CANCELLATION No 13 742 C (REVOCATION)

Fashion TV Brand Holdings C.V., Keizersgracht 62, 1015 CS Amsterdam, The Netherlands (applicant),

a g a i n s t

Nici GmbH (EUTM proprietor), Langheimer Str. 94, 96264 Altenkunstadt, Germany represented by Heinrich Partner Rechtsanwälte, Hanauer Landstr. 126-128, 60340 Frankfurt am Main, Germany (professional representative).

On 01/03/2017, 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 5 969 787 are revoked in their entirety as from 14/09/2016.

3.        The EUTM proprietor bears the costs, fixed at EUR 630.

REASONS

The applicant filed a request for revocation of European Union trade mark No 5969 787 ‘EMILY’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 3:         Soaps; Perfumery goods; Essential oils, cosmetics, hair lotions; Dentifrices.

Class 9:         Magnetic data carriers, recording discs.

Class 14:         Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments.

Class 20:         Furniture, mirrors, picture frames; Goods, included in class 20, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21:        Combs and sponges; Brushes and paintbrushes (other than for painting).

Class 24:         Textiles and textile goods (included in class 24); Bed and table linen.        

Class 27:         Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; Wall hangings (non-textile).

Class 28:         Gymnastic and sporting articles, included in class 28; Decorations for Christmas trees.

Class 29:        Meat, fish, poultry and game; Meat extracts; Frozen, preserved, dried and cooked fruits and vegetables; Jellies; Jams, compotes; Eggs, milk and milk products; Edible oils and fats.

Class 30:         Sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals; Bread, pastry and confectionery, ices; Honey, treacle; Yeast, baking-powder, salt, mustard, vinegar, sauces (condiments); Spices, ice.

Class 32:         Beers; Mineral and aerated waters; Fruit juices; Syrups and other preparations for making beverages.

Class 35:         Advertising; Business management; Business administration; Office functions.

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 14/04/2011. The revocation request was filed on 14/09/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 27/09/2016, 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 07/01/2017.

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 or 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 14/09/2016.

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. In the present case the applicant did not appoint a representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Claudia SCHLIE

Raphaël MICHE

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 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).