CANCELLATION No 11 915 C (REVOCATION)

Tempting Brands Netherlands BV, De Smalle Zijde 3, 3909 LL Veenendaal, the Netherlands (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft MBB – Patentanwälte Rechtsanwälte,  Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Comité International Olympique (Association), Château de Vidy, 1007 Lausanne, Switzerland (EUTM proprietor), represented by Wilson & Berthelot, 22, rue Bergère, 75009 Paris, France (professional representative).

On 13/07/2017, 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 5 218 482 are revoked in their entirety as from 12/10/2015.

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 5 218 482 ‘PIERRE DE COUBERTIN’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; unexposed sensitised films.        

Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.        

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 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for the supply, distribution, transformation, accumulation, regulation or control of electric current; 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; safety helmets for sports.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Class 13: Firearms; ammunition and projectiles; explosives; fireworks.

Class 14: Precious metals and their alloys and goods in precious mentals or coated therewith, not included in other classes, in particular commemorative items and medals; jewellery, precious stones; stick pins (pins); horological and chronometric instruments.

Class 15: Musical instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter, in particular stamps; newspapers, periodicals, books, photographs, posters; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

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 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23: Yarns and threads, for textile use.

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

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 34: Tobacco; smokers' articles; matches.

Class 35: Advertising; dissemination of advertising matter via all media, in particular in the form of thematic messages centred on human values; business management; business administration; office functions; rental of advertising space of all kinds and on all media, whether digital or not; commercial administration of the participation of national teams in an international athletics competition, and promotion among the public and interested parties to obtain support for the aforesaid teams.

Class 36: Insurance; financial affairs; banking business; monetary affairs; real estate affairs, credit card services; financing of sporting and cultural activities; leasing of telephone sets, facsimile and other communication equipment.

Class 37: Building construction; repair; installation services.

Class 38: Telecommunications; broadcasting of television programmes, television broadcasting (live or recorded); cellular telephone communication; communications by electronic computer terminals, databases and Internet related telecommunications networks; communications by telex; communications by telegraph; communications by telephone; communications by facsimile; paging by radio; communications by teleconferencing; television streaming; cable television broadcasting; radio broadcasting; news agency services; other message transmission services; broadcasting of a commercial site on the Internet; radio and television broadcasting services provided via the Internet; providing access to computer bulletin boards and real-time chat forums; transmission of messages and images by computer; providing access to home and office shopping and ordering services via computer and/or interactive communications technologies; telecommunication of information (including web pages), computer programs and any other data; electronic mail services; providing user access to the Internet; providing telecommunications connections to the Internet or databases; providing access to digital music websites on the Internet; providing access to MP3 websites on the Internet; leasing of access time to a central database (telecommunications); providing access to search engines; operating chat rooms on the Internet; leasing of access time to a central database server; leasing access time to computer databases (telecommunications services); syndication, in particular via electronic interconnections, of films and video recordings and sounds.

Class 39: Transport; packaging and storage of goods; travel arrangement.

Class 40: Treatment of materials.

Class 41: Education; providing of training; entertainment; sporting and cultural activities, televised cultural and sporting entertainment; organization of exhibitions for cultural and educational purposes; organisation of lotteries and competitions; betting and gaming services relating to or in conjunction with sports; entertainment services provided at or relating to sports events; organisation of sporting and cultural events and activities; organization of sports competitions; exploitation of sporting facilities; rental services for audio and video equipment; production, presentation and distribution of films and video and sound recordings; rental of films and video and sound recordings; presentation, provision on a computer network of non-downloadable interactive education and entertainment products; radio and television coverage of sports and sporting events; radio and television program and video tapes production services; production of animated movies; production of animated television programs; seat booking services for shows and sporting events; timing of sports events; organisation of beauty contests; interactive entertainment; on-line gambling services; provision of Internet based games; supplying of raffle services; information relating to entertainment or education, provided on-line from a computer database or the Internet; electronic game services provided by means of the Internet; providing on-line electronic publications; publication of books, journals, texts (except publicity texts) and periodicals; online publication of electronic books, journals, texts (except publicity texts) and periodicals; providing digital music from the Internet; providing digital music from MP3 Internet websites; sport record and statistical information services; leasing of recorded sound and images; audio production services; providing sports results; information relating to sporting events provided online from a computer database or the Internet; publishing and publication services; providing digital music (not downloadable); provision (supply in exchange for payment) of fixed and moving image archives; providing of digital music by telecommunications; rental of interactive compact discs and computer games (software).

Class 42: Scientific and industrial research; scientific laboratory analysis; design and development of computer hardware and software; legal services, including the implementation of legal procedures for preventing and combating counterfeiting and ambush marketing; rental of compact discs (CD-ROMs).

Class 43: Restaurant services (food); cafeteria and restaurant services; hospitality services namely the provision of food and drink; catering services; reservation of hotels and temporary lodgings; rental of premises fitted for and for the purpose of holding receptions, aperitif events and dinner/entertainment events.

Class 44: Medical services; medical and pharmacotoxicological checks; veterinary services; hygiene and beauty care for humans and animals; agriculture, horticulture and forestry services.

Class 45: Security services for the protection of property and individuals as part of the organisation of cultural and sporting events and competitions.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the EUTM was not put to genuine use in the European Union for a continuous period of five years.

The EUTM proprietor submitted evidence of use (listed below) and argues that use is proven for part of the goods and services in Classes 9, 14, 16, 25 and 41 and that use has been made by the proprietor, by the National Olympic Committees or by affiliated, authorised or recognised bodies, all with the proprietor’s consent.

The applicant argues that the evidence, which is limited to some goods and services in Classes 9, 14, 16, 25 and 41, does not prove genuine use of the EUTM. It first points out that part of the exhibits are not in the language of proceedings. Furthermore, it argues that the EUTM proprietor failed to show that the sign ‘PIERRE DE COUBERTIN’ has been used as a trade mark, that is to indicate the commercial origin of the goods and services. The documents merely refer to the historic person PIERRE DE COUBERTIN or to the International Committtee Pierre de Coubertin (CIPC). It further states that in any case the extent of use has not been proved.

In its final observations, the EUTM proprietor argues that use of the EUTM ‘PIERRE DE COUBERTIN’ has been made with the proprietor’s consent and that the mark has been used publicly and outwardly, in a recurrent manner. It further points out that use made by local non-profit organisations does not generate substantial financial turnover.

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 27/07/2007. The revocation request was filed on 12/10/2015. 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 12/10/2010 to 11/10/2015 inclusive, for the contested goods and services listed above.

 

On 30/03/2016 the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Exhibit 1: Articles in German, dated 03/11/2014, 06/07/2011, 21/03/2015 and 24/03/2016 in relation to Pierre de Coubertin Abiturpreis (award for outstanding students in both school and sports, organised by the federal German sports federation Landessportbund Rheinland-Pfalz).

• Exhibit 2: Photographs, undated, of the Olympism Zone Picnic Day, organised in Poland for the 150th anniversary of Pierre de Coubertin.

• Exhibits 3 and 4: Extracts from Polish Olimpionik magazine, dated 2013 and 2014, issued by the Polish Olympic Committee.

• Exhibit 5: Picture from a Polish book entitled ‘Gleaming Airship. Pierre de Coubertin Sports and Olympism’ published by the Polish Olympic Committee on the occasion of the 150th anniversary of Pierre de Coubertin.

• Exhibit 6: List, in Romanian, of sporting activities organised by the Romanian sports federation in the frame of Pierre de Coubertin projects, dated 03/06/2015.

• Exhibit 7: Photograph of a commemorative Euro coin issued for the 150th anniversary of Pierre de Coubertin and extracts from the website www.ecb.europa.eu (European Central Bank) showing, inter alia, the commemorative French coin for the 150th anniversary of the birth of Pierre de Coubertin. The issuing date is June 2013 and the issuing volume indicated: 1 million coins.

• Exhibit 8: Photograph of a commemorative medal, issued in 2013 for the 150th anniversary of the birth of Pierre de Coubertin.

• Exhibit 9: Photograph of a commemorative stamp and envelope, issued in 2013 for the 150th anniversary of the birth of Pierre de Coubertin.

• Exhibit 10: Two cover pages of ‘Gazette Coubertin’ in French, dated 2011 and 2015. There is no indication regarding their circulation area and numbers.

• Exhibit 11: Extract from the website http://franceolympique.com regarding a commemorative  exhibition organised in 2013 for the 150th anniversary of the birth of Pierre de Coubertin.

• Exhibit 12: Publications in Greek, issued by the Cyprus Olympic Committee, entitled ‘Pierre de Coubertin’, dated 2012-2015.

• Exhibit 13: Extracts from an Estonian book entitled ‘Pierre de Coubertin and the birth of the Olympic movement’, dated 2012. It is indicated that the number of printed copies is 518.

• Exhibit 14: Extracts from the website www.estudiosolimpicos.es in Spanish, showing a partnership between several Spanish educational institutions and the International Committee Pierre de Coubertin (CIPC). They contain information about the historic person Pierre de Coubertin.

• Exhibit 15: Article from the Spanish website www.oad.es, dated 03/03/2016 in relation to an exhibition about ‘Pierre de Coubertin’ organised in Cantabria and extracts from the Spanish Committee Pierre de Coubertin.

• Exhibit 16: Extracts from a Slovak book whose subject matter is Pierre de Coubertin.

• Exhibit 17: Articles in English and Dutch extracted from the website www.nocnsf.nl in relation to, inter alia, Pierre de Coubertin Trophy awarded in the Netherlands in 2013.

• Exhibit 18: Extracts from the website www.unesco.org concerning the Unesco Diary 2013, mentioning, inter alia, Pierre de Coubertin Trophy for an act of Fair Play and extracts from www.fairplayinternational.org mentioning Pierre de Coubertin World Trophy awarded to an athlete or team for an act of fair play.

• Exhibit 19: Extracts from the website www.coubertin.net dated 24/03/2016. It can be seen from these extracts that posters about Pierre de Coubertin are downloadable.

• Exhibit 20: Extracts from the website www.coubertin.org. They explain that the International Pierre de Coubertin Committee (CIPC) was founded in 1975 to ensure Pierre de Coubertin’s ideals of excellence, fairness, participation and peace remain part of the overall philosophy of the Olympic Games. CIPC is a private initiative, recognised and funded by the International Olympic Committee (IOC).

• Exhibit 21: Pierre de Coubertin Bibliography (non-exhaustive selection of references on work and personality of Olympic Games reviver), dated March 2015, issued by the Olympic Studies Centre. It contains a long list of works about or written by Pierre de Coubertin (books, DVDs, articles, conferences and speeches, thesis, periodicals, etc.).

• Exhibit 22: Newsletters dated 2011-2012 and 2013-2014 issued by Pierre de Coubertin International Committee (CIPC). They give information on the activities of the CIPC.

• Exhibit 23: Extracts from the Internet archive waybackmachine at www.web.archive.org, dated 11/05/2015 showing Pierre de Coubertin’s Moustache tee-shirt offered for sale in the Official website of the Olympic Movement. The price is in Swiss Francs (CHF). There are also an enlarged view of the tag containing a short biography of Pierre de Coubertin and photographs of the tee-shirt displayed in the International Olympic Committee official shop.

• Exhibit 24: Photograph of a tee-shirt displaying a picture of and the name ‘Pierre de Coubertin’. According to the EUTM proprietor, 5000 items have been distributed in France.

Assessment of genuine use – factors

Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

It is relevant that genuine use implies real use of the mark on the market concerned for the purpose of identifying goods or services. Genuine use is therefore to be regarded as excluding minimal or insufficient use for the purpose of determining that a mark is being put to real, effective use on a given market.

The indications and evidence required in order to provide proof of use must concern the place, time, extent and nature of use of the EUTM proprietor’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (05/10/2010, T-92/09, Strategi, EU:T:2010:424, § 43). This means that the proprietor is obliged not only to indicate but also to prove each of these requirements.

Use in relation to the registered goods and services

Article 51(1)(a) EUTMR and Rule 22(3) EUTMIR 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 above listed goods and services in Classes 1-45.

However, the evidence filed by the EUTM proprietor does not relate to all the goods and services for which the contested EUTM is registered.

The evidence shows no indications whatsoever that the mark was used in connection with any of the goods and services in Classes 1-8, 10-13, 15, 17-24, 26-40, 42-45. Furthermore, the EUTM proprietor explicitly mentions that the evidence of use concerns only the following goods and services:

Class 9: Magnetic data carriers, recording discs (DVD).

Class 14: Commemorative items and medals.

Class 16: Printed matter, in particular stamps; newspapers, periodicals, books, photographs, posters; stationery; instructional and teaching material (except apparatus).

Class 25: Clothing.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; organization of exhibitions for cultural and educational purposes; organisation of competitions; entertainment services provided at or relating to sports events; organisation of sporting and cultural events and activities; organization of sports competitions; exploitation of sporting facilities; production, presentation and distribution of films and video and sound recordings; rental of films and video and sound recordings; presentation, provision on a computer network of non-downloadable interactive education and entertainment products; information relating to entertainment or education, provided on-line from a computer database or the Internet; electronic game services provided by means of the Internet; providing on-line electronic publications; publication of books, journals, texts (except publicity texts) and periodicals; online publication of electronic books, journals, texts (except publicity texts) and periodicals; information relating to sporting events provided online from a computer database or the Internet; publishing and publication services.

There is no evidence that the mark was used in relation to magnetic data carriers.  Data carriers are considered to be blank media and the evidence concerns at most only recorded DVDs. Furthermore, there is no evidence relating to rental of films and video and sound recordings; electronic game services provided by means of the Internet in Class 41.

Therefore, the assessment of use of the mark will continue only with regard to those listed goods and services, except magnetic data carriers in Class 9 and rental of films and video and sound recordings; electronic game services provided by means of the Internet in Class 41.

Nature of use: use as a trade mark and extent of use

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.

Genuine use requires that use is made as a trade mark 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 (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 43).

The mark must be used publicly and outwardly in the context of commercial activity with a view to economic advantage for the purpose of ensuring an outlet for the goods and services that it represents (12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68, § 39; 30/04/2008, T-131/06, Sonia Rykiel, EU:T:2008:135, § 38).

The fact that the goods or services are offered on a non-profit-making basis is not decisive for whether there is genuine use or not. The fact that such an association does not seek to make profit does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods or services (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 16-17).

The use of a sign as a business or trade name cannot be regarded as trade mark use unless the relevant goods or services themselves are identified and offered on the market under this sign.

In the present case, the sign ‘PIERRE DE COUBERTIN’ is not used as a trade mark, that is to indicate the commercial origin of the goods and services and to operate a link between the goods and services and the entity responsible for their production or for putting them on the market.

From the documents submitted, it is clear that they all refer to Pierre de Coubertin as the historic person (a French educator and historian born in 1863, founder of the International Olympic Committee and considered as the father of the modern Olympic Games) or as the International Committee Pierre de Coubertin (CIPC) founded in 1975 by the International Olympic Committee (IOC) to ensure Pierre de Coubertin’s ideals of excellence, fairness, participation and peace remain part of the overall philosophy of the Olympic Games.

Clearly, the evidence concerning the goods in Classes 16 and 9 (publications, books, posters, stamps, envelopes, DVDs) does not display the sign as a trade mark but as a mere reference to the content of the goods. The sign is used to indicate to consumers that the goods relate to the historic person Pierre de Coubertin. In relation to books or DVDs, Pierre de Coubertin is used as the title of a work (see for analogous reasoning 30/06/2009, T-435/05, Dr. No, EU:T:2009:226, § 25).

The same can be said in relation to the commemorative medals, coins, stamps and envelopes. These items were issued to commemorate the 150th anniversary of the birth of Pierre de Coubertin and the use of the name Pierre de Coubertin in relation to these goods cannot be considered as trade mark use. Therefore, even though 1 million coins were issued in 2013 in France, the sign ‘Pierre de Coubertin’ is not used as a trade mark but to refer to an historic event, the 150th anniversary of the birth of Pierre de Coubertin.

 

In relation to the services in Class 41 (sporting and cultural activities, entertainment, organisation of exhibitions, conferences), they are not offered on the market to third persons under the trade mark ‘PIERRE DE COUBERTIN’. In relation to exhibitions, Pierre de Coubertin is not used as a trade mark but as a reference which is descriptive of the subject matter of the exhibitions, indicating that they relate to the historic person Pierre de Coubertin (some were organised for its 150th anniversary). Concerning the awards and trophies, Pierre de Coubertin is not used as a trade mark but as the name of the trophy or award.

In any case, even assuming that ‘Pierre de Coubertin’ were used as indicator of the commercial origin of the goods and services, the EUTM proprietor has failed to provide indications on the 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 (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

In the present case, the evidence submitted does not give any indication on the extent of the commercial activities of the EUTM proprietor under the earlier trade mark. The Cancellation Division was not provided with any sales figures for the relevant goods and services, any indication of the commercial volume of sales or turnover figures, or any documents concerning the frequency of use.

Concerning the magazines and in particular the ‘Gazette Coubertin’ (see exhibit 10), the EUTM proprietor did not provide any indication on the number of copies sent, on their circulation area and numbers.

Concerning the tee-shirt offered for sale on the Official website of the Olympic Movement and in the International Olympic Committee official shop, the price is in Swiss Francs (CHF) and the shop is located in Switzerland, as indicated by the applicant. In any case, there is no evidence that tee-shirts bearing the trade mark ‘Pierre de Coubertin’ have been effectively commercialised and to what extent. The EUTM proprietor indicates that  5000 items have been distributed in France, however this figure is not corroborated by any other document. The opponent could have filed invoices, balance sheets and other commercial documents.

From the evidence submitted, it cannot be deduced that the EUTM proprietor has seriously tried to acquire a commercial position in the relevant market. The Cancellation Division has no solid or objective indications relating to the extent of use. Therefore, taken in its entirety, the evidence filed does not provide the Cancellation Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the contested EUTM.

Overall assessment

The Court of Justice 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).

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).

It follows from the above that the EUTM proprietor has clearly failed to prove genuine use of the EUTM since the evidence does not show use of the contested EUTM as a trade mark and it has not submitted any evidence of the extent of use.

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 12/10/2015.

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

Catherine MEDINA

Frédérique SULPICE

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.