CANCELLATION No 11932 C (REVOCATION)

Shakazoola, 15-19 Quai Gallieni, 92150 Suresnes, France (applicant), represented by Cabinet Beau De Lomenie, 158, rue de L'Université, 75340 Paris Cédex 07, France (professional representative)

a g a i n s t

Axel Springer SE, Axel-Springer-Str. 65, 10888 Berlin, Germany (EUTM proprietor), represented by Jonas Rechtsanwaltsgesellschaft MbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative).

On 03/03/2017, 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 92 411 are revoked as from 14/10/2015 for part of the contested goods and services, namely:

Class 9:        Sound, image and data carriers of all types, in particular audio tapes, cassettes, CDs, recording discs, DAT tapes, video tapes, diskettes, CD-Roms, all the aforesaid goods in pre-recorded and non pre-recorded form, except for pre-recorded DVDs; apparatus for recording, transmission or reproduction of sound, images and data of all types; calculating machines, data processing equipment and computers.

Class 16:        Printed matter, except for magazines, periodicals; stationery; instructional and teaching material (except apparatus).

Class 28:        Computer games.

Class 35: Marketing, market research, market analysis, opinion polling; advertising research; advertising, in particular radio, cinema, videotext and teletext advertising; advertising marketing, in particular in the aforesaid media and via the aforesaid media; distribution of goods for advertising purposes; advertising agencies; business and organisation consultancy; arranging and concluding commercial transactions for others; arranging contracts for the acquisition and sale of goods.

Class 36:        Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38:        Telecommunications, in particular electronic information and communication services using data processing for general and closed groups of users; sound, image and data transmission by cable, satellite, computer, computer networks, telephone and ISDN lines and any other transmission media; broadcasting of film, television, radio, videotex, teletext programmes or transmissions; transmission and forwarding of radio and television programmes, including by wire, cable, satellite communications, videotex, internet and similar technical installations; supplying and communicating information stored in data bases, in particular including by means of interactive computer systems; gathering and supplying messages and general information; telephone and/or computerised order services for teleshopping.

Class 41:        Education; providing of training; sporting and cultural activities; production of radio, videotext, teletext programmes or transmissions; radio entertainment; rental of films, in particular rental of advertising films; publication of printed matter, in particular prospectuses, catalogues, books, newspapers.

Class 42:        Development of electronic television program guides; setting up and operating a data base; production of data processing programs; copyright and intellectual property exploitation for others; editing services.

3.        The European Union trade mark remains registered for all the remaining goods and services, namely:

Class 9:        Pre-recorded DVDs.

Class 16:         Magazines; periodicals.        

Class 35:        Advertising, in particular television and print advertising.

Class 41:        Entertainment; production of film, television programmes or transmissions; television entertainment; publication of printed matter, namely periodicals.

4.        Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 92 411  (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely

Class 9:        Sound, image and data carriers of all types, in particular audio tapes, cassettes, CDs, recording discs, DAT tapes, video tapes, diskettes, CD-Roms, all the aforesaid goods in pre-recorded and non pre-recorded form; apparatus for recording, transmission or reproduction of sound, images and data of all types; calculating machines, data processing equipment and computers.

Class 16:        Printed matter; stationery; instructional and teaching material (except apparatus).

Class 28:        Computer games.

Class 35:        Marketing, market research, market analysis, opinion polling; advertising research; advertising, in particular radio, television, cinema, print, videotext and teletext advertising; advertising marketing, in particular in the aforesaid media and via the aforesaid media; distribution of goods for advertising purposes; advertising agencies; business and organisation consultancy; arranging and concluding commercial transactions for others; arranging contracts for the acquisition and sale of goods.

Class 36:        Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38:        Telecommunications, in particular electronic information and communication services using data processing for general and closed groups of users; sound, image and data transmission by cable, satellite, computer, computer networks, telephone and ISDN lines and any other transmission media; broadcasting of film, television, radio, videotex, teletext programmes or transmissions; transmission and forwarding of radio and television programmes, including by wire, cable, satellite communications, videotex, internet and similar technical installations; supplying and communicating information stored in data bases, in particular including by means of interactive computer systems; gathering and supplying messages and general information; telephone and/or computerised order services for teleshopping.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; production of film, television, radio, videotext, teletext programmes or transmissions; radio and television entertainment; rental of films, in particular rental of advertising films; publication of printed matter, in particular prospectuses, catalogues, books, newspapers and periodicals.

Class 42:        Development of electronic television program guides; setting up and operating a data base; production of data processing programs; copyright and intellectual property exploitation for others; editing services.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 14/10/2015 claiming that the EUTM proprietor has not put its European Union trade mark registration to genuine use for a continuous period of five years.

The EUTM proprietor submitted observations and evidence of use (listed below) on 24/03/2016, thus within the time limit granted after a request for extension. The EUTM proprietor argues that it made genuine use of the mark in the territory of the EU for the relevant goods and services during the relevant period. In particular, the EUTM proprietor notes that ‘Auto Bild’ is the world’s largest car cross-media brand and gives detailed explanation in relation to each piece of evidence. It argues that the mark is used in relation to: printed matter such as magazines, electronic publications and the corresponding publications services (Items 1 to 22); sound, image and data carriers of all types, such as pre-recorded DVDs (Items 23 to 25); marketing and advertising services (Items 26 to 30); insurance, financial and monetary affairs (Items 31 and 32); telecommunications and internet services, broadcasting of film, television programs, transmission of television programs (Items 33 to 39); production of film, TV, radio, videotext, teletext programs or transmissions, radio and TV entertainment services and publication of printed matter and entertainment, sporting and cultural activities (Items 40 to 42); editing services, setting up and operating a data base; production of data processing programs (Item 43). Therefore, the revocation is partially unfounded and has to be refused.

 

The applicant argues that, with the exception of ‘printed matter’, most of the materials submitted do not relate to the whole relevant period and the frequency of use is not proven. According to the applicant there are very few items and arguments for the remaining more than 30 goods and services. With the exception of ‘printed matter’, there is no concrete information in relation to the volume of sales or the turnover on the market. Several items of the evidence are in German, which is not the language of proceedings and should be disregarded. In relation to the respective goods, the DVDs are not sold as independent goods but are distributed as a promotional item with the magazines; there is no evidence of use in relation to ‘stationery; instructional and teaching material (except apparatus)’ in Class 16 and ‘computer games’ in Class 28. In relation to the respective services, there is no actual evidence of provision of advertising or marketing services to third parties; no use is proven for the services in Class 36 either. The items 33 to 39 do not prove that the EUTM proprietor used its trade mark in relation to telecommunications or broadcasting of radio, TV, etc. services in Class 38. As regards the services in Class 41, the proprietor seems to be a sponsor rather than the organiser of the events and awards (Items 41 and 42) and the evidence (Item 40) is insufficient for proving use in relation to ‘publication services’. There is no use for any of the services in Class 42 either. The challenged EUTM should be revoked in its entirety.

In reply, the EUTM proprietor argues that most of the evidence refers to the relevant period. It also relates to the relevant territory and the extent of use shown is sufficient. The documents that have not been translated in English are self-explanatory. As regards the goods in Class 9, the price of the magazines includes the DVDs and more than 200 000 DVDs have been evidenced to be distributed. The proprietor has proven use for advertising, and insurance services in Classes 35 and 36 as well as use for the services in Classes 41 and 42. As regards the services in Class 38, use of the various ‘Auto Bild’ online portals/online magazines constitutes use for ‘telecommunications services’. The application for revocation should be rejected.

On 31/10/2016, the Cancellation Division notified the parties that the adversarial part of the proceedings was closed and that a decision would be taken in due course.

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 15/06/1998. The revocation request was filed on 14/10/2015.  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 14/10/2010 to 13/10/2015 inclusive, for the following contested goods and services:

Class 9:        Sound, image and data carriers of all types, in particular audio tapes, cassettes, CDs, recording discs, DAT tapes, video tapes, diskettes, CD-Roms, all the aforesaid goods in pre-recorded and non pre-recorded form; apparatus for recording, transmission or reproduction of sound, images and data of all types; calculating machines, data processing equipment and computers.

Class 16:        Printed matter; stationery; instructional and teaching material (except apparatus).

Class 28:        Computer games.

Class 35:        Marketing, market research, market analysis, opinion polling; advertising research; advertising, in particular radio, television, cinema, print, videotex and teletext advertising; advertising marketing, in particular in the aforesaid media and via the aforesaid media; distribution of goods for advertising purposes; advertising agencies; business and organisation consultancy; arranging and concluding commercial transactions for others; arranging contracts for the acquisition and sale of goods.

Class 36:        Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38:        Telecommunications, in particular electronic information and communication services using data processing for general and closed groups of users; sound, image and data transmission by cable, satellite, computer, computer networks, telephone and ISDN lines and any other transmission media; broadcasting of film, television, radio, videotex, teletext programmes or transmissions; transmission and forwarding of radio and television programmes, including by wire, cable, satellite communications, videotex, internet and similar technical installations; supplying and communicating information stored in data bases, in particular including by means of interactive computer systems; gathering and supplying messages and general information; telephone and/or computerised order services for teleshopping.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; production of film, television, radio, videotex, teletext programmes or transmissions; radio and television entertainment; rental of films, in particular rental of advertising films; publication of printed matter, in particular prospectuses, catalogues, books, newspapers and periodicals.

Class 42:        Development of electronic television program guides; setting up and operating a data base; production of data processing programs; copyright and intellectual property exploitation for others; editing services.

On 24/03/2016 the EUTM proprietor submitted evidence as proof of use.

The evidence consists of the following:

• Item 1: Printout from Wikipedia of 23/03/2016 showing the entry for ‘Auto Bild’. It is mentioned, inter alia, that ‘Auto Bild’ is a German automobile magazine, first published in 1986 on a weekly basis and that the website of the magazine was started in 1996. In addition, it is mentioned that the circulation of the magazine was 592,245 copies in Germany in 2010, making it the fourth best-selling European automobile magazine, and that in 2012 its circulation in Germany was 555,500 copies. Furthermore, it is written that ‘Auto Bild’ has worldwide licensed editions, of which more than 7 million copies are sold every month and that it is published in 36 countries, such as France, the United Kingdom, Poland, Spain, Italy, Romania, etc.  

• Item 2: Media data publication/report of the EUTM proprietor entitled ‘International Licensing’ 2012/2013. The report contains various chapters with information on the licensing team and benefits, company key facts, online platforms, international activities, magazines and newspapers in Germany, car titles (for example, Auto Bild international, Auto Bild concept, Auto Bild online, Auto Bild Sportscars, Auto Bild Motosport, Auto Bild Allrad, Auto Bild Klassik, etc.) and computer and home entertainment titles (for example, computer Bild international, computer Bild test competence, computer Bild online, etc.).

Page 23 of the report mentions that ‘Auto Bild’ is the world’s largest car cross-media brand, selling 7 million copies each month in 33 countries, describing the world of cars in print, mobile, online and depicts the covers of various ‘Auto Bild’ magazines and their launch dates, such as Croatia 1995, Austria 1998, Greece 1993, Portugal 2000, Poland 1995, Estonia 2004, Hungary 2004, Slovenia 2007, Bulgaria 2002, etc. Page 24 of the report contains key facts, inter alia, that ‘Auto Bild’ is the market leader in Germany, the copy price is 1.60 EUR, paid circulation is 539 471 (source IVW2011/IV – IVW is an independent company, standing for ‘Information society for the assessment of circulation of advertising media’), etc. In relation to the online portal autobild.de, it is written that it is a leading provider of content on motor vehicles on the internet, it was launched in 1986, page impressions are 109 million per month (source, IVW 2012), unique users are 2 million per month (source, AGOF 2011) and visits are 8 million per month (source, IVW 2012).

Page 27 of the report entitled ‘Auto Bild Video’ mentions that ‘Auto Bild’ offers a wide range of ‘Auto Bild’ ‘moving pictures’ over web TV and on frequent DVDs on the printed edition. The information about AutoBild.tv is, inter alia: launch date 2007; more than 2 300 in-house produced videos; daily updates; integrated in autobild.de; tests, auto shows, first drives, etc. The information about AutoBild DVDs is, inter alia: at least 5 DVDs per year; DVDs on the edition with exclusive video material and highlights from international auto shows and tests of all new cars; DVDs for special occasions such as anniversaries of car brands or specific models.

Pages 28 and 29 are devoted to ‘Auto Bild Testing and Awards’ and contain information about ‘Germany’s best car driver’ and ‘Golden Steering Wheel award’ (leading car award in Europe given jointly by ‘Auto Bild’ and ‘Bild am Sonntag’).

Page 30 of the report mentions that ‘Auto Bild’ also publishes line extensions, which follow the same editorial concept, such as ‘Auto Bild allrad’  (the offroad magazine market leader, monthly edition, launched in 2002 and 0.28 million readers in 2012 as per IVW), ‘AutoBild sportscars’  (monthly magazine, launched in 2001 in DE with 0.32 million readers in 2012 (as per IVW), issued also in DE, PL, CZ and ES), ‘AutoBild klassik’ (monthly magazine about old cars, launched in 2007 in DE with 0.48 million readers in 2011 (as per IVW), issued also in FI and ES).

• Item 3: Document entitled ‘Mediengruppe Auto, Computer & Sport – Auto Bild Gruppe’ by Axel Springer (the EUTM proprietor) showing the dates 16/02/2016 and 08/03/2015. The document contains various information, for example that the ‘Auto Bild’ group of editions is Europe’s number one with 13.54 million contacts each month (Print + Online + Mobile, source AGOLF digital facts 2016), that there is a steady rise of readers of ‘Auto Bild’, for example 0.9 million in 2007, 1.9 million in 2010, 2.9 million in 2013 and 4.9 million in 2015. It is mentioned that the product portfolio of ‘Auto Bild’ magazine in 2016 consists of 7 periodicals, 8 special editions, 1 website and 6 apps. In addition, there is detailed information and statistics about various ‘Auto bild’ trade marks, awards and events (for example, ‘Auto Bild best car driver’, ‘Auto bild motor sport lounge’, ‘Auto Bild car of the year’, etc.), digitalization (such as the website  autobild.de, platform ‘Auto Bild Markt’, ‘Auto bild TV’, ‘Auto Bild’ stand alone DVD, ‘Auto bild’ in Facebook/Twitter, etc.), market share of magazines (72.8% of ‘Auto Bild’ as of 25/01/2016, ‘Auto Bild allrad’ 76.2%, ‘AutoBild klassik’ 25,8%, ‘Auto Bild sports cars’ 59,1% as of 11/01/2016, source IVW, etc.), ‘unique users’ and ‘visits’ annual statistics for 2007-2015 for autobild.de and the TV program ‘Auto Bild TV – das Magazin’ on German TV  transmitter No 24 since 10/10/2014 (each Friday on 18:25 h with 24 minutes playtime).

• Item 4: Picture of January 2016 of the 30th anniversary edition of the magazine ‘Auto Bild’.

• Item 5: Printout from the website www.esomar.org (institute for market and opinion research and surveys) referring ‘Auto Bild’ (in 2012) as ‘Europe’s biggest magazine’.

• Item 6: Printout from the www.fippcongress.com/news in relation to FIPP Congress 2015 mentioning, inter alia, that ‘Auto Bild’ is the world’s biggest car magazine with publications in 33 countries and over 30 million readers worldwide.

• Item 7: Printouts from www.ivw.eu (independent company, IVW standing for ‘Information society for the assessment of circulation of advertising media’) displaying circulation figures of ‘AUTO BILD’ in the respective quarters of the years 2011 to 2015 (ranging from approximately 600.000 to 840.000 per quarter).

• Item 8: Pictures of the first pages of a number of ‘AUTO BILD’ magazines distributed in Germany in the period 01/10/2010 to 01/10/2015.

• Item 9: Printout from www.mediaimpact.de showing information (launch year, net paid circulation numbers, frequency and prices) in relation to ‘Auto bild’ magazine for a number of EU countries, for example Romania (9.273 circulation in 2013), Slovenia (28.743 in 2013), Spain (16,640 in June-September 2015), Bulgaria, Latvia, Estonia, Greece, Croatia, Finland, etc.  

• Item 10: Pictures of the cover pages of a large number of Spanish ‘Auto bild’ magazines dated in the period 2012 – 2015.

• Item 11: Pictures of the cover pages of a large number of Lithuanian ‘Auto bild’ magazines dated in the period 2008 – 2015.

• Item 12: Pictures of the cover pages of Slovak ‘Auto bild’ magazines dated in the period 2013 – 2016.

• Item 13: Pictures of covers and other pages of Slovene ‘Auto bild’ magazines dated in the period 2012 – 2016.

• Items 14, 15, 16, 17, 20, 21 and 22: Pictures of covers and other pages of the ‘Auto bild’ magazines in Croatia, Greece, Finland, Bulgaria, Hungary, Romania and Latvia dated in the period 2010 – 2016.

• Item 18: Information from the Bulgarian Media Agency ‘Piero 97’ dated 2015, mentioning that ‘for 25 years ‘Auto Bild’ has the biggest circulation and is the most read car magazine in Bulgaria’.

• Item 19: Media circulation data of ‘Auto Bild’ in relation to Hungary.

• Item 23: Pictures of 11 ‘Auto Bild’ DVDs and pictures of the ‘Auto Bild’ magazines with which the DVDs were distributed dated in 2009, 2010, 2011, 2012, 2013, 2014 and 2015.  

• Item 24: Pictures of four ‘Auto Bild Ratgeber DVD’ (‘Auto Bild adviser DVD’) dated October 2012. It is explained that ‘Auto Bild editor Lars Busemann shows good entertainment and good show in four DVDs’.

• Item 25: Printout from www.amazon.de showing DVDs for sale such as ‘Auto Bild Ratgeber Gebrauchtwagenkauf’ (‘Auto Bild Purchase of used cars’).

• Item 26: Printout from de.statista.com showing statistics regarding the development of circulation and advertising revenues of automobile magazines in Germany in the year 2012. The gross advertising revenue for ‘Auto Bild’ is indicated as 62.9 million for 2012.

• Item 27: Printout from www.mediaimact.de indicating, inter alia, prices and formats for placement of advertisements in ‘Auto Bild’ in 2015.

• Item 28: (52 pages) Copies of ‘Auto Bild rate card No.32 valid as of 1st of January 2015’, ‘Auto Bild rate card No.29 valid as of 1st of 2012’, ‘Auto Bild rate card No.28 valid as 1st of January 2011’ and ‘Auto Bild rate card No.27 valid as of 1st of January 2010’ containing detailed information about advertising rates.  

• Item 29: (41 pages) Copies of the German version Preisliste Nr.31 gültig ab 1.1.2014 (Price list no.31 valid as of 01/01/2014) and Preisliste Nr.30 gültig ab 1.1.2013 (Price list no.30 valid as of 01/01/2013) with detailed information about ‘Auto Bild’ advertising rates.

• Item 30: Information brochure entitled “30 Jahre AUTO BILD 2016 Das Jubiläumsjahr” (‘30 years AUTO BILD 2016, the anniversary year) with information on the special magazines, additional pages with special themes, special advertising offers and discounts, etc.

• Item 31: Printout from www.autobild.de/ratgeber/kfz-versicherung showing information about automobile insurance.

• Item 32: Screenshots from www.autobild.de showing the availability of various insurance calculators.

• Item 33: Printout from the website of IVW (independent company, ‘Information society for the assessment of circulation of advertising media’) showing detailed data about the visits to the website www.autobild.de (for example, between 8 million and 14 million visits and between 94 and 135 million page impressions in the period between March 2013 and March 2014).

• Item 34: Printout from de.statista.com showing the monthly number of unique users of www.autobild.de from November 2014 to November 2015 (ranging between 4.06 and 5.77 million).

• Item 35: Printouts from the websites: www.autobild.ro (Romania),  www.auto-bild-bulgaria.com (Bulgaria), www.autobild.fi (Finland), www.autobild.gr (Greece), www.autobild.sk (Slovakia), www.autobild.lt (Lithuania) and www.autobild.es (Spain).

• Item 36: Printout from www.axelspringer.de displaying a press article dated 03/09/2009 about the launch of the online ‘Auto BiId’ portal in Lithuania.

• Item 37: Printout from www.mediaimpact.de showing information for the Spanish online portal www.autobild.es. For example, the launch year is 2009 and the visits per month in August 2015 are indicated as nearly 2.8 million.

• Item 38: Printout from www.autobild.de showing an article dated 16/10/2014 entitled ‘Auto Bild on TV’. The article mentions that ‘… as of now AUTO BILD TV – Das Magazin shows news from the automobile world on TV. Every Friday, Saturday and Monday at N24! …’.

• Item 39: Screenshots from YouTube showing pictures of a number of videos from ‘Auto Bild TV’, for example:

 .

• Item 40: Printout from www.autobild.de showing the first page of an ‘Auto Katalog’ (‘car catalogue’).

• Item 41: (35 pages)

– Printout from de.wikipedia.org showing the entry for ‘Auto Bild’. In the section ‘Auto Bild’ awards there is information in relation to the following awards/prizes ‘Das Goldene Lenkrad’, ‘Sportscars des Jahres’, ‘Allrad-Auto des Jahres’, ‘Das Goldene Klassik-Lenkrad’ and ‘Die Goldene Möhre’.  

– A press article dated 10/11/2015 in relation to ‘Das goldene Lenkrad’ award (‘The Golden Steering Wheel’).

– Information from media-impact.de in relation to ‘Auto Bild Awards 2016’, such as ‘Das goldene Lenkrad’ award (‘The Golden Steering Wheel’), ‘Connected Car Award’ and ‘Die Besten Marken’.

– A press article from the magazine ‘markenartikel’ dated 11/11/2015 in relation to the ‘Goldenes Lenkrad’ award’ containing pictures from the event ceremony.

– Printout from www.bild.de/auto showing an article about ‘Das goldene Lenkrad 2014’ award ceremony.

– Printout from www.bild.de/auto showing an article about ‘Das goldene Lenkrad 2015’ award.

– Printout from www.polizeioldtimer.de showing an article about ‘Das goldene KLASSIK Lenkrad 2014’ award ceremony.

– Printout from www.bild.de/auto showing an article about ‘Das goldene Lenkrad 2014’ award ceremony.

• Item 42: Pictures from ‘Auto Bild’ Awards events, namely: ‘Auto Bild Wertmeister 2015’, ‘Goldenes KLASSIK-Lenkrad 2015’, ‘Auto Bild ALLRAD car of the year 2015’, ‘Goldenes Lenkrad 2014’, ‘Auto Bild ALLRAD car of the year 2014’, ‘Auto Bild ALLRAD car of the year 2013’, ‘Das goldene Lenkrad 2012’, ‘Allrad auto des jahres 2011’, ‘Das goldene Lenkrad 2011’.

 

• Item 43: Information about ‘AUTO BILD’ apps:

– Printout from axelspringer.de showing information dated 27/09/2012 regarding, such as ‘Auto Bild International app’ (subscription prices are included).

– Information from itunes.apple.com/de/app/auto-bild in relation to ‘Auto-Bild’ apps (prices are included).

– Printout from Google Play store showing ‘Auto Bild’ Android Apps for Google Play.

Preliminary remarks

The applicant argues that the EUTM proprietor did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the EUTM proprietor is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR, applicable by analogy to cancellation proceedings).

Taking into account the nature of the documents which have not been translated, such as part of the price lists, or Items 31 and 32 (printouts from www.autobild.de) and Items 41 and 42 (printouts from various websites and pictures), the Cancellation Division considers that there is no need to request a translation. This is because some of them are self-explanatory (such as the pictures). In relation to the price lists, the EUTM proprietor also provided a number of price lists in English. Taking into account that the structure and contents of all price lists is quite similar, there is no need to translate all of them. Finally, in relation to the printouts from various websites, it must be noted that the EUTM proprietor provided explanations in its observations as regards their content, as well as partial translation of some of the important information contained therein. In addition, some of the printouts are self-explanatory as they are accompanied by pictures. Consequently, it is considered not necessary to request additional translations.  

Assessment of genuine use – factors

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period that is, from 14/10/2010 to 13/10/2015.

While there are some pieces of evidence dated outside the relevant period, the large majority and sufficient amount of the documents fall within the relevant period of time. The Cancellation Division, therefore, considers that the requirements in this respect have been met and there are 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 documents show that the place of use is many different countries in the European Union throughout the relevant period. This can be inferred from the language of the documents (especially the different language versions of the magazines as well as the domain name extensions). Therefore, the evidence relates to the relevant territory.

In relation to some of the goods and/or services, direct evidence has been provided only for the territory of Germany. However, this is also considered sufficient. In territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of a market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use. As the Court indicated in ‘Leno Merken’ (judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816), it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not. A de minimis rule cannot be laid down (paragraph 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (paragraph 58). As mentioned, although some of the evidence refers only to the territory of Germany, it is a sufficiently large market satisfying the European requirements and standards for genuine use.

Consequently, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning place of use.

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 EUTM was used as a trade mark. The evidence filed by the EUTM proprietor undoubtedly shows a link between the goods/services in question and the use of the mark and that the EUTM was used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered.

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.

Much of the evidence shows use of the trade mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the contested EUTM under Article 15 EUTMR.

In addition, there are some uses in the evidence of the he registered sign  together with additional verbal elements such as , , ‘klassik’, ‘motosport’, ‘sportscars’,  etc.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

The Cancellation Division considers that these uses are all acceptable variations and comply with Article 15(1)(a) EUTMR. This is because all these uses prominently show the mark as registered and the additional words are either descriptive (for example, they stand for ‘television’ or indicate domain name extensions for geographic origin) or they constitute use of the house mark plus additional words designating a separate line/sub-brand/model of goods/services.

 

Consequently, considered as a whole, the evidence gives indications of the use of the mark as registered within the meaning of Article 15(1)(a) EUTMR.

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 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.

The Cancellation Division is of the opinion that for part of the goods and services for which the EUTM is registered, the evidence (especially the market share figures and statistics provided by independent sources, as well as the detailed company reports, price lists, press releases and articles from independent media) gives sufficient information regarding the extent of use of the mark.

The applicant argues that with the exception of ‘printed matter’, there is no concrete information in relation to the volume of sales or the turnover on the market. In this regard the Cancellation Division observes that, for part of the goods and services (listed herein below in more detail) the evidence submitted clearly demonstrates that there has been public and outward use of the mark to a sufficient extent. This can be inferred from the market share figures and advertising revenue figures corroborated by independent sources, as well as the detailed company reports, price lists, press releases and articles from independent media. In addition, the evidence shows that the EUTM proprietor has sold/offered its goods/services uninterruptedly throughout the whole period 2010 – 2015 and to a large territorial scope. Taking into account the nature and price of the goods/services, the international nature, reach and scope of the business of the proprietor, as well as the detailed information provided from a variety of sources, it is considered that the exploitation of the mark is far from being merely token and not only in relation to ‘printed matter’ (see below).  

In this regard it should be remembered that evidence of use may be of an indirect/circumstantial nature. Such indirect evidence can play a decisive role in the overall assessment of the evidence submitted. Its probative value has to be carefully assessed. For instance, the judgment of 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42-43, found that even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment. In the present case, aside from the direct sales information such as the market share and advertising revenue figures, it must be noted that the EUTM proprietor provided numerous additional evidence, including from independent sources that make it possible to draw conclusions in relation to the extent of use of some of the goods and services.

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 Cancellation Division will explain in more detail, in the next section – Use in relation to the registered goods and services, for which specific goods and/or services the extent was proven.

Consequently, taking into account the evidence in its entirety and based on an overall assessment, the Cancellation Division considers that the evidence gives sufficient information regarding the extent of use of the mark.

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 EUTM is registered for goods and services in Classes 9, 16, 28, 35, 36, 38, 41 and 42. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the goods and services for which it is registered.

According to Article 51(2) CTMR, where there are grounds for revocation in respect of only some of the goods or services for which the contested mark is registered, the holder’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)

Use for the goods in Class 9

The evidence shows that the EUTM proprietor sold pre-recorded DVDs together with its magazine throughout the relevant period in Germany. This can be seen from the media reports of the proprietor (Items 2 and 3), the pictures of magazines with DVDs dated in 2010, 2011, 2012, 2013, 2014 and 2015 (Item 23) and the total circulation figures of the editions of magazines with DVDs (Item 7). The applicant argues that there is no use for the DVDs, as they are not sold as independent goods but are distributed as a promotional item with the magazines. However, as seen by the evidence, the DVDs were actually included in the price of the magazines: the price of an ‘Auto Bild’ magazine without a DVD is around 1.60 to 1.80 EUR whereas the price of a magazine with a DVD is from around 3.00 to 5,95 EUR. Furthermore, as mentioned, the EUTM proprietor provided evidence enabling the Cancellation Division to determine the extent of use, in particular, sales figures for the magazine editions accompanied by a DVD. There is evidence suggesting that the proprietor also offered stand alone DVDs apart from the magazines, for example DVDs for special occasions such as anniversaries of car brands or specific models (Item 2). In addition, Item 25 shows an offer for the sale of ‘Auto Bild’ DVDs on the topic of used cars.

Consequently, it is considered that the evidence shows that the contested mark has been used for pre-recorded DVDs. These goods belong to the broader category of goods sound, image and data carriers of all types, in particular audio tapes, cassettes, CDs, recording discs, DAT tapes, video tapes, diskettes, CD-Roms, all the aforesaid goods in pre-recorded and non pre-recorded form. As regards the scope of protection of these goods, it must be noted that the term ‘in particular’, used in the proprietor’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, this term introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

It is clear that the category sound, image and data carriers of all types, … , all the aforesaid goods in pre-recorded and non pre-recorded form is sufficiently broad for several subcategories to be identified within them. The evidence shows that the contested mark has been used only for pre-recorded DVDs. According to the Cancellation Division, these goods are sufficiently precisely defined to function as an independent subcategory. Therefore, it is considered that use has been demonstrated in relation to the mentioned specific goods only.  

No evidence was provided for any other goods in this class. Therefore, in view of the above and due to the lack of any evidence of use, it is considered that the EUTM proprietor failed to show use in relation to sound, image and data carriers of all types, in particular audio tapes, cassettes, CDs, recording discs, DAT tapes, video tapes, diskettes, CD-Roms, all the aforesaid goods in pre-recorded and non pre-recorded form, except for pre-recorded DVDs; apparatus for recording, transmission or reproduction of sound, images and data of all types; calculating machines, data processing equipment and computers.

Use for the goods in Class 16

The mark is registered for printed matter; stationery; instructional and teaching material (except apparatus).

There is ample evidence on file showing that the EUTM proprietor used the mark in relation to magazines; periodicals throughout the relevant period and territory. The EUTM proprietor submitted detailed circulation figures, including by independent sources.  

The EUTM covers, inter alia, printed matter. The Cancellation Division considers that this category is sufficiently broad for several subcategories to be identified within it. The concept of ‘printed matter’ covers goods which are sufficiently different in their intended purpose and end consumers, specific uses and channels of distribution, for several subcategories to be identified within it. There are many types of printed mater (such as books, catalogues, greeting cards, printed forms, magazines, newspapers, etc.). As mentioned above, the evidence shows use only for magazines, periodicals. These goods are sufficiently precisely defined to function as independent subcategories. Therefore, it is considered that use has been proven only for magazines, periodicals and not for the whole broad category printed matter.

The EUTM proprietor did not submit any evidence of use or arguments in relation to any of the remaining goods in this class. Therefore, no genuine use was proved for these goods.

Use for the goods in Class 28

The EUTM proprietor did not submit any arguments or evidence of use for the contested goods in Class 28. Therefore, it is concluded that the EUTM proprietor failed to show use in relation to these goods.

Use for the services in Class 35

The Cancellation Division finds that sufficient evidence was filed to prove the use of the contested EUTM for advertising services. In particular, the proprietor provided advertising revenue figures of ‘Auto Bild’ in 2012 from an independent source (Item 26) and detailed price lists for placement of advertisements for the years 2010, 2011, 2012, 2013, 2014 and 2015 (Items 29 and 30). Furthermore, as seen from the evidence (for example, page 11 of item 29), the advertisements were not only accessible through the printed version of the magazine but also through the website, TV channel and app of the proprietor. Consequently, the Cancellation Division finds that sufficient evidence was filed to prove the use of the EUTM for the broad category advertising, in particular television and print advertising. 

However, contrary to the arguments of the EUTM proprietor, there is no evidence on file showing that the proprietor provided or offered marketing or advertising marketing services to third parties. Marketing consist of the process that brings goods or services to the marketplace through planning, pricing, coordinating, promoting, selling, and distribution. There is no evidence on file that the EUTM proprietor provided or offered such services to clients. No evidence of use was filed for the remaining services in this class either. Therefore, it is considered that no use has been proven in relation to marketing, market research, market analysis, opinion polling; advertising research; advertising, in particular radio, cinema, videotext and teletext advertising; advertising marketing, in particular in the aforesaid media and via the aforesaid media; distribution of goods for advertising purposes; advertising agencies; business and organisation consultancy; arranging and concluding commercial transactions for others; arranging contracts for the acquisition and sale of goods.

Use for the services in Class 36

As regards the services in Class 36 the Cancellation Division cannot agree with the EUTM proprietor that the contested mark was used for any of these services. The proprietor argues that it provided insurance services such as information and advice on insurance as well as insurance calculators. However, this provision of information and advice does not constitute provision of insurance services as such. There is no evidence on file showing that the proprietor sold such services to consumers: it simply advertised/or informed about the insurance services of other companies.

There is no evidence on file showing that the EUTM proprietor provided insurance or any of the remaining services in this class to any third parties. The use must be public, i.e. it must be external and apparent to actual or potential customers of the services. The fact that the proprietor provided information about insurance does not mean that such services were available, offered or sold by the proprietor independently in order to maintain an outlet for them. The evidence does not give any indication of sales figures or commercial volume in relation to such services. Therefore, it is considered that no use has been shown in relation to any of the services in this class.

Use for the services in Class 38

The Cancellation Division finds that there is no evidence on file showing that the EUTM proprietor provided any of the services in Class 38. While there is evidence showing that the proprietor offered a TV program through a television channel (No 24), it did not provide telecommunication or broadcasting services to other companies or to consumers. The evidence shows that ‘Auto Bild’ offered a (web) TV program and/or production, which was offered to clients through other platforms. Consequently, the EUTM proprietor itself did not provide any telecommunication services to third parties.

The proprietor also claimed that it used the contested sign for telecommunications and internet services through the website www.autobild.de and other digital platforms such as autobild.sk, autobild.ro, autobild.fi, etc. However, as regards the services in Class 38, they are telecommunication services and they are rendered to a third party, by providing the means to communicate. Simply because a service is provided using telecommunication facilities does not mean that this is a telecommunication service, because what the services in Class 38 cover are the means to communicate and not the content of the communication. Therefore, it is evident that the proprietor has not provided any evidence of use of the contested sign in relation to these services; the evidence submitted identifies the proprietor as a provider of informational and entertainment content, etc., and not as a telecommunications provider.

Therefore, it is concluded that no genuine use was proved for the services in Class 38.

Use for the services in Class 41

There is sufficient evidence showing that the EUTM proprietor provided various entertainment services such as production of TV programs or broadcasts, organization and holding of entertainment and award ceremonies, as well as publication of printed matter, namely periodicals. Therefore, it is considered that use was proved in relation to: entertainment (the broad category) and the individually listed services production of film, television programmes or transmissions; television entertainment; publication of printed matter, namely periodicals. Although the term entertainment is quite broad, it is considered that use has been shown for the whole category. This is because the EUTM proprietor proved use for different types of entertainment services and, also, in order to respect the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, as reflected in the above-cited Aladin judgement.  

With regard to the services in Class 41, the applicant argues that, the proprietor seems to be a sponsor rather than the organiser of the events and awards. However, the Cancellation Division does not share this opinion. As attested by the evidence (Item 2, as well as Items 41 and 42), the EUTM proprietor was involved in organising award ceremonies such as ‘Golden Steering Wheel award’ (referred to as leading car award in Europe given jointly by ‘Auto Bild’ and ‘Bild am Sonntag’, ‘Sportscars des Jahres’, ‘Allrad-Auto des Jahres’, ‘Das Goldene Klassik-Lenkrad’ and ‘Die Goldene Möhre’. The proprietor filed sufficient evidence, including by independent sources, such as articles in the press, that such events took place throughout the relevant period. Furthermore, the trade mark can be clearly seen depicted on the award statues on the enclosed pictures (Item 42). In addition, as regards publishing services, it is clear from the evidence that the EUTM proprietor has used its trade mark in relation to the publication of various periodicals and related inserts and/or supplements such as ‘Auto Bild Sportscars’, ‘Auto Bild Motosport’, ‘Auto Bild Allrad’, ‘Auto Bild Klassik’, etc.

However, no evidence of use has been submitted in relation to the remaining services. Contrary to the arguments of the EUTM proprietor, there is no evidence on file showing that the proprietor provided or offered services such as sporting and cultural activities or publication of printed matter, such as prospectuses, catalogues, books. Sporting activities include the organization of sports competitions or providing facilities for golf, tennis and other sports, etc., provision of health club services for health and fitness training, etc. Cultural services often overlap with educational services but also include purely cultural activities such as providing museum facilities, orchestra services, etc. As regards Item 40, which consists of a printout from www.autobild.de showing the first page of an ‘Auto Katalog’ (‘car catalogue’), it should be mentioned that the fact that the EUTM proprietor published an online car catalogue on its website obviously does not constitute use in relation to publication of printed matter, namely catalogues.   Therefore, in the lack of any evidence, it is considered that no use has been proven in relation to education; providing of training; sporting and cultural activities; production of radio, videotext, teletext programmes or transmissions; radio entertainment; rental of films, in particular rental of advertising films; publication of printed matter, in particular prospectuses, catalogues, books, newspapers.

Use for the services in Class 42

The EUTM proprietor argues that it used the mark in relation editing services, setting up and operating a data base; production of data processing programs. However, the proprietor did not file any relevant evidence to prove such use. The fact that the proprietor provides/ sells apps does not constitute use in relation to production of data processing programs or setting up and operating a data base for third parties or for its users under the contested trade mark. Likewise, the proprietor does not seem to offer editing services to third parties. The Cancellation Division is not aware whether there was any consideration, in the form of a payment for example, made by third parties to the EUTM proprietor for editing services, for example. The fact that the EUTM proprietor is editing its content in-house or offers its goods/services through a website or an app, does not constitute providing editing services; production of data processing programs or setting up and operating a data base services for others.

No evidence of use or arguments were filed to show use of the trade mark in relation to the remaining services in this class either, namely development of electronic television program guides; copyright and intellectual property exploitation for others. Therefore, no genuine use was proved for these services.

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 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 the relevant factors time, place, extent and nature of use for some the contested goods and services in Classes 9, 16, 35 and 41 for which the mark is currently registered, namely:

Class 9:        Pre-recorded DVDs.

Class 16:         Magazines; periodicals.        

Class 35:        Advertising, in particular television and print advertising.

Class 41:        Entertainment; production of film, television programmes or transmissions; television entertainment; publication of printed matter, namely periodicals.

Therefore, the EU trade mark registration remains registered for the abovementioned contested goods and services and the application for revocation is not successful in this respect.

However, the evidence submitted is insufficient to prove genuine use of the contested EUTM in relation to the remaining contested goods and services, for which it must, therefore, be revoked.  

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods and services, for which it must, therefore, be revoked:

Class 9:        Sound, image and data carriers of all types, in particular audio tapes, cassettes, CDs, recording discs, DAT tapes, video tapes, diskettes, CD-Roms, all the aforesaid goods in pre-recorded and non pre-recorded form, except for pre-recorded DVDs; apparatus for recording, transmission or reproduction of sound, images and data of all types; calculating machines, data processing equipment and computers.

Class 16:        Printed matter, except for magazines, periodicals; stationery; instructional and teaching material (except apparatus).

Class 28:        Computer games.

Class 35:         Marketing, market research, market analysis, opinion polling; advertising research; advertising, in particular radio, cinema, videotext and teletext advertising; advertising marketing, in particular in the aforesaid media and via the aforesaid media; distribution of goods for advertising purposes; advertising agencies; business and organisation consultancy; arranging and concluding commercial transactions for others; arranging contracts for the acquisition and sale of goods.

Class 36:        Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38:        Telecommunications, in particular electronic information and communication services using data processing for general and closed groups of users; sound, image and data transmission by cable, satellite, computer, computer networks, telephone and ISDN lines and any other transmission media; broadcasting of film, television, radio, videotex, teletext programmes or transmissions; transmission and forwarding of radio and television programmes, including by wire, cable, satellite communications, videotex, internet and similar technical installations; supplying and communicating information stored in data bases, in particular including by means of interactive computer systems; gathering and supplying messages and general information; telephone and/or computerised order services for teleshopping.

Class 41:        Education; providing of training; sporting and cultural activities; production of radio, videotext, teletext programmes or transmissions; radio entertainment; rental of films, in particular rental of advertising films; publication of printed matter, in particular prospectuses, catalogues, books, newspapers.

Class 42:        Development of electronic television program guides; setting up and operating a data base; production of data processing programs; copyright and intellectual property exploitation for others; editing services.

The EUTM proprietor has proven genuine use for the remaining contested goods and services; 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 14/10/2015. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date. In particular, the applicant requested that the revocation should take effect from the date of 23/10/2012, which is the date on which the EUTM proprietor filed an opposition against the applicant’s EUTM application No 10 923 001 based on the contested EUTM. However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown sufficient legal interest to justify it.

Examples of a legitimate legal interest can be where the earlier date requested for the revocation to take effect may be of importance in parallel national infringement proceedings/claims for damages or where it can affect oppositions based on the revoked EUTM in countries where (unlike in the EUIPO system) the validity of the earlier right is only examined at the time of the filing of the opposition or of its substantiation). 

Consequently, given the lack of evidence of a sufficient legal interest on the part of the applicant, the EUTM proprietor’s rights must be partially revoked as from as of 14/10/2015.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Gueorgui IVANOV

Liliya YORDANOVA

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.