CANCELLATION No 12 930 C (REVOCATION)

Zakrytoe akcionernoe obshhestvo “Korporaciya “Masternet”, 7, ul. Magadanskaya, 129345 Moskva, Russian Federation (applicant), represented by Diehl & Partner, Erika-Mann-Strasse 9, 80636 München, Germany (professional representative)

a g a i n s t

Stayer Iberica, S.A., Calle Sierra de Cazorla, 7, Area Empresarial, Andalucía, Sector 1, 28320 Pinto (Madrid) Spain (EUTM proprietor), represented by Bugnion S.p.A, Via di Corticella, 87, 40128 Bologna, Italy (professional representative).

On 25/07/2017, 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.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 4 675 881  (figurative mark) (the EUTM). The request is directed against some of goods covered by the EUTM, namely:

Class 8:        Hand held abrasive items (wheels and grinding wheels).

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant submits an application for revocation of the EUTM on the ground that the EUTM has not been put to genuine use for a continuous period of five years. It does not submit any additional argument.

The EUTM proprietor argues that the EUTM has been genuinely used in the relevant territory for hand held abrasive items (wheels and grinding wheels) during the relevant time-frame. It submits in support Exhibits 1 to 3 (distribution agreements, catalogues and brochures invoices) listed in the following section.

In reply, the applicant firstly argues that the EUTM was filed in its first language (Spanish) as instrumentos manuales abrasivos (discos y muelas). It considers that the translation into English is incorrect. It should have been translated as hand-operated abrasive instruments (discs and grinding wheels). Moreover, it considers that in view of the brackets, the goods should be interpreted as hand-operated abrasive discs and grinding wheels in Class 8, which are different from power tools in Class 7. According to the applicant, the evidence submitted refers to power tools which fall under Class 7 and not 8. Furthermore, it considers that the invoices only show intra-group sales. Therefore, the EUTM proprietor has not proven the extent of use.

In its rejoinder, the EUTM proprietor contests the interpretation of the applicant of the goods protected by the EUTM. It argues that it is obvious that discs and grinding wheels cannot be directly used by human hands. They are intended to be used as part of hand held tools, as shown in the submitted evidence (e.g. catalogues). The EUTM proprietor also contests the applicant’s arguments regarding the alleged ‘internal sales’. In this regard, it points out that the Court has held that outward use does not necessarily imply use aimed at end customers. Therefore, the invoices show that the goods had been manufactured by the EUTM proprietor and subsequently sold to distributors at wholesale level. This should be considered as use of the mark.

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 20/04/2007. The revocation request was filed on 11/05/2016.  Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 11/05/2011 to 10/05/2016 inclusive, for the following contested goods:

Class 8:        Hand held abrasive items (wheels and grinding wheels).

On 19/07/2016 within the time limit, the EUTM proprietor submitted evidence as proof of use.

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 the following:

• Exhibit 1: Distribution agreements (in English)

1. Exclusive Sales Agency Agreements of 29/04/2013 between the EUTM proprietor and a UK company for the distribution of power tool products in the UK and Ireland. The products are defined as Stayer Power Tools, Stayer Welding products and Diamond and Abrasive Discs as shown in the Catalogues. The contested EUTM is expressly mentioned under Intellectual Property rights section.
2. Exclusive Distributionship Agreement of 13/12/2013 for a duration of three years between the EUTM proprietor and a Polish company for the distribution of power tool products in Poland. The contested EUTM is expressly mentioned under Intellectual Property rights section.

• Exhibit 2: Catalogues and brochures

1. Catalogue 2013/2014 of the Polish company referred to in Exhibit 1b) (in Polish). The catalogue depicts the sign in connection to discs such as

2. Special Catalogue STAYER ‘Promotion 2012’ (in Italian). The catalogue depicts the sign  on the bottom right of the pages. It shows discs and hand-held tools such as:

3. Italian ‘Stayer Magazine’ of June 2015 (in Italian) with references to  on the cover page and the following sing on some of the products advertised (essentially discs) :

4. Italian Stayer brochure of May 2013 (in Italian), similar to the above catalogue but the advertising only refers to discs.
5. Two ‘General Catalogue 2012/2013’, one for the English speaking countries and the other for Spanish market, explaining the company STAYER GROUP and its technology. The catalogue indicates that it features ‘a selected range of carefully designed diamond blades and abrasive discs, for any cutting or grinding of the materials commonly used in construction’, with the following picture:

The index of the catalogue shows a variety of products, including diamond discs, diamond core drill, and abrasive discs/flap discs. As regards ‘grinding and flap discs’, the catalogue shows items defined among others as ‘cutting disc for superthing inox, cutting disc for stone and marble, metal cutting disc, metal grinding disc’ and represented for instance as:

6. Four ‘General Catalogues 2014’ for respectively, the Italian market,  the Spanish market, the English speaking countries and the French market with references to disc products, similar to the 2012/2013 catalogues above.

• Exhibit 3: Invoices

1. 19 invoices issued to a Greek company (according to the EUTM Proprietor’s, its exclusive distributor in Greece) from 10/05/2011 to 22/04/2016 with amounts ranging between more than EUR 2 000 and more than EUR 9 000;
2. 15 invoices issued to STAYER S.R.L. in Italy (according to the EUTM Proprietor’s, its exclusive distributor in Italy) from 30/11/2013 to 30/04/2016 with amounts ranging between more than EUR 3 000 and more than EUR 7 000;
3. 21 invoices issued to a Polish company (according to the EUTM Proprietor’s, its exclusive distributor in Poland) from 30/06/2011 to 31/03/2016 with amounts ranging between more than EUR 3 000 and more than EUR 12 000;
4. 15 invoices issued to a Romanian company (according to the EUTM Proprietor’s, its exclusive distributor in Romania) from 15/09/2011 to 10/12/2015 with amounts ranging between more than EUR 1 000 and more than EUR 28 000;
5. 4 invoices issued to several Spanish companies in various locations in Spain (Toledo, Sevilla and Albacete) from 10/02/2012 to 20/07/2015 with amounts ranging between more than EUR 1 000 and more than EUR 4 000.

The invoices include product definitions (e.g. D.STAYER 115X1X22 INOX). For each group of invoices, the EUTM proprietor has also submitted a listing associating the product definition with codes which match the product codes of the items in pages 100 and 101 of the ‘General Catalogues 2014’. The invoices should substantial amount of sales of these products. Moreover, all the invoices include the following logo on the top right corner

Preliminary remarks

First, the applicant indicates that the English version of the relevant goods in Class 8 is incorrect and that for the purposes of assessing genuine use, the original Spanish version should be taken into account.

Pursuant to Article 120(3) EUTMR, in case of doubt or discrepancies between the original version of the list of goods covered by the EUTM and the translations in other languages, the first language shall be considered the authentic.

In the present case, as noted by the applicant, the first language is Spanish; the second language is English. The EUTM was applied for artículos abrasivos de mano (discos y muelas abrasivas) in Class 8. The Cancellation Division notes that the English version furnished by the EUTM proprietor together with the application was hand held abrasive items (wheels and grinding wheels). The EUTM was registered with no amendments as regards these specifications in Class 8.

The Cancellation Division agrees with the applicant that it is the Spanish original version the one that should be taken into account in case of discrepancies. However, the Cancellation Division fails to see a discrepancy between the Spanish and the English version. In fact, ‘hand held abrasive items’ is considered an appropriate translation of artículos abrasivos de mano. Moreover, the Cancellation Division notes that the applicant’s proposed alternative translation (hand-operated abrasive discs and grinding wheels) certainly differs to a larger extent with the original Spanish version.

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period. 

All of the evidence is dated within the relevant period (from 11/05/2011 to 10/05/2016 inclusive). Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 15(1) EUTMR and Article 51(1)(a) EUTMR).

The agreements, invoices and catalogues show that the place of use is the UK, Poland, Italy, France, Greece, Rumania and Spain. This can be inferred from the language of the documents (English, French, Spanish, Polish, Italian), and/or the currency mentioned (euros) and/or some addresses in those countries. Therefore, the evidence relates to the relevant territory.

Nature of use: use as a trade mark

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.

In the present case, considering the use of the trade mark on the goods and on catalogues, it is clear that the sign has been used as a trade mark in order to distinguish the goods of the EUTM proprietor.

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.

In the present case, as shown above, the catalogues clearly depict the sign affixed on the goods as registered such as

 

For the sake of completeness, it should be noted that the evidence submitted also includes representations of the sign in various colours sometimes next to the element STAYER (e.g.  or  or ). The Cancellation Division considers that such variations do not alter the distinctive character of the contested EUTM. The changes in colours may be perceived as modifications in order to adapt the logo to the marketing and promotion requirements of the goods (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50). Moreover, the addition of the element STAYER only reinforces the relevance of this element without altering the distinctive character of the contested EUTM.

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).

Furthermore, 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 addition, the use must be public, that is to say it must be external and apparent to actual or potential customers of the goods or services. Use in the private sphere or purely internal use within a company or a group of companies does not amount to genuine use (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 22; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37; 09/09/2015, T-584/14, ZARA, EU:T:2015:604, § 33).

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 Sonia Rykiel, EU:T:2008:135, § 38).

However, outward use does not necessarily imply use aimed at end consumers. As the Court has indicated, ‘genuine use of the mark relates to the market on which the proprietor of the European Union mark pursues its commercial activities and on which it hopes to put its mark to use (…) It should be noted in that regard that the relevant public to which marks are addressed do not comprise only end consumers, but also specialists, industrial clients and other professional users (06/09/2013, T-349/12, RECARO, EU:T:2013:412, § 25).

The applicant considers that the contested EUTM has not been used outwardly. It considers that the invoices only show internal use (within the same undertaking).

The Cancellation Division does not agree with the applicant’s arguments.

It should be preliminary noted that it has not been proven that the exclusive distribution companies appearing on the invoices are indeed companies within the same group. The fact that the EUTM proprietor’s subsidiary Abrasivos Grinding S.A. sells the products to the distributors at wholesale level does not render those distributors part of the STAYER group. Similarly, the fact that they are exclusive resellers of the EUTM proprietor’s goods does not imply that they are companies within the same group. In fact, according to the distribution agreement in Exhibit 1.b, there are no connections between the Polish distributor company and the STAYER group and the various companies appearing on the Spanish invoices seem to be unrelated to the STAYER group. If any, and merely on the basis of the coincidences in the name, the Italian distributor company STAYER S.R.L. could be connected with the EUTM proprietor.

In any event, outward use can be proven by means of evidence of sales to distributors. Distribution is a method of business organisation that is common in the course of trade (especially when a company has not its own distribution channel) and implies use of the mark that cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32). In other words, the fact that the EUTM proprietor turns, by means of commercial measures, to professionals in the sector concerned, namely re-sellers, can be regarded as a use consistent with the essential function of the trade mark (15/02/2017, T-30/16, EU:T:2017:77, § 57).

The invoices to distributors listed above (Exhibit 3) show substantial sales of products. Those products have been clearly connected by the EUTM proprietor with the STAYER products appearing in the catalogues in Exhibit 2. Moreover, frequent sales are shown during all of the relevant period.

Therefore, the Cancellation Division is of the opinion that in the present case, when assessing the evidence as a whole, it must be considered that the materials submitted are sufficient to show that the EUTM proprietor has seriously tried to maintain or create a commercial position in the relevant market and that there is sufficient information concerning the commercial volume, the duration, and the frequency of use.

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 hand held abrasive items (wheels and grinding wheels).

The catalogues in English indicate that products include ‘abrasive discs for any cutting or grinding’ and the product listing refers to ‘grinding and flap discs’ which include ‘cutting discs’ and ‘grinding discs’. Moreover, the catalogues do not specifically show whether these discs are to be used in power tools or hand-operated tools. The catalogues seem to include both power and hand-operated tools where the discs are inserted.

Noting that a wheel is indeed a disc, that the appropriate translation of ‘muela’ is ‘grinding wheel’, considering that there is nothing in the evidence to support the applicant’s statement that the wheels/discs are only used as accessories for power-operated tools (in Class 7), the Cancellation Division considers that the EUTM proprietor has shown 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 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).

In the present case, the Cancellation Division considers that genuine use of the contested mark has been sufficiently demonstrated for all the relevant factors.

Conclusion

It follows from the above that the EUTM proprietor has proven genuine use for all the contested goods. Consequently, the application for revocation must be rejected as unfounded.

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 applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) EUTMIR and Rule 94(7)(d)(iv) 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

Jessica LEWIS

Elisa ZAERA CUADRADO

Judith NÉMETH

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.