CANCELLATION DIVISION
CANCELLATION No 13489 C (REVOCATION)
“1-2-3 Brille…” GmbH, An der Schelmengaß 19, 78048 Villingen-Schwenningen,
Germany (applicant), represented by Lichtenstein, Körner & Partner mbB,
Heidehofstr. 9, 70184 Stuttgart, Germany (professional representative)
a g a i n s t
Lens Group, Lange Lobroekstraat 41-45, 2060 Antwerp, Belgium (EUTM proprietor)
represented by Markenkontor Meiermarken GmbH, Benzenbergstr. 2, 40219
Düsseldorf, Germany (professional representative).
On 23/11/2017, 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 4 707 204 are revoked in their entirety as from 16/08/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431,
subject to certain transitional provisions. All the references in this decision to the
EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations
currently in force, except where expressly indicated otherwise.
REASONS
The applicant filed a request for revocation of European Union trade mark registration
No 4 707 204 ‘123optic’ (word mark) (the EUTM). The request is directed against all
the goods covered by the EUTM, namely:
Class 5: Cleaning preparations for contact lenses; preparations for the care of
contact lenses; cleaning preparations for spectacle lenses.
Class 9: Cases for contact lenses; contact lenses; storage cases, holders and
insertion and removal devices for contact lenses; ski goggles; eye glasses,
sunglasses and spectacles, parts and fittings for all the aforesaid goods;
eye glass cords; chains for spectacles and for sunglasses; eye protection
wear for sports; spectacles; frames for spectacles and sunglasses; eye
glass cases, chains, cords, frames, holders and mountings; sunglasses;
eye-glass chains; eyeglass cases and sunglass cases; Spectacles (optics).
Decision on Cancellation No 13489 C page: 2 of 7
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
Together with the request for revocation, the applicant does not put forward any
reasoned argument other than referring to the ground for revocation, that is, that the
EUTM has not been put to genuine use for a continuous period of five years.
The EUTM proprietor argues that it is a company with over 10-year operations focusing
on, among others, the online offering of contact lenses and fluids. According to the
EUTM proprietor ‘123optic.com’ is the largest website in Europe offering contact lenses
and fluids. It also refers to the various transfers of the contested trade mark since its
filing. The EUTM proprietor further submits evidence of use. The EUTM proprietor
argues, with respect to the submitted documents, the following:
Items No 1 and No 2 company registration excerpts of the objectives of
company ‘123 optic’ which included the sale of optical products: according to
case-law, use of a company name and/or trade name can be regarded as use
in relation to goods and even to services;
Items No 3 to No 9 extracts of www.123optic.com site from Wayback Machine
at various dates in years 2002 to 2016: they show goods in Classes 5 and 9
such as cleaning preparations for contact lenses, preparations for the case of
contact lenses and contact lenses, eye glasses, sunglasses and spectacles;
Item No 10 Magazine article: it shows that the name ‘123optic’ was used in
relation to contact lenses;
Item No 11 Christmas hat: it shows marketing material with the inscription
‘123optic’;
Item No 12 contact lenses pouch with the inscription 123optic: it shows use of
‘123optic’.
The content of these documents is detailed in the following section.
In its reply, the applicant argues that the EUTM proprietor has not been able to show
the genuine use of the EUTM on the relevant goods in Classes 5 and 9 or on
packaging, catalogues, advertising materials or invoices relating to these goods. The
applicant considers that the objectives of the company ‘123 optic’ (and not, as alleged
by the EUTM proprietor ‘123optic’) are not as such sufficient to show the genuine use
of the contested EUTM. Moreover, it contends that the website www.123optic.com only
shows use of a mark as the name of a store which is not genuine use of the trade
mark. It refers to the Office’s Guidelines in this regard. As regards the use of the trade
mark as a domain name, the applicant argues that it does not identify the products
offered on that website but only identifies such website. The products offered under the
domain name all bear their own mark (Ray Ban, Bausch & Lomb etc.). The applicant
points out that the webpage even indicates that “we guarantee the origin of our
products exclusively coming from official manufacturers/suppliers for each mark”.
Consequently, the evidence only shows that the EUTM has been used for retail
services but not for the registered goods in Classes 5 and 9.
In its rejoinder, the EUTM proprietor insists that, according to constant case-law, use of
a company name and/or trade name can be regarded as use in relation to goods and
even to services. Therefore, the evidence provides proof of use of the name ‘123optic’
for the contested goods.
Decision on Cancellation No 13489 C page: 3 of 7
GROUNDS FOR THE DECISION
According to Article 58(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 Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the
indications and evidence of use must establish the place, time, extent and nature of
use of the contested trade mark for the goods and/or 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 14/08/2006. The revocation request
was filed on 16/08/2016. 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 16/08/2011 to 15/08/2016 inclusive, for the following
contested goods:
Class 5: Cleaning preparations for contact lenses; preparations for the care of
contact lenses; cleaning preparations for spectacle lenses.
Class 9: Cases for contact lenses; contact lenses; storage cases, holders and
insertion and removal devices for contact lenses; ski goggles; eye glasses,
sunglasses and spectacles, parts and fittings for all the aforesaid goods;
eye glass cords; chains for spectacles and for sunglasses; eye protection
wear for sports; spectacles; frames for spectacles and sunglasses; eye
glass cases, chains, cords, frames, holders and mountings; sunglasses;
eye-glass chains; eyeglass cases and sunglass cases; Spectacles (optics).
Decision on Cancellation No 13489 C page: 4 of 7
On 07/12/2016 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:
Item No 1: Excerpt in French from the Belgian Law Gazette (Moniteur Belge) of
10/01/2001 referring to the constitution of the company “123 optic”;
Item No 2: Excerpt in French from the Belgian Law Gazette (Moniteur Belge) of
24/01/2002 referring to the modification of the object of the company “123
optic”. The activities include “all acts of opticians and optometry. That is to say
all acts relating to the retail and wholesale purchase, sale in detail and
wholesale, assembly, advisory services and prescribing of all materials for
optics, optometry, contactology, ocular pathology, ocular pharmacology and
eyewear in general” (translation provided by the EUTM proprietor);
Items No 3 to No 9: extracts from the website www.123optic.com from
Waybackmachine for the following dates: 10/06/2002, 08/04/2004, 12/10/2007,
13/02/2010, 07/062012, 19/05/2014 and 23/08/2016. From the extracts it can
be seen that the website is an online shop (“Welcome in the store 123optic”).
The products on sale are all third-party products (e.g. products from Bausch &
Lomb, Ciba Vision, Cooper Vision, Freshlook, Ray-Ban etc.) and include lenses,
products for lenses and sunglasses. As mentioned by the applicant, the some of
the extracts include the following information: “We guarantee the origin of our
products exclusively coming from officials manufactures/suppliers for each
mark”. None of the products are advertised under the 123optic trade mark;
Item No 10: Extract Magazine “Dossier e-commerce.be” alleged to be of
November 2004 in French. The EUTM proprietor provides a translation of some
parts of the article where the interviewees (from 123optic) indicate that when
the business was started in May 2002 they thought about a mass market
product solid and relatively high value. This is why they got the idea of contact
lenses;
Item No 11: marketing material for Winter 2011: a Christmas hat with the
inscription ‘Joyeux Noel 123optic.com’ on it;
Item No 12: a picture of allegedly “a pouch or a storage device suitable for
contact lenses” ( ) with the inscription 123optic on it. Alleged to
be dated between 2011 and 2014. It is unclear whether the pouch was offered
as a marketing material or not.
Assessment of genuine use – factors
Article 58(1)(a) EUTMR and Article 10(3) EUTMDR 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 in Classes 5 and 9 listed above. They
include preparations for the care of contact lenses, contact lenses and other optical
products. However, as argued by the applicant, the evidence shows that the mark has
been used in relation to retail services of some of these products. Indeed, the evidence
Decision on Cancellation No 13489 C page: 5 of 7
submitted by the EUTM proprietor as Items No 3 to 9 (website extracts) does not
include any indication that the registered goods have been placed on the market under
the contested EUTM. On the contrary, the excerpts from the website
www.123optic.com and the indications in such page clearly show that the commercial
origin of the goods is not ‘123optic’ but third party producers and manufacturers. In
other words, there are indications that the products offered for sale are manufactured
by other companies under their own trade marks (e.g. Ray Ban, Bausch & Lomb, Ciba
Vision). Retail services do not fall within any of the categories for which the earlier mark
is registered. Therefore, the EUTM proprietor has not shown use for the goods for
which the mark is registered, but for other services for which it has no protection.
This is further confirmed by the description of the activities of the company ‘123 optic’
submitted as Items No 1 and No 2. The activities refer to retail and wholesale services
and related consultancy services and not to the manufacturing of the registered goods.
Item No 10 (magazine article) and Item No 11 (Christmas hat) do not provide
information on use in relation to the registered goods. Item No 12 with the image of
allegedly a pouch to store contact lenses may be connected to the registered contact
lenses cases. However, the Cancellation Division considers this use to be mere token
use.
In this connection, the Cancellation Division notes that the submitted evidence not only
fails to show use of the EUTM in relation to the contested goods but in addition, it does
not provide indications as to the extent of the use of the trade mark.
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).
Moreover, 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).
In addition, 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.
In the present case, the EUTM proprietor has not submitted evidence, in connection to
the relevant goods, on the commercial volume, the length and the frequency of use.
One single picture without further supporting evidence is clearly insufficient to consider
that the EUTM has been genuinely used.
In light of the foregoing, the Cancellation Division considers that the submitted
evidence does not sufficiently show that the EUTM proprietor has seriously tried to
acquire or maintain a commercial position in the relevant market. In particular, the
EUTM proprietor has failed to provide examples of invoices for the sale of the goods
under the EUTM or advertising material and catalogues of the relevant products offered
under the EUTM which would allow the Cancellation Division to consider that the
EUTM proprietor has seriously tried to acquire a commercial position in connection to
the relevant goods.
Decision on Cancellation No 13489 C page: 6 of 7
The EUTM proprietor’s argument that use of a company name and/or a trade name
can be regarded as use in relation to the goods and event to services does not call the
above findings into question.
In principle, the use of the sign as a company name or trade name, is not, of itself,
intended to distinguish goods or services. The purpose of a company name is to
identify a company, whereas the purpose of a trade name or a shop name is to
designate a business which is being run. Accordingly, where the use of a company
name, trade name or shop name is limited to identifying a company or designating a
business which is being run, such use cannot be considered as being ‘in relation to
goods or services’ (judgments of 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21;
13/05/2009, T-183/08, Jello Schuhpark II, EU:T:2009:156, § 31-32).
The use of a business, company or trade name can be regarded as use ‘in relation to
goods’ where a party affixes the sign constituting its company name, trade name or
shop name to the goods or even though the sign is not affixed, that party uses that sign
in such a way that a link is established between the company, trade or shop name and
the goods or services (judgment of 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-
23).
As above mentioned, in the present case, the evidence submitted by the EUTM
proprietor does not show use of the sign (company name) affixed to the goods or in
any event, it does not allow the Cancellation Division to draw a link between the
company name and the relevant goods. An overall assessment of the documents only
allows drawing the conclusion that ‘123optic’ is at most an online retailer of contact
lenses, glasses and related products, but that it does not sell the products as
originating from ‘123optic’. Therefore, the EUTM proprietor’s argument should be
dismissed.
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).
It follows from the above that the EUTM proprietor has clearly failed to prove genuine
use, since it has not submitted any evidence of the use in relation to the registered
goods and the extent of use.
As above indicated, in accordance with Article 10(3) EUTMDR, 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 EUTM for the relevant
goods. These requirements for proof of use are cumulative (judgment of 05/10/2010, T-
92/09, STRATEGI, EU:T:2010:424, § 43). This means that the EUTM proprietor is
obliged not only to indicate but also to prove each of these requirements. As the EUTM
proprietor failed to prove the extent of use and the use in relation to the registered
goods, there is no need for the Cancellation Division to further assess the other
requirements (that is, time of use, place of use and use as registered).
Decision on Cancellation No 13489 C page: 7 of 7
Conclusion
It follows from the above that the EUTM proprietor has not proven genuine use of the
contested EUTM for any of the goods for which it is registered. As a result, the
application for revocation is wholly successful and the contested EUTM must be
revoked in its entirety.
According to Article 62(1) EUTMR, the revocation will take effect from the date of the
application for revocation, that is, as of 16/08/2016.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) 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.
The Cancellation Division
Pierluigi M. VILLANI Elisa ZAERA CUADRADO Ana MUÑIZ RODRÍGUEZ
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 Article 109(8) EUTMR, 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 (Annex I A(33)
EUTMR) has been paid.