CANCELLATION No 11370 C (REVOCATION)

 

American Franchise Marketing Limited, 3rd floor, 207 Regent Street, London W1B 3HH, United Kingdom (applicant)

 

a g a i n s t

 

Balwinder Singh Thukral, 105 Leamington Road, Coventry CV3 6GQ, United Kingdom (EUTM proprietor), represented by Withers & Rogers LLP, 4 More London Riverside, London SE1 2AU, United Kingdom (professional representative).

 

On 11/01/2017, 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 4 392 411 are revoked in their entirety as from 06/08/2015.

 

3.        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 4 392 411 “NASHA” (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely

 

Class 16:        Printed matter; printed publications; periodicals publications; books; magazines, newspapers; news sheets; publicity material, catalogues, guides, brochures, printed programmes, publications; posters; calendars, carrier bags of paper, card or plastic; wrapping and packaging materials, gift boxes; photographs; pictures, prints; gift vouchers.

 

Class 18:        Goods made of leather or imitation leather; articles of luggage; trunks, bags, traveling bags, handbags, cases, briefcases, rucksacks, haversacks, knapsacks, wallets, purses and card holders; key holders; key fobs; beach bags, sport bags, flight bags; umbrellas, golf umbrella; parasols and walking sticks; parts and fittings for all the aforesaid goods; leather and imitation leather not included in other classes.

 

Class 25:        Clothing, footwear and headgear; sports, casual fashion.

 

Class 32:        Beer, ale, porter, lager and stout; mixtures containing beer, ale, porter, lager and stout shandy, de-alcoholised drinks, non-alcoholic beers and wines non-alcoholic beverages; fruit drinks, fruit juices and vegetable juices; mineral and aerated waters; water; spring water; soft drinks, sparkling drinks; carbonated and sparkling waters, flavoring and unflavored bottled waters; soda beverages; syrups and other preparations for making beverages.

 

Class 33:        All alcoholic beverages (except beers); also wines, spirits and liqueurs; alco pops.

 

Class 35:        Promotional, advertising, marketing and publicity services; advertising and promotion of events, trade fairs, activities and sporting activities; retail sale of beer, ale, porter, lager and stout, mixtures containing beer, ale, porter, lager and stout shandy, de-alcoholised drinks, non-alcoholic beers and wines non-alcoholic beverages, fruit drinks, fruit juices and vegetable juices, mineral and aerated waters, water, spring water, soft drinks, sparkling drinks, carbonated and sparkling waters, flavoring and unflavored bottled waters, soda beverages, syrups and other preparations for making beverages, all alcoholic beverages (except beers), also wines, spirits and, liqueurs, alco pops, advertising services, consultancy and information services relating to the rental and sale of advertising space; television and radio advertising; business administration; databases management; compilation and dissemination of business directories and customer listings; compilation of advertisements for use as web pages; database management of food and drink industry; compilation, storage, analysis and retrieval of information relating to food and drink industry.

 

Class 41:        Nightclub and discotheque services; dance club services; provision of live entertainment and recorded entertainment; sports, cinematic and video entertainment services; entertainment, education and instruction services relating to radio and television; production, presentation of television and radio programmes and of films, sound and video recordings; publishing services; production and rental of educational and instructional materials; organisation of parties and competitions, games and sporting events; musical entertainment; fashion shows; exhibitions, activities; provision of leisure and recreation facilities, amusement services.

 

Class 43:        Catering services; coffee bar services, sandwich bar services, cafe services, cafeteria services, snack bars, wine bar, bar, cocktail bars, cafe and bar services served in a cybercafé; ice cream parlour services, restaurant services, self service restaurant services; hotel services; hotel reservation, restaurant public house services; serviced apartments for temporary accommodation; information, consultancy and advisory services relating to the aforementioned services including all the aforesaid services provided via the Internet, the world wide web and/or via communications networks.

 

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

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that the contested EUTM has not been put to genuine use in the EU within the period of five years following its date of registration or, alternatively, within the period of five years prior to the date of the application for revocation. For these reasons, the applicant requests the EUTM to be revoked as from 23/01/2012 or such other date when the Office is satisfied that grounds for revocation existed.

 

The EUTM proprietor filed evidence of use, which will be described below.

 

The applicant replies that the evidence submitted by the EUTM proprietor is not sufficient to prove the genuine use of the contested trade mark. In particular, it claims that the affidavit from the proprietor is not sufficient in itself to prove genuine use and that the additional evidence, such as the photographs, the letters from providers and from the proprietor’s accountant, the exhibition notes and the press articles have no evidential value and should be disregarded. The applicant also stresses that the evidence does not refer to all the goods and services for which the EUTM is registered and that there are not sufficient indications about the extent of use.

 

The EUTM proprietor did not submit any observations in reply.

 

 

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 23/01/2007. The revocation request was filed on 06/08/2015. 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 06/08/2010 to 05/08/2015 inclusive, for all the goods and services covered by the EUTM, as listed above.

 

On 23/03/2016 the EUTM proprietor submitted the following evidence as proof of use:

 

• Witness statement from the EUTM proprietor, dated 18/03/2016, in which he confirms that the contested EUTM has been put to genuine use in the EU by him within the relevant period for at least the following goods and services: articles of clothing (T-shirts); alcoholic drinks including beer; alcoholic beverages including wine; retail sale of alcoholic drinks including beer, alcoholic beverages including wine; nightclub and discotheque services, provision of live entertainment and recorded entertainment, sports; catering services. The statement also contains a list of supporting documents.

 

• Several photographs, all of them undated, showing the trade mark “NASHA”, in stylized script and followed by the ® symbol, used on a T-shirt, two beer dispensers, bottles of wine (some of them allegedly sold in two Dutch restaurants), a poster and a menu card inside a bar, as well as a few merchandising articles (pens and keychains).

 

• A statement, dated 12/12/2014, from an artist called ‘Steve’ (no further identity details supplied) in which he confirms that he plays disco and three band live music concerts once a month at the NASHA bar venue.

 

• Copy of a floor plan allegedly showing the location of the ‘NASHA stand’ at the London International Wine Fair that took place on 17-19/05/2011, together with exhibition notes concerning the products exhibited, namely NASHA wines.

 

• Copies of two articles which appeared in “the Publican” and “the Publican Morning Advertiser” on 25/10/2010 and 17/12/2010, respectively, mentioning the wines offered by NASHA.

 

• Copy of an advertisement placed in the “Coventry Advertiser” allegedly published in July 2011, which refers to NASHA wines.

 

• Witness statement of a certified public accountant, dated 21/08/2015, in which he confirms that the accounts of the Nasha brand (Nasha beverages, Nasha bar and restaurant and Nasha catering services) are under the umbrella of the accounts of the EUTM proprietor.

 

• Letter from a beer manufacturer, addressed to the EUTM proprietor and dated 03/06/2015 in which he confirms an agreement to produce craft beer products for the Nasha brand.

 

 

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 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).

 

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 evidence filed by the EUTM proprietor does not contain any indication whatsoever about the commercial volume achieved under the mark for any of the goods or services for which it is registered. The affidavit submitted by the EUTM proprietor only states in general terms that the trade mark has been used for a number of goods and services during the relevant period and the witness statement of the EUTM proprietor’s accountant states that the accounts of the brand are included in the proprietor’s accounts, without any reference to specific amounts of sales. Finally, the letter from the beer manufacturer just refers in general terms to an agreement between the parties and there is no evidence that it materialized in actual sales or purchases.

 

As regards other indications that could point towards the extent of use, the claim by the proprietor that its wines were sold in some Dutch restaurants is not corroborated by any invoices or other independent evidence, and is again totally vague and not specific about time or amounts sold, for instance.

 

While it is true that the undated photographs, the exhibition notes, the witness statement from an artist, or the press clips and advertisement seem to suggest that there has been some use of the mark at some point within the relevant period in relation with wines and possibly also with bar services, there are no indications that allow the Cancellation Division to determine whether the extent of such use would be sufficient to qualify it as genuine use.

 

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 and services 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).

 

In the present case, and taking into account the lack of sufficient indications about the extent of use, an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods and services (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).

 

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 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 06/08/2015. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown sufficient legal interest to justify it.

 

 

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

 

 

 

Richard BIANCHI

José Antonio GARRIDO OTAOLA

Lucinda CARNEY

 

 

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.