CANCELLATION No 12 364 C (REVOCATION)

Bissa international LLC, 1200 Fifth Avenue, Apt. 14-A, 10 029 New York, New York, United States of America (applicant), represented by IP Skill, Via Magenta 25, 10 128 Torino, Italy (professional representative)

a g a i n s t

José Maria Amat Mira, Calle José Maria Permán 10, 3600 Elda (Alicante), Spain (EUTM proprietor), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124 4°, 28 006 Madrid, Spain (professional representative).

On 02/06/2017, the Cancellation Division takes the following

DECISION

1.        The application for revocation is partially upheld.

2.        The EUTM proprietor’s rights in respect of European Union trade mark No 2 394 393 are revoked as from 14/01/2016 for part of the contested goods and all the contested services, namely:

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; travelling bags, wallets, briefcases, leather straps or leather belts (saddlery), travel cases, key cases (leatherware), linings of leather for shoes, portfolios, attache cases, purses (not of precious metal), garment bags for travel, card holders; umbrellas, parasols and walking sticks; whips, harness, saddlery and leatherware.        

Class 25:        Footwear (except orthopaedic), excluding footwear for women; clothing and headgear.

Class 35:        Sales promotion (for others); retail and wholesale of various products (except the transport thereof); business management; after-care services, counselling and professional business management consultancy; advertising by any means of dissemination, including through exposure on an electronic site accessed via computer networks and relating to goods and services of all kinds; organisation of trade fairs and exhibitions for commercial or advertising purposes; market research; franchising, market research; import and export services.

3.        The European Union trade mark remains registered for all the remaining goods, namely:

Class 18:        Handbags.

Class 25:        Footwear for women (except orthopaedic).

4.        Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 2 394 393 ‘MAGRIT’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; handbags, travelling bags, wallets, briefcases, leather straps or leather belts (saddlery), travel cases, key cases (leatherware), linings of leather for shoes, portfolios, attache cases, purses (not of precious metal), garment bags for travel, card holders; umbrellas, parasols and walking sticks; whips, harness, saddlery and leatherware.

Class 25:        Footwear (except orthopaedic), clothing and headgear.

Class 35:        Sales promotion (for others); retail and wholesale of various products (except the transport thereof); business management; after-care services, counselling and professional business management consultancy; advertising by any means of dissemination, including through exposure on an electronic site accessed via computer networks and relating to goods and services of all kinds; organisation of trade fairs and exhibitions for commercial or advertising purposes; market research; franchising, market research; import and export services.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant requests the total revocation of the EUTM ‘based on non use’.

The EUTM proprietor submits evidence of use (listed and analysed below) and provides explanations in relation to the filed documents and their content. The EUTM proprietor requests the application to be rejected and the costs for the proceedings to be borne by the applicant.

In its observations in reply the applicant states that there is absolutely no evidence of use provided for the majority of the registered goods and services. For others, namely clothing and handbags, the applicant considers that the submitted evidence is not sufficient in order to prove genuine use of the contested EUTM for these goods. The applicant agrees though that use for the goods footwear (except orthopaedic) has been sufficiently proven. Finally, based on the analysis of the evidence the applicant requests the revocation of the EUTM for all the contested goods and services except footwear and the costs of the proceedings to be borne by the EUTM proprietor.

In the final round of observations the EUTM proprietor claims that the contested EUTM was not just genuinely used in relation to footwear but also that it has acquired reputation or at least a well-known character ‘in the Europe footwear sector and therefore in the Europe fashion industry’. Further, the EUTM proprietor insists that genuine use in relation to handbags has been sufficiently proven. The EUTM proprietor also states that genuine use has been proven for some of the services in Class 35, in particular retail and wholesaling of various products (except the transport thereof), import and export services and organisation of trade fairs and exhibitions for commercial advertising purposes. Finally, the EUTM proprietor reiterates its claims submitted in the first round of observations, namely that the application is to be rejected and the costs for the proceedings to be borne by the applicant.

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 13/12/2002. The revocation request was filed on 14/01/2016. 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 14/01/2011 to 13/01/2016 inclusive, for all the goods and services covered by the registration in classes 18, 25 and 35 as listed above and against which the revocation action was directed.

On 01/07/2016 the EUTM proprietor submitted evidence as proof of use. The evidence is provided in a clearly structured manner and is accompanied by a detailed description of all the items. A copy of the submitted evidence has been delivered to the applicant. Therefore, the Cancellation Division will not list and provide a detailed description of each and every piece of evidence but will rather describe the submitted evidence in general and to the extent required for the purposes of the examination and will refer whenever necessary to particular items using the numbering provided by the EUTM proprietor. Furthermore, 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.

It is to be noted first of all that indeed and as the applicant states,  there is absolutely no evidence provided in relation to the majority of the registered goods and services, except for footwear, clothing/headgear (as far kerchiefs can be regarded as belonging to both categories) and handbags.

Bearing in mind all the above, the evidence to be taken into account is the following:

Item 1.        License agreement in Spanish between Mr. José María Amat Mira (EUTM proprietor) and DISGRAMARC, S.L. dated 10/03/2004. No translation in the language of proceedings has been submitted. It can be inferred nevertheless that this is a licence agreement concerning the use of the trademark ‘MAGRIT’.

Item 2.        Declarations issued by Mr José Monzonis Salvia, president of the Spanish Footwear Industry Federation; Ms. Isabel Lopez Garcia, managing director of the Spanish association of footwear manufacturers ‘ALIUS’, both in Spanish and not accompanied by a translation in the language of proceedings; and Ms Bettina Robrahn on behalf of Trade Fair Companies Kamy & Robrahn GmbH in English accompanied by pictures of a MAGRIT displaying footwear and bags allegedly proving that goods (footwear) bearing the contested EUTM has been exhibited at various trade fairs and shows around the world, including Italy, Germany and France.

Item 3.        Hundreds of invoices in Spanish (not accompanied by a translation) issued by Disgramarc, S.L. during the entire relevant period to customers in Spain, Italy and Germany (among others) showing the sign  in the upper left corner or  in the upper right corner for the sale of shoes and handbags. Examples of catalogues containing photographs of the goods referenced in the invoices. The invoiced amounts vary from one or several hundred to several thousands of Euros. Other documents in Spanish such as contracts and pictures

3.1        invoices evidencing online sales of shoes and bags to customers in Portugal, France, Germany, United Kingdom, Italy, Croatia, etc. in 2015 and 2016. The sales of shoes and bags are to be identified in the invoices by pictures of the shoes themselves or by the English term ‘bag’.

3.7        invoices issued in 2016, one of which for the sale of 12 bags (dated 22/02/2016, outside of the relevant period) to a client in the United Kingdom.

3.9        printouts from listings featuring handbags. Various shoes and bags models are identified with reference numbers. The printouts bear the date 14/06/2016 which is outside of the relevant period and seems to be the date on which the listings were printed out.

3.10                three photographs of two kerchiefs (undated).

3.16                pictures showing handbags for sale bearing the EUTM.  

Item 4.        Documents showing the presence of the EUTM in the media.

Preliminary remark regarding the claimed well-known character of the contested EUTM

With regard to the EUTM proprietor’s argument that the contested EUTM is well-known in the EU, the Cancellation Division notes that according to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. The role of the Office is to assess the evidence put before it in the light of the parties’ submissions. That is to say that the Office cannot determine ex officio the genuine use of earlier marks. Even proprietors of purportedly well-known marks must submit evidence to prove genuine use of the earlier mark(s).

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period.

Most of the evidence is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside of the relevant period to which the applicant refers (invoice No. E 376, dated 22/02/2016 for the sale of twelve bags in the United Kingdom) confirms use of the EUTM proprietor’s mark within the relevant period. This is first of all because it was issued only some forty days after the relevant period. Bearing in mind the usual trade practices it can be accepted that the purchase order was placed before the issuance of the invoice. Second, this particular piece of evidence has to be assessed together with the other presented pieces of evidence, namely (as far as handbags are concerned) the invoices issued in the previous years (2011, 2012, 2013, 2014 and 2015) and the catalogues, pictures and listings referring to handbags bearing the EUTM.

Place of use

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).

The invoices and the documents regarding participation in fairs and exhibitions show that the place of use is the European Union, in particular Spain, France, Italy, Germany, United Kingdom. This can be inferred from the language of the documents (Spanish and English), the currency mentioned (‘Euro’) and some addresses in the mentioned countries. Therefore, the evidence relates to the relevant territory.

Nature of use

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

‘Nature of use’ in the context of Rule 22(3) EUTMIR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

It is clear in the present case that the sign is used as a trade mark – placed on the goods themselves and displayed on the invoices in relation to the goods and together with the name of the licensee Disgramarc, S.L. and in the form as registered (as a word mark) or in a form which does not alter its distinctive character (the verbal element presented in slightly stylised typescript).  

Extent of use

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

The EUTM proprietor submitted a significant amount of invoices regarding the use of the contested EUTM in relation to footwear for women. The commercial volume of the overall use shown is significant as such. Moreover, the trade mark was used continuously during the entire relevant period which proves sufficient length and frequency of use. The extent of use of the contested EUTM in relation to footwear is also acknowledged by the applicant.

 

The applicant, however, disputes the extent of use in relation to handbags and kerchiefs.

After identifying the evidence regarding the extent of use of the contested EUTM in relation to handbags, namely several invoices for the sale of 106 handbags, the applicant compares the number of these sales to the number of sales regarding footwear and comes to the conclusion that compared to the impressive amount of invoices regarding the sales of footwear, the number of handbags sold is very small.

While this finding as such is indeed true, the ‘comparative’ approach that the applicant applies is not the correct approach in establishing whether the extent of use in relation to handbags is sufficiently demonstrated. The question is not whether the EUTM has been used to the same extent in relation to some goods as in relation to others but whether it is enough as such in relation to particular goods. In the particular case the answer to this question in relation to handbags should be answered to the affirmative.

The Cancellation Division bases this conclusion on the following principles and findings.

First of all the Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39).

It is observed that the handbags in question are rather luxurious, pricy, boutique models rather than mass produced everyday articles. The sale of 106 handbags where the price for a single item exceeds EUR 100 is already not negligible. Moreover, the Cancellation Division pointed out in the previous section that the invoice No E 376 for the sale of 12 handbags outside of the relevant period is also to be taken into account.

The assessment of genuine use entails further a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The submitted evidence in relation to handbags proves sales during the entire relevant period to clients in eight Member States. By taking all these facts into account and by applying the above principles, the Cancellation Division finds the proven extent of use in relation to handbags sufficient.

The same conclusion cannot be reached in relation to the goods kerchiefs. The undated pictures referring to two kerchiefs are not enough to show the extent of use in relation to these goods and/or the broader category to which they belong. No other evidence, such as invoices, has been provided by the EUTM proprietor in this regard.

Use in relation to the registered goods and services

Article 51(1)(a) EUTMR and Rule 22(3) EUTMIR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

The contested EUTM is registered for the goods and services listed above in the ‘REASONS’ section of the decision. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services for which it is registered.

According to Article 51(2) EUTMR, where there are grounds for revocation in respect of only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.

According to Case-Law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288)

Since consumers are searching primarily for a product or service to meet their specific needs, the purpose of the product or service in question is vital for determining their choice. Consequently, it is of fundamental importance when defining a subcategory of goods or services (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 29).

The contested EUTM is registered for, among others, footwear in Class 25. It is clear that this category of goods is sufficiently broad for several subcategories to be identified within it based on different criteria. The evidence shows that the contested EUTM has been used for shoes, boots, sandals and other types of footwear exclusively for women. On the basis of the purpose of the goods used and taking into account the market reality in the footwear sector where footwear for women, man and children are three sufficiently identified subcategories of footwear, the Cancellation Division finds that based on the submitted evidence use is demonstrated for the subcategory footwear for women.

For the sake of completeness it is to be mentioned that the applicant itself agreed on the fact that the EUTM proprietor sufficiently proved the genuine use of the contested EUTM for footwear. However, although the Office is bound by the facts, evidence and arguments provided by the parties, it is not bound by the legal value that the parties may give thereto. Hence, the parties may agree as to which facts have been proved or not, but may not determine whether or not these facts are sufficient to establish genuine use (decisions of 01/08/2007, R 0201/2006-4, OCB, § 19; 14/11/2000, R 0823/1999-3, SIDOL, § 20; 13/03/2001, R 0068/2000-2, NOVEX PHARMA).

The evidence shows also use for handbags. Handbags are by definition small bags which a woman uses to carry things such as her money and keys in when she goes out (See the Collins dictionary). Therefore, based on the submitted evidence use is accepted for handbags.

No use in relation to the remaining goods and services covered by the registration has been proven. At the same time, no proper reasons for non use have been demonstrated by the EUTM proprietor. The statement of the EUTM proprietor that genuine use has been proven also for some of the services in Class 35, in particular retail and wholesaling of various products (except the transport thereof), import and export services and organisation of trade fairs and exhibitions for commercial advertising purposes is not supported by the evidence. The mere fact that the goods for which use has been accepted were sold to third parties and were displayed on stands at exhibitions does not justify use for the EUTM in relation to these services.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 36).

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for the relevant factors time, place, nature and extent in relation to part of the contested goods and services, namely: handbags in Class 18 and footwear for women (except orthopaedic) in Class 25.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods and services, for which it must, therefore, be revoked:

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; travelling bags, wallets, briefcases, leather straps or leather belts (saddlery), travel cases, key cases (leatherware), linings of leather for shoes, portfolios, attache cases, purses (not of precious metal), garment bags for travel, card holders; umbrellas, parasols and walking sticks; whips, harness, saddlery and leatherware.        

Class 25:        Footwear (except orthopaedic), excluding footwear for women; clothing and headgear.

Class 35:        Sales promotion (for others); retail and wholesale of various products (except the transport thereof); business management; after-care services, counselling and professional business management consultancy; advertising by any means of dissemination, including through exposure on an electronic site accessed via computer networks and relating to goods and services of all kinds; organisation of trade fairs and exhibitions for commercial or advertising purposes; market research; franchising, market research; import and export services.

        

The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect.

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 14/01/2016.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Robert MULAC

Plamen IVANOV

Ana MUÑIZ RODRIGUEZ

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.