice of 01/11/2014 which is addressed to a customer in Germany. Only four invoices are dated within the relevant period and only one (07/11/2011) refers to the sale of an ‘Identify’ license. The other three invoices refer to ‘Certify’ or ‘Simplify’ licenses;  
• Exhibit A9: excerpt from the EUTM proprietor’s website indicating that the ‘Certify’ software includes the ‘Identify’ RTL debugger. Undated;
• Exhibit A10: a table showing a breakdown of allegedly revenues generated in USD by the sale of ‘family Certify’ and ‘IDENTIFY’ products during 2008 to 2015 in the EU. The breakdown however does not include a reference to the currency, the territories or the years.

Assessment of genuine use – factors

An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43) in the European Union.

The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).

In the present case, the EUTM proprietor has clearly failed to prove genuine use. The evidence, at least for the place of use, is insufficient.

In particular, the evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 15(1) EUTMR and Article 51(1)(a) EUTMR).

However, none of the documents refers to the relevant territory or otherwise a connection can be made between the use of the contested EUTM and the EU territory. Whilst the EUTM proprietor has argued that the invoices in Exhibit A8 concern the sale of products to European customers, this point cannot be confirmed. As above noted, the customers’ location has been redacted except for one single invoice addressed to a customer in Germany. This is clearly insufficient to show the use of the EUTM within the EU. Moreover, other details in the invoices do not point particularly to sales in the EU. It is to be noted that in all the documents, the only currency referred to is in USD. Finally, the fact that the four invoices dated within the relevant period have been issued by companies in Hungary or in Ireland cannot serve as such as a presumption that the products have been marketed within the EU, as claimed by the EUTM proprietor. Admittedly, according to Article 15(1)(b) EUTMR, the affixing of the contested EUTM to goods or to the packaging thereof in the Union solely for export purposes also constitutes use within the meaning of Articles 15(1) EUTMR.  However, in the absence of any additional evidence supporting the EUTM proprietor’s claims (such as customs declarations or evidence of transport), the Cancellation Division is left with the doubt whether the mark has indeed been used (i.e. affixed to goods or their packaging) in the EU for export purposes, or whether, for instance, the goods have been exported by another company of the same group from a country outside the EU and then invoiced through an EU subsidiary.

Similarly, the rest of the Exhibits do not support the EUTM proprietor’s assertions that genuine use of the contested EUTM is made within the EU. The table in Exhibit A10, allegedly showing revenues in the EU, is a mere combination of figures and columns with no particular indication of the relevant territory where the revenue has been generated. As to the rest of the evidence, primarily screenshots and information from the EUTM proprietor’s webpage or from Wikipedia, which allegedly show the EUTM proprietor’s intention to target EU customers, there is no reference to any particular territory or address (other than the US, where the EUTM proprietor is located) which would confirm that there is a real commercial exploitation of the EUTM in the EU.

Absent any further evidence which would objectively back up the EUTM proprietor’s statements regarding the effective use of the contested trade mark in the EU (for instance, catalogues or marketing campaigns addressed to EU customers) and considering that the genuine use of a trade mark cannot be proved 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), the Cancellation Division considers that the EUTM proprietor has failed to prove that the contested trade mark has been put to genuine use in the EU.

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 26/10/2015. 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 shown sufficient legal interest to justify it.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

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.