Ftv | Decision 0010021 – Trademarkers Legal Blog

CANCELLATION No 10021 C (REVOCATION)

Fashion TV Broadcasting Limited, 71-75 Shelton Street, Covent Garden, City of London WC2H 9JQ, United Kingdom (applicant)

a g a i n s t

fashiontv.com GmbH, Elsenheimerstr. 43, c/o R.A.W. Unternehmensberatung GmbH 80687 München, Germany (EUTM proprietor), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 28/06/2017, the Cancellation Division takes the following

DECISION

The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 646 091 are revoked as from 06/11/2014 for all of the contested services, namely:

Class 41: Education; providing of training; sporting and cultural activities, entertainment; publication of books and magazines; lending libraries; animal training; production of shows and films; theatrical agencies; rental of motion pictures, photographic recordings, cinema film projectors and accessories for theatre sets; organisation of competitions relating to education or entertainment; arranging and conducting of colloquiums, conferences and congresses; organisation of facilities for cultural or educational purposes; reservation of seats for shows.

Class 42: Providing of food and drink, temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services, scientific and industrial research; computer programming; rest homes and convalescent homes; day-nurseries; marriage bureaux, undertaking, surveying, professional consultancy and construction drafting, non-business; engineering work (not for construction); prospecting, material testing; laboratories; rental of farming equipment, clothing, bedding, vending machines; printing; leasing access time to a computer database; news reporters services; videotaping; providing facilities for exhibitions.

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

Class 25: Clothing, footwear (except orthopaedic footwear), headgear.

Class 38: News and information agencies, communications by computer terminals; telecommunications, information agencies, radio and television broadcasting; television broadcasting; radio and television broadcasting; dissemination of information on the Internet.

4. 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 646 091 Ftv (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely against all the services in Classes 41 and 42.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant requests the EUTM proprietor to file evidence of use of the contested EUTM for services in Classes 41 and 42.

The EUTM proprietor submits Annexes A1 to A14 listed below in order to prove that the EUTM has been used for ‘entertainment services’, ‘organization of competitions relating to entertainment’ and ‘organization of facilities for cultural or educational purposes’ in Class 41.

In reply, the applicant contests the evidence submitted by the EUTM proprietor. It considers that the affidavit submitted has no evidentiary value as it comes from the EUTM proprietor’s employee. Moreover, the applicant argues that the evidence does not show use in the Member States claimed in the affidavit, that the evidence of use is not dated, that the documents show the use of the contested EUTM in different forms (with additional elements such as .com, HD or Europe) and that the EUTM proprietor did not show any turnover generated through the provision of services in Class 41. Additionally, the applicant comments on each of the submitted documents. It considers that they do not show genuine use of the contested EUTM as they are irrelevant as they provide references to URL no longer available (A1 to A3, A13, A14); do not provide information on place, time of use (A4, A6 and A7) and nature of use (A5, A11, A12, A13, A14); they refer to other signs such as slogans which use ‘Ftv’, show very limited sales or show use as a company name (invoices in A8 to A10); they are barely readable (A12), or they relate to territories outside the EU (A13). The applicant finally points out that the EUTM proprietor has not submitted any proof of genuine use with regards to services in Class 42.

In the rejoinder, the EUTM proprietor reiterates its arguments and submits again the evidence of use previously filed.

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 05/08/2003. The revocation request was filed on 06/11/2014. 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 06/11/2009 to 05/11/2014 inclusive, for the following contested services:

On 08/04/2015 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

Enclosure A: affidavit from Mr Gabirel Lisowski, CEO of fashiontv.com GmbH which is a subsidiary of Fashion TV Programmegesellschaft mbH. The affidavit indicates that the company distributes a 24-hour fashion channel in Europe. The affidavit explains the alleged use of the Ftv sign in relation to the evidence submitted, such as on the microphones, as part of a slogan in invoices and as part of TV schedule. The affidavit further refers to the entertainment services provided in relation to the submitted evidence.

Enclosure A1: screenshot from www.youtube.com showing a video entitled ‘fashiontv FTV.com – margherita mazzei making of formentera’ with illegible date. The screenshot shows the following logo on the video:

Enclosures A2 and A3: screenshots from www.fashiontv.com showing a video posted on 25/06/2012 and a video posted on 23/05/2012. The screenshot shows the following logos on the video:

(on micro)

Enclosures A4 to A7: screenshots from various portals with technical information (satellite frequency, Video PID, Audio PID, SID among others) on TV channels:

www.satage.com providing information on channel ‘FTV HD Europe’, undated;
www.sat-charts.eu, providing information on channel ‘FTV Europe’, undated;
www.lyngsat.com providing information on ‘FTV HD Europe’, latest update 19/01/2015 with the following logo:

www.satindex.de, providing information on ‘FTV HD EUROPE’ undated;

Enclosures A8 to A10: invoice of 03/01/2011 to a customer in Slovenia for a subscription dated 15/01/2011 to 14/02/2011 for an amount of EUR 1000; invoice of 02/01/2012 to a customer in Portugal for undefined services regarding ‘01/2012 FTV HD’ for an amount of EUR 8333,33; invoice of 20/01/2011 to a customer in France with ref ‘FTV 0.03 pspm’ for an amount of EUR 9775.20. The following logos appear on the invoices:

Enclosure A11: screenshot from www.fashiontv.com providing information on TV schedule for a given (undated) day in various FTV HD channels (FTV HD Asia, FTV HD Europe and FTV HD USA), screenshot of satellite information regarding FTV HD Europe and FTV Europe (undated). The following logos appear:

Enclosure A12: screenshots from www.fashiontv.com with images indicating ‘distribution and technical reach’ of three FTV HD Channels (undated). The following logo appear:

Enclosure A13: screenshots from www.fashiontv.com and www.youtube.com of respectively, ‘Miss FTV 2013’ beauty contest which took place in Cyprus in July 2013 and ‘Miss FTV Turkey’ event in 2014.

Enclosure A14: screenshot from www.yampgo.com of a bikini show called ‘FTV bikini’ undated with the same logo as in Enclosures A2 and A3.

Preliminary remarks

Assessment of the evidence as a whole

The applicant individually assesses each of the enclosures submitted by the EUTM proprietor and concludes that not all the items of evidence indicate genuine use in terms of time, place, extent, nature or use of the services for which the contested EUTM is registered.

As previously 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 applicant. 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).

Value of affidavits

The applicant argues that the declaration by Mr. Gabriel Lisowski is of questionable evidential value as he is the EUTM proprietor’s employee.

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 declaration merely describes the evidence submitted in Enclosures A1 to A14, putting the documents into context.

Assessment of genuine use – factors

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 applicant argues that the EUTM proprietor did not even claim that it generated any turnover from the services protected in Class 41. It also considers that the sign ‘Ftv’ only appears on three invoices allegedly related to entertainment services but it has not been indicated if any business volume was generated by the sale of such services. All in all, the applicant considers that there are no sales revenues at all by the use of the sign ‘Ftv’ for services in Class 41 or if any, it was very low. As regards services in Class 42, the applicant claims that the EUTM proprietor did not furnish any proof of use at 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).

Moreover, 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.

Even if the use does not need to be quantitatively significant and taking all the factors into account, the Cancellation Division agrees with the applicant that the evidence submitted by the EUTM proprietor is not sufficient to prove the extent of use of the EUTM in relation to the contested services in Class 41.

In the present case, the EUTM proprietor points out that the evidence relates to the use of the sign in relation to ‘entertainment services’, ‘organization of competitions relating to entertainment’ and ‘organization of facilities for cultural or educational purposes’ in Class 41. However, the EUTM proprietor has not been able to provide any evidence to support this argument or generally to support the extent of use of the EUTM in relation to the contested services in Classes 41. The only evidence submitted which would allow inferring some commercial use of the sign relates to three invoices in Enclosures A8 to A10 for undefined services. The rest of the evidence is merely screenshots and technical information regarding a TV channel (mostly undated). In addition, the submitted evidence does not show any length of use or frequency of use which would compensate any flaw regarding the commercial volume of the use. On the contrary, most of the rest of the documents is undated or dated after the relevant time period. Only the documents submitted as Enclosures A2, A3 and A13 which refer to two events (Cannes 2012 and Cyprus 2013) are dated within the relevant time period. Yet, even without questioning whether the sign ‘Ftv’ has indeed been used as registered in those documents, they only show a very marginal use of the trade mark.

As regards the contested services in Class 42, the Cancellation Division agrees with the applicant that the EUTM proprietor did not furnish any proof of use in relation to such services at all. Moreover, the EUTM proprietor itself does not put forward any argument in relation to the genuine use of the EUTM for services in Class 42. As indicated above, its arguments regard the alleged use of the EUTM in relation to some services in Class 41.

It follows from the above that the EUTM proprietor has clearly failed to prove genuine use of the EUTM in relation to the contested services in Class 41 and 42. The evidence for the extent of use is insufficient because it does not allow the Cancellation Division to conclude that the EUTM proprietor has seriously tried to acquire or maintain a commercial position in the relevant market as opposed to having solely used the mark with the intention of preserving the rights conferred by the mark in the European Union.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested services. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested services namely:

The EUTM remains on the register for all the uncontested goods and services.

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 06/11/2014.

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

Natascha GALPERIN

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.

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