CANCELLATION DIVISION
CANCELLATION No 12 468 C (REVOCATION)
Names and Domains Limited, 28 Ely Place, 3rd Floor, London EC1N 6TD, United
Kingdom (applicant)
a g a i n s t
Q-Validus Limited, NovaUCD, Belfield Innovation Park, University College Dublin,
Belfield, Dublin 4, Ireland (EUTM proprietor), represented by FRKelly, 27 Clyde Road
Ballsbridge, Dublin 4, Ireland (professional representative).
On 28/11/2017, 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
7 263 643 are revoked in their entirety as from 03/02/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 700.
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have been repealed and replaced by Regulation (EU) No 2017/1001 (codification)
(‘EUTMR’), Delegated Regulation (EU) No 2017/1430 (‘EUTMIR’) and Implementing
Regulation (EU) No 2017/1431 (‘EUTMDR’), 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
On 03/02/2016, the applicant filed a request for revocation of European Union trade
mark registration No 7 263 643 (the contested EUTM), filed on 26/09/2008 and
registered on 23/06/2009, for the figurative sign below:
The request is directed against all the goods and services covered by the contested
EUTM, namely:
Class 16: Printed publications; books; newsletters; magazines; training manuals;
stationery; diaries; instructional and training manuals.
Decision on Cancellation No 12 468 C Page: 2 of 8
Class 41: Education and training; certification of education and training; examination
services; arranging and conducting of seminars, lectures, conferences and
workshops; instruction, training and testing in computer and information
technology skills.
Class 42: Certification services.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant alleges that the EUTM had not been put to genuine use in the EU
territory during a continuous period of five years in connection with the above goods
and services for which it is registered in Classes 16, 41 and 42.
After an initial extension of the time limit, the EUTM proprietor submitted evidence of
use of the contested EUTM which will be analysed in detail in the following section.
In its response, the proprietor argues that its company was established in 2007 and is
recognised as one of the most innovative players in the certification solutions sector. In
particular, the proprietor maintains that ‘Computer Wings’ is a vocational or role-based
progressive skills programme consisting of ten standalone modules, enabling
candidates to demonstrate modern, progressive computer skills to enhance their career
prospects. According to the proprietor, ‘Computer Wings’ is for organisations and
candidates seeking to develop new skills such as Project Management, e-Marketing,
Search Engine Optimisation, Web Creation and Web Analytics techniques using
computer applications such as MS Project, Visio, Publisher, Dreamweaver, Google
Analytics and Ad Words. In the proprietor’s view, the mark had also been used for
printed publications and training manuals which supported its educational and
certification services. These publications were published and distributed in Ireland, UK
and throughout the rest of the world and are also available to purchase on
‘amazon.com’.
In its reply, the applicant contests the probative value of the proprietor’s evidence and
states that such evidence is insufficient to show genuine use of the contested EUTM
for the relevant goods and services. The applicant notes that the documents submitted
refer to the period preceding the relevant time-frame since the most recent indication of
use is dated in the years 2009-2010. According to the applicant, the articles furnished
by the proprietor show that the proprietor provided a course under the mark at a
Scottish education institute (Coatbridge College). However, the supply of services to
one college in Scotland is not sufficient to satisfy the threshold of genuine use in the
Union.
Moreover, the applicant points out that, although it seems that the proprietor’s
publication was published in 2009, the extracts from the ‘Amazon’ website show no
price for these publications and contain no indication suggesting that they were sold
within the Union.
The EUTM proprietor did not submit any observations in reply.
Decision on Cancellation No 12 468 C Page: 3 of 8
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).
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 23/06/2009. The revocation request
was filed on 03/02/2016. 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 03/02/2011 to 02/02/2016 inclusive, for the following
contested goods and services:
Class 16: Printed publications; books; newsletters; magazines; training manuals;
stationery; diaries; instructional and training manuals.
Class 41: Education and training; certification of education and training; examination
services; arranging and conducting of seminars, lectures, conferences and
workshops; instruction, training and testing in computer and information
technology skills.
Class 42: Certification services.
On 02/08/2016 the EUTM proprietor submitted the following evidence as proof of use:
Exhibit CW1: Extracts from the ‘ICANN Whois’ website showing details of the domain
name ‘computerwings.com’ which was created on 08/10/2007 and lastly updated on
09/08/2015.
Decision on Cancellation No 12 468 C Page: 4 of 8
Exhibit CW2: Extracts from the website www.computerwings.com extracted by the
internet archive ‘Wayback Machine’ and showing the contents of the website on
07/02/2011, 27/02/2012, 28/08/2013, 17/03/2014, 17/12/2014.
Exhibit CW3: Extracts from the following websites:
www.siliconrepublic.com featuring an article of 31/03/2009 entitled “Dublin-based
Q-Validus collaborates with Scottish Qualifications Authority”. The article refers to
‘Computer Wings’ as “a computer skills training and certification programme”;
www.irishdev.com featuring an undated article stating that the proprietor “has
launched a new and practical computer skills certification programme in
Coatbridge College, Glasgow, which is the first authorised Computer Wings Centre
in the UK”;
www.ucd.ie featuring an article of 31/03/2009 referring to a formal relationship
between the proprietor and the Scottish Qualifications Authority (SQA) regarding
inter alia use of the proprietor’s programme ‘Computer Wings’;
www.sqa.org.uk featuring an undated article entitled “Coatbridge students gain
their Computer Wings” referring to ‘Computer Wings’ as a course devised by the
proprietor and endorsed by Scottish Qualifications Authority (SQA);
www.rte.ie featuring an article of 01/04/2009 entitled “Q-Validus announces link-up
with SQA” referring to Computer Skills as “a computer skills training and
certification programme”;
www.bcs.org featuring an article of August 2009 entitled “The Celtic Tiger prepares
to pounce back” and referring to the sign ‘Computer Skills’ as “a training and
certification programme”;
www.computescotland.com featuring an article of 01/04/2009 entitled “Q-Validus
collaborates with Scottish Qualifications Authority” referring to ‘Computer Skills’ as
“a computer skills training and certification programme”;
www.ucd.ie featuring an article of 07/10/2009 referring to an article entitled “Q-
Validus Officially Launches Computer Wings® in the UK Market”;
Exhibit CW4: A printout from www.amazon.com showing a book entitled “Computer
Wings – Diagram Maker Training Manual – February 1, 2009” on sale. No reviews or
price appear on the webpage. The printout is further accompanied by a few extracts
from the book.
Assessment of genuine use
In accordance with Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR,
the indications and evidence required in order to provide proof of use shall consist of
indications concerning the place, time, extent and nature of use of the contested EUTM
for the relevant goods and services.
Decision on Cancellation No 12 468 C Page: 5 of 8
The Court has held that there is ‘genuine use’ of a mark where it 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 does not include token use for the sole purpose of
preserving the rights conferred by the mark. Furthermore, the condition of genuine use
of the mark requires that the mark, as protected in the relevant territory, be used
publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145; and
12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
In its statement, the EUTM proprietor argues that the evidence demonstrates use of the
mark in connection with the contested goods and services within the relevant territory,
in particular in Ireland and in the UK. The documentation provided includes: ‘Whois’
details of the proprietor’s website (Exhibit CW1); extracts from an internet archive
showing the content of the proprietor’s website between 2011 and 2014 (Exhibit CW2);
articles published on different websites in 2009 (Exhibit CW3); a printout from the
‘Amazon’ website featuring a proprietor’s publication (Exhibit CW4).
The evidence must prove that the mark has been used in an outward manner for the
goods and services protected within the relevant period and must consist of solid and
objective evidence of effective and sufficient use (18/01/2011, T-382/08, Vogue,
EU:T:2011:9, § 22).
The documentation provided shows that the Irish company Q-Validus Limited (the
proprietor) is an international certification solution provider, founded in 2007, which
launched, among others, a computer skills training and certification programme under
the name ‘Computer Wings’. In 2009 the ‘Computer Wings’ programme was endorsed
by the Scottish Qualifications Authority (‘SQA’ – the Scottish national body responsible
for the development, accreditation, assessment and certification of qualifications other
than degrees) and adopted by the Coatbridge College in Scotland. All these facts are
corroborated by articles published on Irish and UK websites (Exhibit CW3). However,
as the applicant rightly noted, these articles, except two of them that bear no date,
were published in 2009 and, therefore, precede the relevant time-frame for showing
genuine use of the EUTM, which is from 03/02/2011 to 02/02/2016 inclusive.
Evidence referring to use outside the relevant period must be disregarded unless it
contains conclusive indirect proof that the mark must have been genuinely used during
the relevant period as well. Events preceding or subsequent to the relevant period may
make it possible to confirm or assess more accurately the extent to which the mark was
used during the relevant period (27/01/2004, C-259/02, Laboratoire de la mer,
EU:C:2004:50).
In the present case, however, the Cancellation Division finds that there is no document
on file which is capable to throw any light on the genuine use of the mark within the
relevant five-year period.
In particular, the only evidence referring to the relevant period consists of extracts from
the internet archive ‘Wayback Machine’ showing the content of the website
www.computerwings.com (Exhibit CW2). Printouts of webpages, however, are not
conclusive evidence and, although they display general information on the proprietor’s
activities under the EUTM, they contain no reference regarding the extent of use of the
sign, i.e. commercial transactions. In addition, these extracts directly emanate from the
EUTM proprietor itself and their mere existence does not establish that goods and
services were marketed under the contested mark.
Decision on Cancellation No 12 468 C Page: 6 of 8
The remainder of the proprietor’s documentation consists of ‘Whois’ details of its
website (Exhibit CW2) and of an undated printout from the ‘Amazon’ website featuring
a manual of the ‘Computer Wings’ programme (Exhibit CW4). As for the ‘Whois’ details
of the proprietor’s website, besides providing the date of creation of the website (2007),
it contains no indication on use of the mark in the relevant market. As regards the
printout from the ‘Amazon’ website, it shows that a book bearing the sign ‘Computer
Wings’ and published in 2009 was put on sale online, but, again, there is no proof
neither of actual sale or distribution of the book among the relevant public. Further, no
review on the book was posted by the ‘Amazon’ users.
The requirement of extent of use implies that the onus is on the proprietor to furnish
sufficient indications concerning the commercial volume obtained using the mark, to be
evaluated in the light of the length of the period during which the mark was used and
the frequency of use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 41; and
08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). In addition, “the smaller the
commercial volume of the exploitation of the mark, the more necessary it is for the
party opposing new registration to produce additional evidence to dispel possible
doubts as to its genuineness” (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 37).
It follows from the above that, while the articles provided show that in 2009, namely
before the relevant period, the proprietor launched its ‘Computer Wings’ programme in
Scotland, the evidence, as a whole, is not sufficient to demonstrate presence of the
contested EUTM on the EU market between 03/02/2011 and 02/02/2016. In particular,
neither of the extracts from the webpages provides any evidence of the extent of use of
the mark. The EUTM proprietor did not furnish any additional information regarding
these sites, such as for example the amount of hits achieved per month and the
location of the visitors of the website, and simple printouts from online pages are “not
able to prove use of a mark for certain goods without complementary information as to
the actual use of the Internet site by potential and relevant consumers or
complementary advertising and sales figures regarding the different goods” (decision of
the Board of Appeal 20/12/2011, R 1809/2010-4, Sharpmaster / Sharp, – ‘Coast’, § 33).
The factors of time, place, extent and nature of use are cumulative (05/10/2010, T-
92/09, STRATEGI, EU:T:2010:424, § 43). This means that the evidence must provide
sufficient indication of all these factors in order to prove genuine use. Failure to fulfil
one of the conditions is sufficient and, as time and extent of use have not been
established, it is not necessary to enter into the other requisites.
Finally, for the sake of completeness, while part of the evidence referred to use of the
sign for services related to education and training, the EUTM proprietor has not
submitted any evidence establishing use of the mark in connection with the other
goods and services in Classes 16, 41 and 42. Furthermore, the proprietor’s
observations do not offer any reasons for non-use with respect to these goods and
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).
Decision on Cancellation No 12 468 C Page: 7 of 8
Genuine use of a trade mark cannot be proved by means of probabilities or
suppositions, but has to be demonstrated by solid and objective evidence of effective
and sufficient use of the trade mark on the market concerned (08/07/2010, T-30/09,
Peerstorm, EU:T:2010:298, § 29).
Having regard to the findings made above, it must be held that, considered as a whole,
the various pieces of evidence adduced by the EUTM proprietor before the
Cancellation Division are not sufficient to prove that the contested mark has been put
to genuine use in European Union during the relevant period.
As such, the extracts from the proprietor’s website, the ‘Whois’ details on this website
and the printout from the ‘Amazon’ website do not provide any information on the
quantity of products and services actually sold under the EUTM, thus the commercial
extent of use.
Although there are articles showing that activities under the mark were carried out
using the sign in connection with IT courses, these articles were dated before the
beginning of the relevant period and, as seen above, they were not supported by any
relevant document falling within the relevant time-frame.
Taking all of the above circumstances and considerations into account, the
Cancellation Division finds that the evidence submitted by the EUTM proprietor is
clearly insufficient, viewed as individual items and globally, to prove the necessary time
and extent of use for services related to education and training.
As regards the remaining goods and services in Classes 16, 41 and 42, it suffices to
say that none of the evidence submitted by the EUTM proprietor relates to them.
Conclusion
It follows from the above that the EUTM proprietor has not proven genuine use of the
contested EUTM for any of the goods and services 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 03/02/2016.
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.
Decision on Cancellation No 12 468 C Page: 8 of 8
The Cancellation Division
Michaela SIMANDLOVA Pierluigi M. VILLANI María Belén
IBARRA DE DIEGO
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.