CANCELLATION No 11881 C (REVOCATION)

Bimba & Lola Studio, S.L., Parque tecnológico y logístico de Vigo, Nave D13, 36312 Vigo (Pontevedra), Spain (applicant), represented by Garrigues IP, S.L.P.,  Hermosilla 3, 28001, Madrid, Spain (professional representative)

a g a i n s t

Trussardi S.p.A., Piazza Della Scala, 5, 20121 Milano, Italy (EUTM proprietor), represented by Studio Legale Bird & Bird, Via Borgogna, 8, 20122 Milano, Italy  (professional representative).

On 03/07/2017, 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 8 932 717 are revoked in their entirety as from 05/10/2015.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 8 932 717  (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely goods and services in Classes 3, 9, 14, 18, 24, 25, 35 and 43.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant considers that the EUTM has not been put to genuine use for a continuous period of five years. The applicant does not submit any particular argument with the application for revocation.

The EUTM proprietor submits Annexes 1 to 14 (listed in the following section) in order to prove the genuine use of the EUTM. It considers that the documents demonstrate that the EUTM has been put to genuine use in the EU within the relevant period of time in a form which does not alter its distinctive character. It also refers to the case-law on used of a registered trade mark as part of another composite mark (18/04/2013, C-12/12 SM JEANS/LEVI’S EU:C:2013:253).

In reaction to the Office’s request to translate the evidence into the language of the proceedings (other than the self-explanatory evidence), the EUTM proprietor submits partial translations of some of the documents.

In reply, the applicant argues that the evidence only shows use of the trade mark as registered in one single document, where the use of the greyhound device seems to be more a decorative element in a clutch than use as a trade mark. According to the applicant, the rest of the evidence relates to other trade marks of the Trussardi group (including a word mark), none corresponding to the EUTM. The applicant contests in particular that the use of the logo  is acceptable.  Moreover, it argues that the use of the sign as only appears in one invitation to a party organised by the Trussardi Group. The applicant concludes that the EUTM proprietor has failed to prove genuine use of the EUTM.

In the rejoinder, the EUTM proprietor disagrees with the applicant’s conclusions. It considers that the ‘running greyhound’ has been used not only in the document referred to by the applicant but also on clothing. It refers to the evidence submitted in Annex 1 and Annex 2. In addition, it argues that the logo has been used on advertising campaigns including billboards in central locations. It reiterates that the addition of the word elements in the background does not alter the distinctiveness of the trade mark. It also contends that the use of the greyhound with some variations due to the evolution of other Trussardi’s ‘historical’ well-known marks is acceptable use.

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 24/08/2010. The revocation request was filed on 05/10/2015. 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 05/10/2010 to 04/10/2015 inclusive, for the following contested goods and services:

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

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 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 24:        Textiles and textile goods, not included in other classes; bed and table covers.

Class 25:        Clothing, footwear, headgear.

Class 35:        Advertising; Services relating to business management; business administration; office functions; modelling for advertising or sales promotion; franchising, namely services provided by a franchisor consisting in providing assistance to, managing and developing a commercial business (services for others);retailing, wholesaling and on-line selling in relation to clothing, footwear, headgear, jewellery, horological instruments, perfumery, cosmetics, soaps, deodorants, spectacles and sunglasses, spectacle frames, spectacle cases, luggage, belts, telephone goods, apparatus for recording, transmission or reproduction of sound or images, textiles, household linen.

Class 43:        Providing of food and drink; temporary accommodation.

On 25/03/2016, within the time limit after an extension was granted, the EUTM proprietor submitted 3 CDs as evidence of proof of use.

On 22/06/2016, the EUTM proprietor submitted, at the Office’s request, a partial translation in the language of the proceedings of part of the evidence.

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, in particular, the following:

• Annex 1: three documents with allegedly examples of use of the EUTM on clothing articles (T-shirts): a representation of a logo with four greyhounds running and a reference to TRUSSARDI JEANS , a page with various designs of T-shirts under various code numbers with an unidentifiable logo such as in and a screenshot of a page from www.trussardi.com showing a white T-shirt with the logo with the four greyhounds printed on it;

• Annex 2: allegedly, five copies of orders received by Trussardi. The orders list the products using codes. One of the listed codes in the orders matches a code number indicated above in Annex 1. In more detail: order of 29/06/2015 by Cyprus client (15 products with the code) of 25/05/15 by a Italian client (18 products with the code), of 29/06/2015 by a Italian client (10 products with the code),  of 30/06/2015 by a Polish client (9 products with the code) and of 22/09/2015 by a Spanish client (15 products with the code);

• Annex 3: 22 documents showing advertising material referring to the logo   on billboards in Benelux, France, Italy, Poland and Russia (undated); five copies of an invitation to various events in Italy and Russia (undated) including the following logos:, . Four copies of advertising on buses in Rome  (undated) and two documents on use of the logo   on wallets (undated);

• Annex 4: more than 60 invoices dated between September 2010 and October 2015 allegedly referring to products bearing Trussardi’s trade marks. The invoices are issued by TRS Evolution to clients in various Member States of the EU. The description of the articles however does not make reference to the EUTM. The invoices also include one or various of the following logos in their header:

, , .

• Annexes 5 to 14: Trussardi’s 2011 to 2015 press review relating to Italy and countries other than Italy (inter alia, Belgium, Germany, Spain, United Kingdom, France but also China, United States and Switzerland). The evidence refers to a substantial amount of pages from fashion magazines where clothing articles and accessories are depicted and described as Trussardi’s articles.

Assessment of genuine use – factors

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Rule 22(3) EUTMIR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

As indicated above, the applicant considers that the sign has not been used as registered.

The EUTM proprietor contests these findings. It puts forward two main lines of reasoning in this regard. On the one hand, the presence of the elements ‘TRUSSARDI 100 YEARS’ in the background on the ‘anniversary’ sign  and the different position of the legs of the greyhound do not alter the overall impression that the sign creates: that of a ‘running greyhound’. On the other hand, it considers that the EUTM is an evolution of other Trussardi ‘historical’ signs such as ,  and , and the Office should take into account the use in these other forms when assessing the proof of use of the EUTM. Its reasoning is based on the fact that these signs contain the image of a greyhound or the shape of its head; that the image is fully distinctive and that such distinctiveness has been enhanced through the use made by the EUTM proprietor; and that the consumers will immediately associate the Trussardi products with the image and concept of a greyhound.

The EUTM proprietor further argues that the fact that the greyhound is running in the EUTM but it is not in the historical logos does not alter the distinctive character as: (i) there is an interdependence between the strength of the distinctive character of a trade mark and the effect of alterations to the form in which such trade mark is used: trade marks with a strong distinctive character are less influenced by changes than marks of limited distinctiveness; (ii) the visual variation is negligible; and (iii) it is common practice to make slight variations to trade marks in the fashion industry. It supports its arguments by reference to the judgment of 18/04/2013 in C-12/12 SM JEANS/LEVI’S EU:C:2013:253 where the Court 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.

The Cancellation Division however does not agree with the EUTM proprietor’s arguments.

Admittedly, the purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned. Moreover, the General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In order to decide whether the sign as used and the sign as registered are broadly equivalent, it must first be established which elements are negligible. In brief, the test developed by the Court consists of first determining what the distinctive and dominant elements of the registered sign are and then verifying if they are also present in the sign as used.

In the present case, the sign has been registered as a purely figurative sign in black representing a running greyhound facing the left, with the forward legs stretched forward and the rear legs stretched back, as follows:  

As regards the use of the EUTM in the ‘anniversary signs’ in the following forms  and , the Cancellation Division agrees with the EUTM proprietor that the addition of ‘TRUSSARDI’ and ‘YEARS’ before and after the representation of the greyhound and the element ‘100’ in the background would not alter the distinctive character of the trade mark. The addition of ‘TRUSSARDI’ may be seen as use of the EUTM together with another mark. In this regard, it is settled-case law that there is no rule in the EUTM trade mark system that obliges the EUTM proprietor to prove the use of the mark on its own, independently of any other mark (see by analogy, 6/11/2014, T-463/12 MB / MB&P, ECLI:EU:T:2014:935 § 43). The addition of the elements ‘100’ and ‘YEARS’ may be perceived as non-distinctive elements, which serve, for example to commemorate the anniversary of the company. Similarly, the use of the golden colour in some of the representations is merely decorative.

However, the Cancellation Division considers that the representation of the running greyhound in the form as used alters the distinctive character of the sign as registered. The differences in the position of the legs, the tail and the head of the dog create a different overall impression of the sign which does alter the distinctive character of the EUTM.

Similar considerations apply a fortiori with regards to the use of the sign as follows: . Even if the combined use with ‘TRUSSARDI JEANS’ could potentially be acceptable, the representation of the four greyhounds considerably alters the distinctive character of the sign as registered.

As regards the use of the EUTM in the form of what the EUTM proprietor refers to as ‘historical’ signs, the following should be noted.

First, the Cancellation Division agrees that trade marks with a strong distinctive character are less influenced by changes than marks of limited distinctiveness. However, in the present case, the EUTM proprietor has not shown in which respect the registered logo has a strong distinctive character, other than being a fanciful sign with respect to the registered goods and services. On the contrary, the EUTM proprietor has argued (but not proven) the well-known character of the ‘historical trade marks’ but not of the EUTM as such.

Secondly, even if it could be admitted that it is common practice to make slight variations to trade marks in the fashion industry, the Cancellation Division considers that the following variations are not slight or visually negligible:

	, , (1) (2)
Sign as registered	Sign as used

 

A visual comparison of the signs clearly shows that the EUTM has not been used as registered but in a form that alters its distinctive character. The signs are so far apart that the overall impression produced by the registered sign is altered. In the signs grouped under (1) above and irrespective of the use together with the term TRUSSARDI, the representation is that of the head of a greyhound where the eyes, ears and snout are perceivable, whereas the EUTM represents a much more stylised depiction of the whole body of a running greyhound.  As regards the use in the form grouped under (2), contrary to the EUTM proprietor’s arguments, the fact that they include the representation of a greyhound is not sufficient to show the nature of use. In fact, the representation includes not only one but two greyhounds leaning on their hind legs (that is, not in a running position), one on the left side and the other on the right side of a central shield.

Finally, and for the sake of completeness, the Cancellation Division notes that the EUTM proprietor has submitted substantial amount of evidence in Annexes 5 to 14 referring to press clippings from 2011 to 2015 in EU and non-EU countries. However, the Cancellation Division has not been able to identify, within the substantial amount of documentation, any particular use of the EUTM as registered. The logos on the press clippings seem to refer to the ‘historical signs’ or to ‘TRUSSARDI’, for instance:

Annex 5 (Belgium) , Annex 6 (Italy), Annex 7 (Italy) ,  , , Annex 8 (Italy) , Annex 9 (Greece) , Annex 10 (Italy)  , Annex 11 (United Kingdom) , (Greece) , (Spain) , Annex 12 (Italy) , Annex 13 (Greece) ,  and Annex 14 (Italy)

Moreover, the EUTM proprietor has neither indicated where, in the hundreds of pages, the EUTM appears represented. It should also be noted that in reaction to the applicant’s argument that the evidence does not show use of the registered logo, the EUTM proprietor has failed to refer to any document in Annexes 5 to 14 where such logo would be represented. As explained above, the EUTM proprietor’s arguments have concentrated on the alleged use of the ‘anniversary sign’ or Trussardi ‘historical signs’.

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).

Moreover, as indicated above, pursuant to Rule 40(5) EUTMIR in conjunction with Rule 22(3) EUTMIR, 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 and services. 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 evidence for the nature of use is insufficient because it does not show use of the sign as registered or in a form which does not alter its distinctive character, the EUTM proprietor has clearly failed to prove the genuine use of the EUTM.

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 05/10/2015.

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.

The Cancellation Division

Michaela SIMANDLOVA

Elisa ZAERA CUADRADO

Ana MUÑIZ RODRÍGUEZ

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.