CANCELLATION DIVISION
CANCELLATION No 11 868 C (REVOCATION)
Ockerton Ltd., 10 Monks Horton Way, St. Albans AL1 4HA, Hertfordshire, United
Kingdom (applicant), represented by CMS Cameron McKenna Nabarro Olswang
LLP, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional
representative)
a g a i n s t
Rose Bikes GmbH, Schersweide 4, 46395 Bocholt, Germany (EUTM proprietor),
represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf,
Germany (professional representative).
On 30/11/2017, the Cancellation Division takes the following
DECISION
1. The application for revocation is rejected in its entirety.
2. The applicant bears the costs, fixed at EUR 450.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 5 981 162 ‘Team’ (word mark) (the EUTM). The request is directed against all the
goods covered by the EUTM, namely
Class 12: Bicycles and individual parts therefor.
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the mark was not put to genuine use for a continuous period
of five years.
The EUTM proprietor submits evidence of use (listed below) and argues that the
evidence demonstrates genuine use of the mark for all the registered goods. It points
out that the mark has not always been used on a standalone basis but together with
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other marks; however, this is not an obstacle of genuine use. It submits examples of
use of trade marks on bicycles of other producers to show that this is a common
practice in the field.
The applicant argues that the voluminous evidence submitted by the EUTM proprietor
does not prove use of the mark, that no specific arguments were made as to how the
documents show use and that such a manner of submitting documents is not
acceptable. Moreover, most of the evidence is not in the language of the proceedings.
As regards the evidence itself, the applicant emphasizes that the mark has not been
used on its own but ‘buried’ among other more distinctive elements. The mark is not
even used in a prominent position among those other elements but it is hidden among
them. According to the applicant, due to the manner of use of the sign by the EUTM
proprietor, the consumers will refer to the goods by the EUTM proprietor’s house mark
‘ROSE’ but not by the contested mark. It submits Google results for a search for the
word ‘team’ in relation to bicycles to show that other producers are using this word in a
non-distinctive way. Furthermore, the applicant extensively criticises the individual
pieces of evidence arguing that some of them are not translated into the language of
the proceedings, some of them do not cover the entire relevant period, some of them
are of limited probative value, they do not cover sufficient territory or that there is no
proof that the documents (such as articles or advertisements in magazines) were
actually circulated and that they do not prove sufficient extent of use. Overall, the
applicant insists that the mark should be revoked.
The EUTM proprietor argues that it has no obligation to provide translations of
evidence which is self-explanatory unless the Office requests such translation, which
did not happen in the present case. It reiterates its previous arguments that it is not
obligatory to use the mark on its own. It argues that it uses the mark together with other
marks such as the house mark of the EUTM proprietor ‘ROSE’ or other marks. The
additional trade marks do not alter the distinctiveness of the contested mark. It claims
that the mark is not weak in relation to the goods for which it is used as it is not clear
what the word ‘Team’ means in relation to the goods. It concludes that the evidence
shows use of the sign as a trade mark. As regards the criticism of the individual
documents, the EUTM proprietor reminds that the evidence must be assessed as a
whole. It submits further documents in reaction to the observations made by the
applicant. It concludes that the evidence sufficiently shows time, place, extent and
nature of use of the contested mark and that the application should be rejected.
The applicant was invited by the Office to comment on the additional evidence
submitted by the EUTM proprietor but it did not file any further observations.
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).
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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 08/05/2008. The revocation request
was filed on 02/10/2015. 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 02/10/2010 to 01/10/2015 inclusive, for the following
contested goods:
Class 12: Bicycles and individual parts therefor.
On 05/01/2016 the EUTM proprietor submitted the following evidence as proof of use:
Affidavit of Thorsten Heckrath-Rose, one of the proprietor’s managing directors,
dated in 2015, stating that the EUTM proprietor company was founded in 1907
and has since then grown to a company with almost 350 employees. The
company sells bicycles in two shops in Germany, online and at bike events.
Until 2010 bicycles under the mark ‘Team’ were sold in Germany and since then
also in many other EU countries. The affidavit contains a table showing the
numbers of goods sold, to which countries and for what turnover. The number
of products sold range from a few dozens in 2010 to nearly two thousand in
2015 with turnover of nearly three million Euros. The company promotes its
products by distributing catalogues and customer magazines and by placing
advertisements in bicycle magazines.
Copies of some pages of the EUTM proprietor’s catalogues for years 2010,
2013, 2014 and 2015. The catalogues are in German and show bicycles and
their parts or accessories. While the mark ‘TEAM’ is often used on the products
and in the catalogues together with many other words, acronyms or letter and
number combinations, there are instances where the mark alone or almost
alone is clearly used to designate the product. For example, in some of the
catalogues, a model of bicycle TEAM AL is mentioned within the text and the
model TEAM AL is presented on individual pages where these words are also
clearly visible on the bicycle frame. On the following pages, detailed technical
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information (among others that the frame is made of aluminium) is presented for
the models TEAM AL-1000, TEAM AL-800, TEAM AL-700 etc. The words ‘al
team’ are clearly visible on the frame of the bicycles, although it is true that
other words are also displayed in different parts of the frame, mainly the words
‘RED BULL’. On the pages where the ‘team’ bicycles are presented, the
products are referred to as ‘TEAM AL (+the number)’ also in the presentations
of the models and at the bottom of the pages. In other catalogues the models
‘XEON CW TEAM’, ‘XEON TEAM CGF’, ‘XEON TEAM GF’ and ‘X-LITE TEAM’
are presented, with these words visible on the frame, while other words are also
displayed on the frame, this time mainly ‘ROSE’.
Copies of several pages of the EUTM proprietor’s magazine Cycle Stories,
dated in 2014, in which the models mentioned in the catalogues are displayed.
Copies of some pages of the German bicycle catalogue Workshop Bikes, Parts
& Zubehör 2010 in which some of the models mentioned in the catalogues are
displayed. Other models that appear in the catalogues are for example ‘RED
BULL RED NOSE WPS AM-200’, ‘RED BULL AL-300 FACTORY’, ‘RED BULL
ZEON X-LITE 900’ etc.
Copies of articles from various bicycle magazines (4 for bicycle, Tecnica prova
Strada, RoadBIKE, TOUR, Fiets and Bicycling) dated in 2014 and 2015 in
which some of the models shown in the catalogues are displayed and
described, among other bicycle models. The magazines are in German, Italian
and Dutch.
Very numerous copies of advertisements in magazines (French, Italian,
German, Spanish and Danish) for the EUTM proprietor’s bicycles, namely for
some of the models presented in the catalogues, dated between 2013 and
2015.
Screenshots from websites where users give reviews of some of the bicycle
models described in the catalogues, dated in 2014 and 2015.
Numerous invoices addressed at customers in Germany, the Netherlands,
Finland, Spain, Belgium, Poland, Italy, United Kingdom dated between 2010
and 2015, for products such as ‘RED BULL MTB HT 10 Team AL-600’, ‘RED
BULL MTB HT 10 Team AL-500’, ‘RED BULL TEAM AL-500, ‘ROSE RR 15
Xeon Team CGF-3000’, ‘Rose RR 13 Xeon CW Team 8800’, ‘Rose RR 15 X-
Lite Team’ etc.
Screenshots from the EUTM proprietor’s website showing models of bicycles
for sale that do not include the contested mark in their names.
Screenshots from websites of other bicycle producers submitted to demonstrate
that it is common in the field of bicycles to use more than one trade mark on the
products.
On 27/09/2016 the EUTM proprietor, following the criticism of the documents by the
applicant, submitted further evidence.
In the present case, the issue of whether or not the Office may exercise the discretion
conferred on it by Article 95(2) EUTMR to take into account the additional evidence
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submitted on 27/09/2016 can remain open, as the evidence submitted within the time
limit is sufficient to prove the required genuine use of the contested trade mark, as will
become evident from the assessment that follows.
The applicant argues that the EUTM proprietor did not submit translations of some of
the evidence of use and that, therefore, this evidence should not be taken into
consideration. However, the EUTM proprietor is not under any obligation to translate
the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) of
Regulation (EC) No 2868/95, applicable to the present proceedings and by analogy to
cancellation). Taking into account the nature of the documents which have not been
translated and are considered relevant for the present proceedings, in particular the
catalogues, the magazines excerpts and the invoices, and their self-explanatory
character, the Cancellation Division considers that there is no need to request a
translation.
Assessment of genuine use – factors
Nature of use
The main argument of the applicant is that the mark was not used as a trade mark
and/or not used as registered because it was not used on a standalone basis but
together with many other verbal and numeric elements, among which the mark is not
prominent but rather hidden. Given the low distinctiveness of the word ‘Team’ in relation
to bicycles, the use of the mark as shown by the EUTM proprietor does not constitute
use of the mark as a trade mark as consumers would not refer to the goods as ‘Team’
but by other more distinctive and more prominently displayed verbal elements.
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. Nature
of use in the context of Article 10(3) EUTMDR further requires evidence of use of the
mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a) EUTMR,
does not alter the distinctive character of the contested European Union trade mark.
It is true that the mark is rarely used by itself in the evidence. However, as the EUTM
proprietor correctly reminds, several signs may be used simultaneously without altering
the distinctive character of the registered sign (08/12/2005, T-29/04, Cristal
Castellblanch, EU:T:2005:438, § 34). There is no legal precept in the European Union
trade mark system that obliges the opponent to provide evidence of the earlier mark
alone when genuine use is required within the meaning of Article 47 EUTMR. Two or
more trade marks may be used together in an autonomous way, or with the company
name, without altering the distinctive character of the earlier registered trade mark (T-
463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict
independent marks in different sizes and typeface, so these clear differences, which
emphasise the house mark, indicate that two different marks are used jointly but
autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO,
§ 42). The Court has confirmed that the condition of genuine use of a registered trade
mark may be satisfied both where it has been used as part of another composite mark
or where it is used in conjunction with another mark, even if the combination of marks
is itself registered as a trade mark (18/04/2013, C-12/12, SM JEANS/LEVI‘S,
EU:C:2013:253, § 36.).
The applicant argues that the mark is not displayed on a prominent position within the
other elements used, that it is ‘hidden’ among the other elements, that the goods will
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not be referred to by the mark but by the other, more distinctive and prominent words. It
also argues that the word ‘Team’ is used in a non-distinctive manner in relation to the
goods.
The Cancellation Division notes that it is common in some market areas, in particular in
the field of vehicles, for goods to bear not only their individual mark, but also the mark
of the business or the main product group (‘house mark’). In the present case, the
EUTM proprietor markets many different models of bicycles and has several house
marks or ‘main’ marks which are used together with the specific marks that distinguish
the different models sold under those house marks. Such a house mark or ‘main’ mark
could be the word ‘ROSE’, ‘RED BULL’, ‘XEON’ etc. It is clear from the catalogues that
those are the words prominently displayed on the frame of the bicycles. However, this
does not mean that the mark ‘Team’, which is clearly used to differentiate one such
sub-model, is not used as a trade mark when used together with those ‘main’ marks.
By way of example, in the early catalogues the bicycles ‘RED BULL’ are presented and
the model ‘Team’ is clearly one of the models (as seen in different catalogues and
magazines, there were also other ‘RED BULL’ models marketed, for example ‘RED
NOSE’). The specific bicycles ‘Team’ are presented, displayed and described in detail
in the catalogues. The fact that the word ‘Team’ is followed by the acronym ‘AL’ does
not change the distinctiveness of the mark ‘Team’ as this is an indication that the frame
is made from aluminium and it is descriptive. The different number combinations that
follow the words ‘TEAM AL’ are there to differentiate between the models with different
characteristics and different price levels. The word ‘TEAM’ is clearly visible on the
frame of the bicycles. These models are also described as, for example, ‘RED BULL
MTB HT 10 Team AL-600’ in the invoices corresponding to the time in which the
catalogues with these models were distributed. ‘RED BULL’ is clearly the ‘main mark’ of
the bicycle followed by some more or less descriptive elements such as ‘MTB’
(mountain bicycle), ‘HT’ (hardtail) and by the word ‘Team’ which does not describe any
characteristic of the product but it is the trade mark name of the specific model.
Especially when read together with the catalogues where the mark ‘Team’ is,
independently of any other words, used as a trade mark to give a name to a line of
models, there is no possible interpretation in which the word ‘team’ would be used
descriptively or not as a trade mark.
The same situation exists with the later models such as ‘XEON Team’ or ‘X-LITE
TEAM’. These words are used on the frame of the bicycles together with the main mark
‘ROSE’ and with other more or less descriptive elements. The element ‘X-LITE’ itself
indicates that the bicycle is extra light. These models are again present in the invoices
corresponding to the time in which catalogues with these models were distributed.
The applicant argues that the mark is not used in a distinctive manner but does not
develop this argument or explain in what way the mark is non-distinctive. The manner
in which the mark is used does not suggest that the bicycles are some type of ‘team’
bicycles as opposed to ‘individual’ bicycles or that they are to be used by any team. It is
clearly used to designate a specific model of bicycles marketed under another house
mark.
The question whether or not consumers will refer to the product by the house mark or
by the specific model name depends rather on the context in which the consumers
refer to the products, similarly as for example in the car industry. If the consumers
discuss the bicycle trade marks on a general level, they may only use the house marks
but if they want to mention the specific models, they will surely need to mention the
contested mark. This issue is in any case irrelevant for the assessment of use of the
mark.
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Finally, the applicant submits Google search results to prove that other producers use
the word ‘team’ on bicycles in a descriptive manner. From these results it is not,
however, clear that ‘team’ is used in a non-distinctive manner on those bicycles but,
rather, it shows that three other bicycles marks (Nukeproof, Barracuda and Merida)
use, similarly as the EUTM proprietor, several words to label their bicycles and the
word ‘team’ is one of them. However, it is still not clear what characteristics of the
bicycle should this word in fact describe. Rather, it seems that those producers use the
word, similarly as the EUTM proprietor, to designate specific line of models of their
products.
Overall, it is clear from the evidence that the mark ‘Team’ is indeed used together with
other marks to indicate specific lines of models, as is common in case of vehicles in
general, and together with descriptive indications. At the same time, it is not used in a
descriptive or non-distinctive manner itself. Neither of this alters the mark’s distinctive
character but rather constitutes use of several trade marks together with additions of
descriptive elements. It is an acceptable use of the sign as a trade mark and it is in
compliance with Article 18 EUTMR.
Therefore, nature of use was sufficiently shown.
Further factors
Furthermore, the applicant argues that not all the items of evidence indicate genuine
use in terms of time, place, extent, nature and use for the goods for which the EUTM is
registered.
The applicant’s argument is based on an individual assessment of each item of
evidence regarding all the relevant factors. However, when assessing genuine use, the
Cancellation Division must consider the evidence in its entirety. Even if some relevant
factors are lacking in some items of evidence, the combination of all the relevant
factors in all the items of evidence may still indicate genuine use.
Time of use
The evidence must show genuine use of the European Union trade mark within the
relevant period.
The vast majority of the evidence, in particular the invoices, the catalogues and the
excerpts from magazines, is dated within the relevant period. Therefore, the time of use
was sufficiently demonstrated.
Place of use
The evidence must show that the contested European Union trade mark has been
genuinely used in the European Union (see Article 18(1) EUTMR and Article 58(1)(a)
EUTMR).
The use was concentrated in Germany, as can be inferred from the addresses of the
majority of the clients in the invoices, the majority of magazine excerpts and the
catalogues. However, it is clear that the mark was well used also in many other EU
countries. The invoices are also addressed at clients in countries such as the
Netherlands, Finland, Spain, Belgium, Poland, Italy or United Kingdom, the mark was
advertised also in French, Italian, German, Spanish, and Danish magazines and
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products under the mark were mentioned in Italian and Dutch magazines. All these
documents support the statements made in the affidavit that the products under the
contested mark have been sold to many different countries in the EU. Overall, the
place of use was satisfactorily proven.
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 invoices show big frequency of use over the entire five-year relevant period.
Considering that the goods are rather specific and rather expensive bicycles (prices of
different models range from around EUR 1 000 to around EUR 5 000), lesser absolute
amounts of products sold are natural. Sales of the products were supported by rather
intensive advertising in specialised magazines and the products even appeared in
bicycle magazines among other goods therein described. The use was thus long-term,
regular and frequent, with a sound intensity. Overall, the evidence demonstrates
beyond any doubt that the use of the mark was genuine, in other words, that it was
made with the intention to create and maintain an outlet for the goods.
Use in relation to the registered goods and services
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 bicycles and individual parts therefor. The
evidence shows that the mark has been used for these goods. All of the evidence
refers to bicycles and although their individual parts cannot be specifically identified in
the invoices, they are presented in the catalogues and offered for sale. Some of the
advertisements even announce the possibility of ‘creating your own bike’. It is clear that
the EUTM proprietor also offers individual parts of bicycles for sale, which is a common
practice of producers of specialised bicycles. Moreover, in its judgment of 14/07/2005,
T-126/03, Aladin (EU:T:2005:288) the Court stated that allowing an earlier trade mark
to be deemed to be registered only in relation to the part of the goods or services in
respect of which genuine use has been established … must be reconciled with the
legitimate interest of the proprietor in being able in the future to extend his range of
goods or services, within the confines of the terms describing the goods or services for
which the trade mark was registered, by using the protection which registration of the
trade mark confers on him.
In the present case, the evidence shows that bicycles were offered and actually sold
under the mark and individual parts of them were also offered for sale. Considering all
the above, it is concluded that the EUTM proprietor has shown genuine use for all the
goods for which the mark is registered.
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
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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 was demonstrated that the mark had been used in relation to all the contested goods
during the relevant period in the relevant territory to an extent sufficient to indicate that
the use was genuine. It was used as a trade mark and in a form not altering the
distinctive character of the mark as registered. Considering all the above, the
Cancellation Division concludes that the evidence, as a whole, is sufficient to
demonstrate that the contested mark was genuinely used during the relevant period in
the relevant territory for the abovementioned goods.
It follows from the above that the application for revocation must be rejected as
unfounded.
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 applicant is the losing party, it must bear the costs incurred by the EUTM
proprietor in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be
paid to the EUTM proprietor are the representation costs, which are to be fixed on the
basis of the maximum rate set therein.
The Cancellation Division
María Belén
IBARRA DE DIEGO
Michaela SIMANDLOVA Carmen SÁNCHEZ
PALOMARES
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
Decision on Cancellation No 11 868 C page: 10 of 10
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.