CANCELLATION No 12 355 C (REVOCATION)

BOIRON Société Anonyme, 2 Avenue de l’Ouest Lyonnais, 69510 Messimy, France (applicant) represented by Cabinet Plasseraud, Immeuble le Rhône Alpes, 235, Bis cours Lafayette, 69006 Lyon, France (professional representative).

a g a i n s t

Cosmeteacs GmbH, Alfred Kubin Strasse 11/32, 5020 Salzburg, Austria (proprietor) represented by LS-MP von Puttkamer Berngruber Loth Spuhler Partnerschaft von Patent- und Rechtsanwälten mbB, ALPHA-Haus, Garmischer Strasse, 35, 81373 Munich, Germany (professional representative).

On 12/05/2017, 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 8 889 751 are revoked in their entirety as from 12/01/2016.

3.        The EUTM proprietor bears the costs, fixed at EUR 1150.

REASONS

The applicant filed a request for revocation of European Union trade mark No 8 889 751 ‘ACTEAVE’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 3:        Cosmetics; Soaps; Hair lotions; Perfumery; Essential oils.

Class 16:        Paper, cardboard, or goods made from these materials, not included in other classes; Printed matter; Bookbinding material; Photographs; Stationery; Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes).

Class 35:        Advertising; Business management; Business administration; Retailing and wholesaling in relation to cosmetics, soaps, hair lotions, perfumery, essential oils, paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, stationery, instructional and teaching material (except apparatus), plastic materials for packaging.

Class 44:        Hygienic and beauty care for human beings.

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 18/08/2010. The revocation request was filed on 12/01/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 21/01/2016, 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 goods and services for which it is registered. This time limit expired on 30/04/2016.

On 18/04/2016 the EUTM proprietor requested a partial surrender. The Office registered this partial surrender on 06/06/2016.

On 29/04/2016 the EUTM proprietor requested an extension of two months. The Office granted the extension on 05/05/2016 until 30/06/2016.

On 26/06/2016 the Office informed the applicant of the EUTM registered partial surrender and gave it a time limit until 16/08/2016 to inform the Office whether or not he would maintain the application for revocation.

On 28/07/2016 the EUTM proprietor requested a second partial surrender. The Office registered this partial surrender on 12/09/2016.

On 19/09/2016 the Office informed the applicant of the EUTM registered partial surrender and gave a time limit until 19/11/2016 to inform the Office whether or not he would maintain the application for revocation.

On 01/12/2016 the Office informed the applicant that the application for revocation was maintained and the proceedings would continue since the applicant had not expressed its wish to withdraw the application. The Office gave a time limit until 01/02/2017 to the proprietor to submit observations.

On 27/01/2017 the proprietor requested an extension of two months to submit proof of use of the EUTM and to submit evidence of use.

On 17/02/2017 the Office refused the proprietor’s request of extension of the time limit to submit evidence of use, because an extension had already been previously granted and the second extension request was not justified on the basis of any exceptional circumstances beyond the reasonable control of the party in question. For reasons of equity the Office granted the EUTM proprietor an additional time limit to submit proof of use expiring on 22/02/2017.

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 goods and 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.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 12/01/2016.

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 costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

 

Agueda MAS PASTOR

María de las Nieves CANTÓ SOLER

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.