ROCTANE | Decision 0011874 – Trademarkers Legal Blog

CANCELLATION No 11874 C (REVOCATION)

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (applicant)

a g a i n s t

Advanced Food Concepts, Inc., 1609 4th Street, Berkeley California 94710, United States of America (EUTM proprietor), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 16/06/2017, 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 7 205 065 are revoked as from 05/10/2015 for part of the contested goods, namely:

Class 18: Backpacks, bags, waist packs, arm packs, sports packs, all purpose sport and athletic bags; leather and imitations of leather and goods made of these materials (included in class 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing and headwear, namely, t-shirts, tops, jerseys, shorts, socks, hats, caps and visors; clothing, belts, footwear, headgear.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioka, sago, artificial coffee; flour and preparations made from cereals; farinaceous food, pasta, pies, pizza; bread, pastry and confectionery, dessert creams, pudding, ices; chocolate and chocolate articles; sweets, bonbons, chewing-gum (not for medical use), honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

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

Class 30: Alimentary gels and pastes for energy.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 7 205 065 ROCTANE (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely goods in Classes 18, 25 and 30.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested EUTM has not been put to genuine use within the period of five years following its registration date in relation to the goods applied for. In the alternative, it considers that the EUTM has not been used for an uninterrupted period of at least 5 years prior to the application for revocation. The applicant requests that the EUTM is revoked and that the revocation is effective from 07/05/2014.

The EUTM proprietor submits the evidence listed in the next section (Exhibits A1 and 1 to 10).

In reply, the applicant considers that the evidence is not sufficient to prove the genuine use of the EUTM. It considers that the submitted affidavit is of questionable evidential value and that the turnover figures included therein have not been supported by any financial statements. It further argues that the Facebook Screenshots only show promotional activities but they do not prove that they have resulted in sales of products. As regards the EUTM proprietor’s UK website, it does not show the extent of the use. The applicant also comments on the submitted invoices. It considers that they show very low volume of sales and are not corroborated by any other supporting evidence. Moreover, the applicant argues that the invoices were issued by third parties so they should be rejected. Finally, it considers that the Facebook timeline and Wikipedia excerpts of Wayback machine should be disregarded. All in all, the applicant considers that the alleged sales volume and frequency of sales fails to constitute genuine use. Moreover, the EUTM proprietor failed to submit any evidence in relation to the relevant goods, except for “alimentary gels and pastes for energy” in Class 30.

Finally, the EUTM proprietor contests the piecemeal approach of the applicant in assessing the submitted evidence. In its view, the documents should be assessed as a whole. It quotes in this regards judgment of 15/07/2015 in T-215/13 (submitted as Exhibit A2). Moreover, it considers that the contents of the declaration is supported by the rest of the document, that the invoices have been submitted as samples confirming the turnover figures. As regards the identity of the entity issuing the invoices, the EUTM proprietor explains the connection with them. In support, it submits an excerpt of Blomberg.com and of Bizapedia (Exhibits A3 and A4).

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 07/05/2009. The revocation request was filed on 05/10/2015. 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 05/10/2010 to 04/10/2015 inclusive, for the following contested goods:

Class 25: Clothing and headwear, namely, t-shirts, tops, jerseys, shorts, socks, hats, caps and visors; clothing, belts, footwear, headgear.

Class 30: Alimentary gels and pastes for energy; coffee, tea, cocoa, sugar, rice, tapioka, sago, artificial coffee; flour and preparations made from cereals; farinaceous food, pasta, pies, pizza; bread, pastry and confectionery, dessert creams, pudding, ices; chocolate and chocolate articles; sweets, bonbons, chewing-gum (not for medical use), honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

On 18/03/2016 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: Declaration of Bair Clark, president and COO at Advanced Food Concepts, Inc, of 08/03/2016. The declaration describes Exhibits 1 to 10 below and contains a chart with turnover of the EUTM proprietor for ROCTANE energy products during the years 2013 to 2015 in various EU countries, in USD. Moreover, it explains, in connection with Facebook sites in Exhibits 1 to 6, that ‘GU Energy’ is the trade name of the EUTM proprietor;
Exhibits 1 to 6: screenshots from Facebook. In particular in English from Facebook site of GU Energy United Kingdom with posts dated April 2012 to 25/10/2013; 2 screenshots in Spanish from Facebook site of GU Energy Spain with posts dated 18/03/202 and 16/09/2015; 6 screenshots in German from Facebook site of GU Energy Germany with posts dated between 01/12/2011 to 18/04/2015; 3 screenshots in French from Facebook site of GU Energy France with posts dated 21/05/2015, 10/06/2015 and 07/08/2015; 4 screenshots in Greek from Facebook site of GU Energy Greece with posts dated between 09/04/2014 and 21/04/2015; 2 screenshots from Facebook site of the Italian distributor of GU Energy allegedly to be dated 09/10/2012 and 03/02/2015. Some of the screenshots show products, drink mix products related to “pure performance energy” labelled, among others, GU ROCTANE such as:

Exhibit 7: information from Facebook help page explaining “Facebook” timeline;
Exhibit 8: screenshots from the EUTM proprietor’s United Kingdom website “guenergy.co.uk” created, according to the EUTM proprietor, through the Wayback Machine from 05/02/2011 to 14/09/2015. The web page includes information on GU Energy Gel and how to buy it in the UK. The screenshots show pictures of products similar to the ones in Facebook screenshots. They also provide explanations on Roctane gel and Roctane Ultra Endurance Energy Drink;
Exhibit 9: Wikipedia excerpt regarding the “Wayback Machine”;
Exhibit 10: 19 invoices from Advanced Food Concepts, Inc.’s subsidiaries in the Netherlands issued to customers in Greece (08/10/2010 2592, 21/12/2010 2592, 28/06/2011 576, 29/09/2011 3456, 21/07/215 1590), Belgium (09/07/2014694), Finland (24/10/2013 576, 19/04/2013 1278, 04/07/2014 576), France (29/08/2011 1092, 16/03/2012 3600, 26/07/2013 3462, 11/07/2014 2497), Germany (20/07/2012 600, 19/10/2012 600, 03/04/2013 1650, 14/08/2014 828) and Spain (27/07/2011 819, 14/11/2012 3354). According to the declaration in Exhibit A1, the invoices relate to ROCTANE energy gel products and the invoices from year 2015 abbreviate ROCTANE as ROC.

Preliminary remarks

Assessment of the evidence as a whole

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the contested EUTM is registered. The EUTM proprietor contests this approach and argues that the submitted documents must be assessed as a whole.

The Cancellation Division agrees with the EUTM proprietor’s views.

As above stated, according to Rule 40(5) EUTMIR in conjunction with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the contested EUTM for the relevant goods and services. These requirements are cumulative. This means that the EUTM proprietor is obliged not only to indicate but also to submit evidence which allows drawing conclusions on each of the four factors to which proof of genuine use must relate, namely place, time, extent and nature of use of the contested EUTM. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors each considered in isolation is not suitable (16/05/2013, T-353/12, ALARIS, ECLI:EU:T:2013:257 § 35).

Therefore, when evaluating the evidence, the Cancellation Division is under no obligation to provide a separate motivation for each piece of evidence submitted by the EUTM proprietor. The question whether there has been genuine use of a mark must be assessed globally taking into account all available evidence. All the circumstances of the specific case have to be taken into account and all the materials submitted must be assessed in conjunction with each other. Therefore, although pieces of evidence may be insufficient by themselves to prove the use of the earlier trade mark, they may contribute to proving use in combination with other documentation and information (13/02 2015, T-287/13, HUSKY, ECLI:EU:T:2015:99, § 65 and the case-law cited therein).

Use by a third party

The applicant contests the evidence of use filed by the EUTM proprietor on the grounds that it does not originate from the EUTM proprietor itself but from another company. In particular it argues that the invoices were issued by companies other than the EUTM proprietor and that the EUTM proprietor has not adduced any evidence to support its economic relationship with any of these companies.

In reply, the EUTM proprietor explained the links with the issuing companies (GU Energy Labs, Sports Street Marketing) and submitted evidence from Bloomberg.com and Bizapedia (Exhibits A3 and A4) in support. According to Bloomberg excerpt, ‘Advanced Food Concepts, Inc.’ is doing business as ‘GU Energy Labs’. Bizapedia excerpt indicates that the principal of Sports Street Marketing is Advanced Food Concepts Incorporated.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The fact that the EUTM proprietor submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225). In addition, it further explaining the connections between those companies and the EUTM proprietor itself so the EUTM proprietor explicitly indicated that the use was with its consent. The applicant’s claim is therefore unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Cancellation Division considers that the use by those other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

Value of affidavits

The applicant argues that the declaration by Mr. Blair Clark is of questionable evidential value as he is the EUTM proprietor’s employee and may be biased towards the EUTM proprietor. As a result, the information contained and referred to may not be reliable, in particular the turnover figures provided and the fact that ‘GU Energy’ is a trade name of the EUTM proprietor.

Rule 22(4) EUTMIR (applicable to cancellation proceedings by virtue of Rule 40(6) EUTMIR) expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

In this regard, the Cancellation Division notes that the explanations on the link between ‘GU Energy’ and the EUTM proprietor are backed up with the evidence further provided by the EUTM proprietor as Exhibit A2 and A3. Moreover, the fact that the EUTM proprietor was conducting a business generating turnover in various EU countries is confirmed by the invoices submitted in Exhibit 8 as samples.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period (that is 05/10/2010 to 04/10/2015)

Most of the evidence, in particular the invoices in Exhibit 10 and the posts on Facebook in Exhibits 1 to 6, is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

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 show that the place of use is Greece, Belgium, Finland, France, Germany and Spain. This can be inferred from the customers’ addresses in those countries. Therefore, the evidence relates to the relevant territory.

Nature of use: use as a trade mark

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.

From the submitted evidence, and in particular the invoices and the images of products, it is clear that the sign ROCTANE has been used as a mark, in order to identify the relevant goods.

Nature of use: use of the mark as registered

‘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.

The contested EUTM is a word mark. The sign has been used on products in block characters, sometimes with a slight stylisation. This modification does not alter its distinctive character. Therefore, the evidence shows that the mark has been used as registered.

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 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).

The assessment of genuine use entails 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 applicant considers that the invoices show low commercial volume which are not corroborated by any other supporting evidence. The Cancellation Division does not consider that the invoices reflect such a low commercial value.

The sample invoices show sales for ROCTANE products (such as Pineapple Roctane Gel or Cherry Lime Roctane Box), ranging from more than hundreds to thousands of USD per invoice. Moreover, the invoices show a certain frequency in the sales in the EU during the relevant period and cover at least seven Member States (Greece, Belgium, Finland, France, Germany and Spain). They clearly include the reference to ROCTANE or ROC (which as explained in the declaration, is the abbreviation for ROCTANE) in connection with the sold items. Finally, in the present case, the information contained in the invoices is further supplemented by information on turnover figures provided in the declaration in Exhibit A1 and in the publicity campaigns shown in the various Facebook pages submitted in Exhibits 1 to 6.

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 a variety of goods and services in Classes 18, 25 and 30 listed above. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods 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.

In the present case the evidence (in particular the invoices and the pictures of ROCTANE products) shows genuine use of the trade mark only for the following goods:

Class 30: Alimentary gels and pastes for energy.

The applicant itself admits that the documents include evidence in regard to these goods in Class 30. The EUTM proprietor also indicates that the documents show genuine use ‘especially alimentary gels and pastes for energy’.

The evidence does not, however, refer to any of the other goods in Classes 18, 25 and 30 for which the contested EUTM is registered. Therefore, the Cancellation Division should declare the EUTM to be revoked for the remaining goods for which it is registered.

Conclusion

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

Class 25: Clothing and headwear, namely, t-shirts, tops, jerseys, shorts, socks, hats, caps and visors; clothing, belts, footwear, headgear.

The EUTM proprietor has proven genuine use for the remaining contested goods (alimentary gels and pastes for energy in Class 30). 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 05/10/2015. 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Ana MUÑIZ RODRÍGUEZ

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.

Leave Comment Cancel reply