CANCELLATION No 12693 C (REVOCATION)
Feme Limited, 6 Jubilee Way, South Wimbledon, London SW19 3XD, United Kingdom (applicant), represented by Briffa, Business Design Centre, 52 Upper Street, Islington, London N1 0QH, United Kingdom (professional representative)
a g a i n s t
Panzeri Diffusion S.r.l., Via Brodolini, 30/A, 21046 Malnate (VA) Italy (EUTM proprietor), represented by Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative).
On 25/07/2017, the Cancellation Division takes the following
DECISION
1. The application for revocation is partially upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 3 806 064 are revoked as from 14/03/2016 for part of the contested goods, namely:
Class 3: Soaps; perfumery, essential oils, cosmetics, except hair preparations and treatments, dentifrices.
Class 8: Hand tools and implements (hand operated); Cutlery; knives; pocket knives.
Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes, except paintbrushes; material used in brush making; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in buildings); glassware, porcelain and earthenware (not included in other classes).
3. The European Union trade mark remains registered for all the remaining goods, namely:
Class 3: Hair lotions, Hair preparations and treatments.
4. Each party bears its own costs.
REASONS
The applicant filed a request for revocation of European Union trade mark registration No 3 806 064 ‘urban:tribe’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely
Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices.
Class 8: Hand tools and implements (hand operated); Cutlery; knives; pocket knives.
Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes, except paintbrushes; material used in brush making; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in buildings); glassware, porcelain and earthenware (not included in other classes).
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested mark has not been put to genuine use in the European Union in connection with the goods covered by the registration and there are no proper reasons for non-use.
The EUTM proprietor filed evidence of use and argues that ‘URBAN TRIBE’ is one of the premium brands in the hair styling field and it is the result of the collaboration of the most popular hair fashion professionals which accomplish a complete range of high quality hair products. The contested trade mark distinguishes a haircare and styling line which includes, among others, hair care and hair modelling preparations as well as hair appliances and instruments. It adds that the products have been exhibited in hair shows of fashion and luxury brands and expositions and they have been used during professional courses and workshops.
In reply, the applicant comments on the evidence submitted by the proprietor. It points out that some of the goods included in the evidence (i.e. shampoos or containers for cosmetics) are irrelevant since these goods are not covered by the specification of goods of the contested mark. It adds that in relation to certain goods such as combs and brushes, these goods were provided free of charge to the same customer in Germany and it seems highly likely that they were simply promotional items.
As regards the invoices, the applicant states that the proprietor´s use of the mark alters the distinctive character of the contested mark since the invoices show the word ‘URBAN’ above ‘TRIBE’ as well as the omission of the colon featured in the mark as registered. Finally, the applicant argues that there is no evidence of any visitors from the EU having visited the relevant adverts.
In support of its arguments, the applicant submitted the following evidence:
- A print-out from Cambridge English dictionary, showing the definition of ‘household’.
- Print-outs from several websites, showing sizes of cosmetic containers.
- A print-out from Cambridge English dictionary, showing the definition of ‘shampoo’.
- A print-out from Cambridge English dictionary, showing the definition of cosmetics.
- Print-outs from several websites selling hair lotions as well as from one which explains the term.
- A print-out from Cambridge English dictionary, showing the definition of ‘conditioners’.
- A print-out from Cambridge English dictionary, showing the definition of ‘hair gel’.
- Print-outs from websites selling hair foams.
- Print-outs from websites selling hair masks.
- A print-out from Wikipedia, defining hair waxes.
- Print-outs from a variety of websites selling hair glues.
- Print-outs from websites advertising hair oils.
- A print-out from a website selling the Proprietor’s ‘bamboo treatment bowl’.
- A print-out from a website, showing the size of the market for cosmetics in the EU.
- A print-out from a website, showing the size of the market for hair care products in the EU.
- Print-outs from websites advertising hair pastes and pomades. An extract from Wikipedia defining pomade.
In its final observations, the EUTM proprietor rebuts the applicant´s assertions as regards the evidence of use. It clarifies that the goods shown on the evidence are sufficiently identified. The proprietor emphasizes that the use of the mark does not alter the distinctive character of the registered mark since the omission of the colon is negligible. Finally, it adds that the amounts shown in the invoices are sufficient to prove genuine use of the sign in connection with the goods concerned.
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 13/09/2005. The revocation request was filed on 14/03/2016. 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 14/03/2011 to 13/03/2016 inclusive, for the following contested goods:
Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices.
Class 8: Hand tools and implements (hand operated); Cutlery; knives; pocket knives.
Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes, except paintbrushes; material used in brush making; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in buildings); glassware, porcelain and earthenware (not included in other classes).
On 21/06/2016 the EUTM proprietor submitted evidence as proof of use which consists on the following:
Exhibit A: Nine invoices issued by Panzeri Diffusion S.r.l. (the proprietor) from 25/07/2011 until 11/03/2016 and addressed at different customers in Spain, Portugal, Germany, Lithuania and Denmark. The invoices are in Italian although their content is self-explanatory in relation to the total amounts in Euros (more than 90.000) and the sign shown ‘URBAN:TRIBE’ which is related to the products, in English, shampoo, conditioners, gels, foams, masks, glues, gels, oils, combs, brushes, brush and comb holders, among others.
Exhibit B: Extracts from the website www.urbantribe-style.com dated 15/06/2016 showing images of URBAN TRIBE’s products, such as serum, shampoo, conditioners, hair sprays, hair gels, hair oils, hair waxes, hair masks, hair foams, restructuring fluids, hair cream, hair pastes and pomades, hair glues, scissors, combs, brush holders and spray bottles.
Exhibit C: Screenshots from the official Facebook, Instagram, YouTube and Twitter
pages of URBAN TRIBE posted from 2011-2016. The images show the sign affixed on different hair products. Some codes or numbers appear next to the sign. These screenshots appear in relation to events such as Biennale de Venezia 2011 or the Milan Fashion Week. The videos in YouTube show the number of views.
Exhibit D: Extracts from a non-identified source showing images of Urban Tribe’s hair products used for hair styling of models during several fashion shows such as Alviero Martini (2012), Armani 2012, Milan Men´s Fashion Week (2013 and 2014), Dsquared (2013), Franki Morello (2011), Francesco Scognamiglio (2012), Milano Moda Uomo (2014) or Neil Barrett (2013). The sign is shown affixed to products such as hair wax, hair pomade or lacquer.
Exhibit E: Extracts from a non-identified source showing images of Urban Tribe’s hair products used for hair styling of models during several fashion shows in Barcelona and Milan in 2016 and in Poland in 2015. Some of the documents show booths with panels bearing the contested mark and the hair products, the image of the catwalk and the backstage.
Exhibit F: Extracts showing advertisements and press from magazines and blogs containing and/or mentioning the URBAN TRIBE mark. The extracts show the relevant magazine or blog bearing the dates 2011, 2012 however the dates do not appear in the magazines themselves.
Assessment of genuine use – factors
Time of use
The evidence must show genuine use of the European Union trade mark within the relevant period.
According to case-law, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (25/03/2009, T-191/07, Budweiser, EU:T:2009:83, § 108).
Concerning the factor of time of use, the Cancellation Division points out that some documents are dated beyond the relevant period (exhibit B). However, it must be noted that the invoices (exhibit A), the screenshots of the posts in social media (exhibit C) and the fashion shows and events (exhibit D) give sufficient indications as to the use of the contested mark during the relevant time period, namely, from 14/03/2011 to 13/03/2016.
Therefore, the evidence filed by the EUTM proprietor contains sufficient indications concerning the time of use.
Place of use
The evidence must show that the contested trade mark has been genuinely used in the European Union (see Article 15(1) and Article 51(1)(a) EUTMR).
In the present case, the majority of the documents are in Italian with translations into English. The invoices clearly indicate that the products were addressed at customers in various places within the European Union (Spain, Portugal, Germany, Lithuania and Denmark) and that the fashion shows took place in different places in Italy, in Spain and Poland.
Therefore, the evidence provided show that the contested mark has reached customers in many countries within the European Union and not only the Italian market even though the evidence is mainly in Italian with some translations into English. The geographical area is sufficiently extent to show use of the contested trade mark within the European Union.
Therefore, the evidence relates to the relevant territory and is sufficient to show place of use of the contested trade mark.
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, the majority of the documents show that the signs and ‘URBAN:TRIBE’ are used in connection with certain goods and therefore it is used as a trade mark. Consequently, the consumers can distinguish the goods from those of different manufacturers.
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, the mark is registered as a word mark ‘urban:tribe’. The majority of the evidence, namely, the invoices and the pictures, as well as the screenshots from social media show the signs or ‘URBAN:TRIBE’.
The applicant argues that the proprietor´s use of the mark alters the distinctive character of the contested mark since the documents show the word ‘URBAN’ above ‘TRIBE’ and the omission of the colon featured in the mark as registered.
However, in the present case, the signs used do constitute use of the contested mark because the fact that one word appears above the other and the omission of the colon do not alter the distinctive character of the contested mark ‘URBAN:TRIBE’. The same applies to the fact that the mark is, in some documents, used as a figurative mark in fairly standard black characters showing ‘URBAN’ and ‘TRIBE’, all those elements do not alter the distinctive character of the contested mark.
The evidence submitted shows use of the mark as registered or in a form essentially the same as that registered and, therefore, such use constitutes use of the contested registration under Article 15 EUTMR. Therefore, the applicant´s claim is dismissed.
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 General Court went further to point out that “to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment 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. In addition, the turnover and the volume of sales of the product under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market” (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 41 and 42).
In the present case, the extracts from the website and the screenshots from social media, only show that the company manufactures certain goods. This set of evidence does not give any indication as regards sales figures or commercial volume.
However, the majority of the invoices enclosed describe the products (shampoo, conditioners, gels, foams, masks, glues, gels, oils), as well as the total amounts which range from 2011 until 2016. These documents provide sales figures for some of the goods between 2011 and 2016. The invoices do contain an indication to certain goods and the contested mark is included next to the items.
Bearing in mind the type of goods and the sales figures provided in the invoices (more than 90.000 Euros) supported by the remaining documents, the Cancellation Division considers that the evidence, taken as a whole, is therefore sufficient to prove the extent of use of the registered mark, and exceeds mere token use, at least in respect of some of the goods.
Consequently, the Cancellation Division finds that the documents filed provide sufficient information concerning the commercial volume, the duration and the frequency of use.
Use in relation to the registered goods
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 international registration is registered.
The contested mark is registered for goods in Classes 3, 8 and 21. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods for which it is registered.
According to Article 51(2) EUTMR, where there are grounds for revocation in respect of only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.
According to case-law, when applying the abovementioned provision the following should be considered:
… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.
[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288)
The contested EUTM is registered in Class 3 for Soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices.
Article 1 of Council Directive No 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products defines a ‘cosmetic product’ as ‘any substance or mixture intended to be placed in contact with the various external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, or protecting them in order to keep them in good condition, change their appearance or correct body odours.
It is clear that cosmetic is sufficiently broad for several subcategories to be identified within it. In the present case, the evidence shows that the contested EUTM has been used for hair products such as shampoos, conditioners, gels, foams, masks, glues, gels, oils, among others. On the basis of the purpose of the goods used, the Cancellation Division finds that the use for all hair products, which falls under the broad category of cosmetics, constitutes use for the subcategory hair preparations and treatments.
The evidence submitted also shows use of items included in the category hair lotions. As the proprietor is not required to prove use of all the conceivable variations of the category of goods for which the mark is registered and as the goods for which use has been proved (among others hair oils) do not constitute coherent subcategories within the broad category in the specification to which they belong, the Cancellation Division considers that the evidence shows genuine use of the trade mark for the whole hair lotions. Hair lotions are grooming products used to aid styling, add weight and shine to the hair.
The applicant points out that some of the goods included in the evidence (i.e. shampoos or containers for cosmetics) are irrelevant since these goods are not covered by the specification of goods of the contested mark. However, according to the definition mentioned above, cosmetic is a broad category which includes any substance for, namely, the hair to clean or protect it. Therefore, all the items shown in the evidence are included in the broad category hair preparations and treatments forming a defined subcategory within cosmetics. Therefore, the applicant´s claim in relation to these goods is dismissed.
However, the Cancellation Division considers that the evidence does not prove use for the goods in Class 8, in Class 21 and the remaining goods in Class 3 soaps; perfumery, essential oils, cosmetics, except hair preparations and treatments, dentifrices.
Soaps are substances used with water for washing and cleaning, made of a compound of natural oils or fats and typically having perfume and colouring. A perfume is a fragrant liquid typically made from essential oils extracted from flowers and spices, used to give a pleasant smell to the human or animal body or to fragrance the air. Essential oils are all related oil products for beauty purposes and dentifrices are those preparations intended to care for the health and the appearance of human teeth. The evidence do not show use in respect of these goods.
In relation to goods in Class 8, some of the evidence shows scissors. Indeed, two extracts from the proprietor´s website show pictures of the scissors. However, these two extracts do not show use which can be viewed as warranted in the economic sector concerned to maintain or create a share in the market for those goods in Class 8. Therefore, in the Cancellation Division’s view, the evidence provided does not show use of the mark for Hand tools and implements (hand operated); Cutlery; knives; pocket knives in Class 8.
In relation to goods in Class 21, some of the evidence shows combs, brushes, and brush and comb holders. Indeed, some invoices show five combs and eight brushes and two extracts from the proprietor’s website show pictures of the combs and brushes. However, five combs and eight brushes in a period of five years even if they are shown in two extracts of the proprietor’s website do not show use which can be viewed as warranted in the economic sector concerned to maintain or create a share in the market for those goods in Class 21.
In respect of the remaining goods in Class 21, in the Cancellation Division’s view, the evidence provided does not show use of the mark for Household or kitchen utensils and containers (not of precious metal or coated therewith); sponges; material used in brush making; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in buildings); glassware, porcelain and earthenware (not included in other classes).
In conclusion, in the present case, the evidence provided shows genuine use of the trade mark only for the following goods:
Class 3: Hair lotions, hair preparations and treatments.
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 Cancellation Division’s view, the evidence submitted shows use of the contested mark for hair lotions, hair preparations and treatments (Class 3).
In this case, it can therefore be concluded from this evidence that a market share has been created for these goods. The Cancellation Division holds that the EUTM proprietor has proven that the contested mark has been genuinely used for the abovementioned goods included in Class 3. However, not enough evidence was provided to consider use to be proven in relation to the remaining goods in Classes 3, 8 and 21.
Conclusion
It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods, for which it must, therefore, be revoked:
Class 3: Soaps; perfumery, essential oils, cosmetics, except hair preparations and treatments, dentifrices.
Class 8: Hand tools and implements (hand operated); Cutlery; knives; pocket knives.
Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes, except paintbrushes; material used in brush making; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in buildings); glassware, porcelain and earthenware (not included in other classes).
The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect.
According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 14/03/2016
Final remark
Although there is a pending declaration pursuant to Article 28(8) EUTMR regarding Class 8 of the contested mark, it is not necessary, in the present case, to suspend the proceedings as the declaration does not have effect on the outcome of this decision. The revocation request is directed against all the goods of the contested mark. As is clear from Article 28(8) EUTMR, the declaration merely expressly reflects the original intention of the EUTM proprietor of the scope of goods to be registered. Therefore, the EUTM proprietor was aware that the goods claimed in the declaration were also contested and under the obligation of use. Since the evidence submitted does not demonstrate use for any of the goods claimed by the declaration, the mark cannot be left on the register in relation to them.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.
Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Cancellation Division
|
Michaela SIMANDLOVA |
Carmen SÁNCHEZ PALOMARES |
Maria Belén IBARRA DE DIEGO |
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.