CANCELLATION No 13 440 C (REVOCATION)

Trademarkers  Merkenbureau C.V., Rijksweg Noord 72, 6071 KX Swalmen, The Netherlands (applicant),

a g a i n s t

MEO – Serviços de Comunicações e Multimédia, S.A., av. Fontes Pereira de Melo, nº 40, 1069-300 Lisboa, Portugal (EUTM proprietor) represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins, 10, 1050-218 Lisboa, Portugal (professional representative).

On 08/03/2017, the Cancellation Division takes the following

DECISION

1.        The application for revocation is upheld.

2.        The EUTM proprietor’s rights in respect of European Union trade mark No 4 359 303 are revoked in their entirety as from 05/08/2016.

3.        The EUTM proprietor bears the costs, fixed at EUR 630.

REASONS

The applicant filed a request for revocation of European Union trade mark No 4 359 303 ‘’ (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9:         Scientific, electrical, electronic telecommunications, telephone and communications apparatus and instruments for recording, transmission and reproduction of data, in particular of sound, images and voices; radio telephones, mobile and fixed telephones; modems; radio apparatus and instruments including radio pagers and radio facsimile apparatus and instruments; parts for all the aforesaid goods; data carriers, of all kinds, in particular phone cards; encoded cards; chip cards; smart cards; computer software; media for storing information, data, images and sound; machine readable media; digital music (downloadable) provided from a computer database or via the Internet, including MP3 Internet websites; personal digital assistants; satellite receiving and transmission apparatus and instruments; apparatus for listening to music downloaded from the Internet; battery chargers for use with telecommunications apparatus; computer mouse pads; adapters for use with telecommunications apparatus; films, video, audio and graphic images downloadable from the Internet; television apparatus and instruments; peripheral equipment for televisions and computers; electrical and electronic game apparatus included in class 9; computers, including laptops and notebooks; electronic personal organisers; electronic navigational and positional apparatus and instruments including global positioning systems; satellite navigational and positional apparatus and instruments; desk or car mounted units incorporating a loud speaker which permits hands-free use of a telephone handset; in-car telephone handset cradles; parts and fittings included in class 9 for all the aforesaid goods; computer programs and software; downloadable ringtones and graphics for mobile phones; CD-ROMs; electronic publications (downloadable) provided on-line from a computer database, the Internet or other electronic network.

Class 16:         Paper, cardboard and goods made from these materials, not included in other classes; printed matter; printed publications, books, magazines, newspapers, bulletins and brochures; articles of stationery; press products; office requisites (except furniture); educational and teaching material (except apparatus); posters, cardboard cards, photographs; writing stationery; writing instruments; envelopes (stationery); bookmarks; diaries including desk diaries; note books and address books; promotional and advertising material included in class 16.

Class 35:         Advertising; management of commercial business; business administration.

Class 37:         Construction, installation, maintenance and repair of apparatus and electrical, telecommunications and telephone systems.

Class 38:         Telecommunications, mobile and fixed telephone telecommunications, satellite telecommunications, cellular telecommunications, radio and cellular telephone telecommunications, radio facsimile, radio paging and radio communications; transmission and receiving by radio; hire, leasing and rental of telecommunications, radio, radio telephone and radio facsimile apparatus; communication of data by radio, telecommunications and by satellite; automatic telephone answering services; personal numbering services; loan of replacement telecommunications apparatus in the case of breakdown, loss or theft; provision of Internet services, in particular Internet access services; telecommunication of information (including web pages), computer programs and any other data; electronic mail services; provision of location based services for telecommunications apparatus; provision of wireless application protocol services including those utilising a secure communications channel; provision of information relating to or identifying telephone and telecommunications apparatus and instruments; provision of telephone directory services; data interchange services; transfer of data by telecommunications; broadcast or transmission of radio or television programmes; video text, teletext and viewdata services; messaging services, namely, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; unified messaging services; voicemail services; providing data network services; video conferencing; video telephone services; 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; delivery of digital music by telecommunications; operation of search engines; computer aided transmission of data, messages and images; computer inter-communication services; news agency services; transmission of news and current affairs information; telecommunications database services, namely enabling the consumer to download digital content from a network and server to his individual database; Providing chat-line services; provision of on-line access to exhibitions and exhibition services; organisation and operation of electronic conferencing, discussion groups and chat rooms.

Class 41:         Education; providing of training; entertainment; cultural activities.

Class 42:         Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

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

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.

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 15/09/2006. The revocation request was filed on 05/08/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 16/08/2016, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the goods and services for which it is registered. On 18/11/2016 the EUTM proprietor requested an extension of the time limit. On 25/11/2016 the Cancellation Division confirmed that the time limit had been extended. This time limit expired on 21/01/2017.

The EUTM proprietor did not submit any observations or evidence of use in reply to the application for revocation within the time limit.

According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.

Consequently, the EUTM proprietor’s rights must be revoked in their entirety and deemed not to have had any effects as from 05/08/2016.

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 costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Claudia SCHLIE

Raphaël MICHE

José Antonio GARRIDO OTAOLA

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 of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Annex 1 A(33) EUTMR).