CANCELLATION No 14513 C (REVOCATION)

Telephone and Data Systems, Inc., 30 North LaSalle Street, Suite 4000,  Chicago Illinois 60602, United States of America, (applicant), represented by Carpmaels & Ransford LLP, One Southampton Row,  London, City of London WC1B 5HA, United Kingdom, (professional representative).

a g a i n s t

Fujitsu TDS GmbH, Konrad-Zuse-Str. 16,  74172 Neckarsulm, Germany, (EUTM proprietor), represented by Epping Hermann Fischer Patentanwaltsgesellschaft mbH, Postfach 20 07 34, 80007 Munich, Germany (professional representative).

On 28/09/2017, 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 9 217 357 are revoked in their entirety as from 17/02/2017.

3.        The EUTM proprietor bears the costs, fixed at EUR 1080.

REASONS

The applicant filed a request for revocation of European Union trade mark   No 9 217 357 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9        Data processing equipment and computers, including peripheral devices and parts therefor, included in class 9, in particular computer hardware for use in the field of payroll processing, unemployment compensation management, employee time and attendance record-keeping, employee leasing, human resources management, employee benefits administration, tax deposit filing and reporting, pension record-keeping, accounting, and business management; computer programs, included in class 9, in particular computer software products for use in payroll processing, unemployment compensation management, employee time and attendance record-keeping, employee leasing, human resources management, employee benefits administration, tax deposit filing and reporting, pension record-keeping, accounting, and business management.

Class 16        Office requisites, namely non-electric office machines and typewriters; non-electric computer accessories; printed matter; information in the form of printed matter; pamphlets; newspapers and periodicals; books; operation manuals for data processing devices and computer programmes.

Class 35        Advertising; bookkeeping; marketing; market research and market analysis; Business management and business management assistance; personnel services, in particular personnel procurement, human resources management, employee leasing; payroll preparations; business process outsourcing; administration of employee benefit plans; pension record-keeping; unemployment compensation management services; office functions, in particular providing computer services, data services and professional services for employees; tax deposit filing and reporting; employee time and attendance record-keeping,; office machines and equipment rental; business consultancy; outsourcing services, namely IT outsourcing; organization consultancy; business consultancy and advisory services; consultancy in the field of employment and personnel; business consultancy with regard to to compliance with statutory, industry or best practice provisions; personnel and business investigation, survey, research and audit services; professional business consultancy with regard to the construction and operation of information and communications systems, and data processing equipment and computer programs; electronic archiving; retrieval of data and documents.

Class 37        Repair and maintenance of information and communications systems, and data processing equipment.

Class 38        Collection and delivery of messages; electronic transmission of data, images and documents via computer terminals; data and voice telecommunications; fax transmission.

Class 41        Education and training relating to providing and development of programs for data processing.

Class 42        Creation and development of data processing programs; software development; rental of information and communications systems including data processing devices and data processing programs; operation of information and communications systems including data processing devices and data processing programs for others; technical application service provider; computer services, in particular obtaining applications via the Internet (SaaS) and IT resources via the Internet; computer consultancy; maintenance of software; IT consultancy services; technical consultancy with regard to the construction and operation of information and communications systems, and data processing equipment and computer programs; technical application management of information and communications systems, and data processing equipment and computer programs; repair and maintenance of computer programs.

Class 45        Licensing of computer software.

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 01/03/2011. The revocation request was filed on 17/02/2017.  Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.  

On 02/06/2017 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.

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.  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 17/02/2017.

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

María INFANTE SECO DE HERRERA

Isabel ARRANZ ESTAUN

Jose 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).