CANCELLATION DIVISION
CANCELLATION No 13 990 C (REVOCATION)
Leisure Pass Group Limited, 58-60 Berners Street, London W1T 3BB, United
Kingdom (applicant), represented by A.A. Thornton & CO., 10 Old Bailey, London
EC4M 7NG, United Kingdom (professional representative)
a g a i n s t
Turisme de Barcelona, Rambla Catalunya, 123 pral., 08008 Barcelona, Spain (EUTM
proprietor), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain
(professional representative).
On 23/11/2017, 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
6 569 248 are revoked as from 03/11/2016 for some of the contested goods and
services, namely:
Class 16: Pamphlets, printed matter, catalogues, magazines, instructional and
teaching material, stickers.
Class 35: Commercial or industrial management assistance, distribution of
leaflets directly or by mail, distribution of samples, organisation of
exhibitions for commercial or advertising purposes, business
management assistance, import, export, advertising (except for
advertising in the field of tourism).
Class 39: Arranging, brokerage, reservation and contracting of tours, transport
and visits to cities, escorting and transport of travellers by land, sea
and air, arranging of cruises, tours and sightseeing (tourism).
3. The European Union trade mark remains registered for the following services:
Class 35: Advertising in the field of tourism.
4. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) No 2017/1001 (codification)
(‘EUTMR’), Delegated Regulation (EU) No 2017/1430 (‘EUTMIR’) and Implementing
Regulation (EU) No 2017/1431 (‘EUTMDR’), subject to certain transitional provisions.
All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be
understood as references to the Regulations currently in force, except where expressly
indicated otherwise.
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REASONS
On 03/11/2016, the applicant filed a request for revocation of European Union trade
mark registration No 6 569 248 (the contested EUTM), filed on 10/01/2008 and
registered on 16/12/2008, for the figurative sign below:
The request is directed against all the goods and services covered by the EUTM,
namely:
Class 16: Pamphlets, printed matter, catalogues, magazines, instructional and
teaching material, stickers.
Class 35: Commercial or industrial management assistance, distribution of leaflets
directly or by mail, distribution of samples, organisation of exhibitions for
commercial or advertising purposes, business management assistance,
import, export, advertising.
Class 39: Arranging, brokerage, reservation and contracting of tours, transport and
visits to cities, escorting and transport of travellers by land, sea and air,
arranging of cruises, tours and sightseeing (tourism).
The applicant invoked Article 58(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant alleges that the EUTM had not been put to genuine use in the EU
territory during a continuous period of five years in connection with the above goods
and services for which it is registered in Classes 16, 35 and 39.
In its response, the EUTM proprietor firstly introduces itself as the entity that has been
responsible for the promotion of the tourism in Barcelona since 1993. The proprietor
points put that it creates, manages and commercialises a series of tourism products,
among which ‘Barcelona Pass’ is included. The EUTM proprietor explains that the
contested mark is used to distinguish a tourism promotion service and consists of
discount coupons that are distributed through tour operators and travel agents.
According to the proprietor, the elaboration and distribution of these coupons implies
use of the mark for the relevant goods and services for the following reasons: the sign
distinguishes coupon booklet (goods in Class 16); the proprietor is responsible for the
distribution of the coupons, using the mark ‘Barcelona Pass’ not only to advertise the
companies offering their discounts through these coupons, but also to promote and
collaborate in the exploitation of the businesses that said companies offer on the
market (services in Class 35); the proprietor provides through the discount services
that it distributes with the EUTM, the reservation and contracting of excursions, tours
and guided visits to different places in the city of Barcelona (services in Class 39).
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In support of its claims, the EUTM proprietor submits evidence of use of the contested
EUTM – including information on the proprietor’s activities (Annex 1), coupon booklet
(Annex 2), invoices (Annexes 3 and 4), written statements from third parties (Annex 5) –
which will be analysed in detail in the following section.
In its reply, the applicant contests the probative value of the proprietor’s evidence and
states that this evidence fails to show use of the mark for the contested goods and
services. According to the applicant, the documentation fails to indicate that the EUTM
proprietor has seriously tried to acquire a commercial position in the tourism market
during the relevant period in the EU. In particular, the applicant raises the following
points:
the documentation refers only to the city of Barcelona;
some of the invoices are dated outside the relevant period and contain no
reference to the contested EUTM; another part of the invoices including the
mark were issued only to promote third parties’ services;
the coupon booklet referred to by the proprietor only demonstrates, if at all, that
it promotes third parties’ services; it is not shown that coupon booklets are
distributed at the proprietor’s information points; further, no tour operators and
travel agents distributing or selling coupons bearing the mark have been
identified; there is no evidence of sale of even a single booklet;
the only services in relation to which proof of use of the EUTM has been
submitted relate to the provision of “advertising space on the discount coupon
booklet for third parties” in Class 35; however, these services are not covered
by the mark.
In support of its arguments the applicant submitted the following documents:
Doc. 1 and 2: Extracts from the website bcnshop.barcelonaturisme.com.
Doc. from 3 to 6: Printouts from the website of Eurostat Statistics Explained providing
information on tourism industry in the EU.
Doc. 7: Copy of a witness statement filed by the applicant during application
proceedings for the EUTM No 14 276 059 ‘The London Pass’. The applicant points out
that the information provided within this statement shows that the business around the
contested mark is lower than the one carried out under the sign ‘The London Pass’.
In its rejoinder, the EUTM proprietor reiterates its previous arguments and contests the
applicant’s observations pointing out that the evidence should be considered in its
entirety and not through an individual assessment of each item thereof. The proprietor
further notes that its evidence has duly corroborated its arguments to the extent that
they show the following: the proprietor is the responsible body for the promotion of
tourism in Barcelona (annex 1); the ‘Barcelona Pass’ coupon booklet was used
between 01/04/2012 and 31/03/2013 (annex 2); third parties have purchased services
provided by the proprietor under the EUTM (annexes 3 and 4). Moreover, in the
proprietor’s view, bearing in mind that Barcelona is one of the most visited city of Spain,
use of the mark therein is sufficient to satisfy the factor of place of use in the EU
relevant territory.
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GROUNDS FOR THE DECISION
According to Article 58(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 Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the
indications and evidence of use must establish the place, time, extent and nature of
use of the contested trade mark for the goods and/or 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 16/12/2008. The revocation request
was filed on 03/11/2016. 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 03/11/2011 to 02/11/2016 inclusive, for the following
contested goods and services:
Class 16: Pamphlets, printed matter, catalogues, magazines, instructional and
teaching material, stickers.
Class 35: Commercial or industrial management assistance, distribution of leaflets
directly or by mail, distribution of samples, organisation of exhibitions for
commercial or advertising purposes, business management assistance,
import, export, advertising.
Class 39: Arranging, brokerage, reservation and contracting of tours, transport and
visits to cities, escorting and transport of travellers by land, sea and air,
arranging of cruises, tours and sightseeing (tourism).
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On 02/02/2017 the EUTM proprietor submitted the following evidence as proof of use:
Annex 1: Extracts from the website www.barcelonaturisme.com providing information
of the applicant’s activities. The document contains no reference to the EUTM.
Annex 2: Samples of “discount voucher-booklets” valid from 01/04/2012 to 31/03/2013
and bearing the contested EUTM. Each page of the booklet provides information and
discounts for a tourist attraction in Barcelona (i.e. ‘L‘Aquàrium de Barcelona’, ‘Caixa
Forum’, ‘Casa Batlló’, ‘Fundació Joan Miró’, etc.).
Annex 3: Accounting sheets accompanied by the corresponding (17) invoices issued
by the proprietor to clients in Barcelona on 30/04/2011. Each undertaking listed in the
accounting sheet is accompanied by a reference number which is also mentioned in
the invoices. The total turnover generated amounts to almost EUR 6 000.
Annex 4: Accounting sheets accompanied by the corresponding (16) invoices issued
by the proprietor to clients in Barcelona on 29/11/2012. Each undertaking listed in the
accounting sheet is accompanied by a reference number which is also mentioned in
the invoices. The total turnover generated amounts to almost EUR 11 000.
Annex 5: Written statements issued by third parties (the Spanish companies Sirenas,
S.A., Fundació Joan Miró, Ferrocarrils de la Generalitat de Catalunya, Barcelona de
Serveis Municipals (Zoo de Barcelona), L’Aquàrium de Barcelona and Area de
Transportes de Ocio de Barcelona) declaring that the proprietor have provided them
with promotional services under the mark ‘Barcelona Pass’ in the period 2012-2013.
Assessment of genuine use – factors
Time of use
The evidence must show genuine use of the EUTM within the relevant period, namely
from 03/11/2011 to 02/11/2016 inclusive.
In its submission, the proprietor claims that the invoices issued on 30/04/2011 should
be disregarded as they predate the relevant period.
Nonetheless, evidence referring to use outside the relevant period is disregarded
unless it contains conclusive indirect proof that the mark must have been genuinely
used during the relevant period as well. Events preceding or subsequent to the relevant
period may make it possible to confirm or assess more accurately the extent to which
the earlier mark was used during the relevant period and the EUTM proprietor’s real
intentions at the time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).
In this case, when considering the evidence as a whole (in particular, the booklets, the
invoices and the written statements), it appears that the proprietor started its business
under the EUTM almost six months prior to the relevant period (on 30/04/2011), and
that its services had been available on the market in a continuous period of
approximately two years (until 31/03/2013). Therefore, although a part of the invoices is
dated outside the relevant time period, they clearly refer to circumstances related
thereto.
Moreover, even though the most recent piece of evidence is dated in 2013, it must be
recalled that only trade marks whose genuine use was interrupted for a continuous
period of five years are subject to the sanctions provided for in Article 15(1) EUTMR
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and that it is sufficient for avoiding these sanctions that a trade mark was genuinely
used for only part of this period (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52
and 09/07/2009, R 623/2008-4, Walzer Traum (fig.) / Walzertraum (fig.), § 28).
Consequently, the use made of the mark between 2011 and 2013 is sufficient to
demonstrate that the EUTM was used in the relevant period.
Nature of use
Use as a trade mark
Nature of use requires, inter alia, that the contested EUTM 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.
From the evidence, it appears that the ‘Barcelona Pass’ mark has been used as a trade
mark. The documents submitted by the proprietor show that the mark had been
displayed on booklets and featured in accounting sheets and invoices as an indication
of the commercial origin of the proprietor’s services.
Thus, considering the evidence as a whole, the sign has been used as a trade mark.
Use of the mark as registered
‘Nature of use’ in the context of Article 10(3) EUTMDR further requires evidence of use
of the mark as registered, or of a variation thereof which, pursuant to Article 18(1)(a)
EUTMR, does not alter the distinctive character of the EUTM.
The contested mark is the following figurative sign:
The accounting sheets and the booklets show use of the mark either as registered or in
a coloured variant in red, which, in any event, does not alter its distinctiveness. Even
though the word element ‘Barcelona Pass’ appears alone in the text of the invoices, it
must be noted that it is normal not to reproduce figurative elements on text-documents
for practical reasons.
It follows that the evidence as a whole shows use of the mark as registered.
Use in relation to the registered goods and services
Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor
proves genuine use for the contested goods and services for which the EUTM is
registered.
The EUTM is registered for the following goods and services:
Class 16: Pamphlets, printed matter, catalogues, magazines, instructional and
teaching material, stickers.
Class 35: Commercial or industrial management assistance, distribution of leaflets
directly or by mail, distribution of samples, organisation of exhibitions for
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commercial or advertising purposes, business management assistance,
import, export, advertising.
Class 39: Arranging, brokerage, reservation and contracting of tours, transport and
visits to cities, escorting and transport of travellers by land, sea and air,
arranging of cruises, tours and sightseeing (tourism).
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 58(2) EUTMR, where there are grounds for revocation for 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.
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 only for the sub-
category or sub-categories to which the goods or services for which the trade mark has
actually been used belong (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45 and
13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 23).
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 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
has stated 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
sub-categories (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 46 and 51;
13/02/2007, T-256/04, Respicur, EU:T:2007:46, § § 24; 16/06/2010, T-487/08,
Kremezin, EU:T:2010:237, § 57).
According to case law, since consumers are searching primarily for a product or service
which can meet their specific needs, the purpose or intended use of the product or
service in question is vital in directing their choices. Consequently, since consumers do
employ the criterion of the purpose or intended use before making any purchase, it is of
fundamental importance in the definition of a sub-category of goods or services
(13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 29 and 30).
As can be seen in the documents, namely the extracts from the proprietor’s website,
the invoices and the booklets, it appears that the proprietor is a consortium that is
responsible for promoting the city of Barcelona as a tourist destination. Among its
activities, the proprietor promotes various tourist attractions by means of “discount
voucher booklets” bearing the ‘Barcelona Pass’ sign. The invoices and the written
statements show that several undertakings purchased the proprietor’s services in order
to have their tourist locations being promoted in the voucher-booklets (i.e. ‘L‘Aquàrium
de Barcelona’, ‘Caixa Forum’, ‘Casa Batlló’, ‘Fundació Joan Miró’, etc.).
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In its statement, the applicant argues that the proprietor’s evidence shows use of the
sign only for ‘provision of advertising space’, which, in its opinion, is a separate
category from advertising services in Class 35.
However, the Cancellation Division disagrees with the applicant. The EUTM covers,
among others, advertising that represent a wide category of services within which a
number of independent sub-categories can be identified. Taking into account that the
proprietor’s booklets are aimed at promoting third parties’ tourist attractions, the
Cancellation Division considers that advertising in the field of tourism forms a coherent
sub-category for which use has been shown.
On the other hand, contrary to the proprietor’s claims, there is no indication in the
documents that the mark was used for the remaining registered goods and services.
As correctly stated by the applicant, the proprietor’s evidence does not clarify whether
the booklets had been distributed among the general public (i.e. tourists). While there is
indication of advertising services requested by third parties, there is no indication of
any distribution activities among consumers. Therefore, the evidence does not allow
the Cancellation Division to find that the mark was used distribution of leaflets directly
or by mail, distribution of samples in Class 35 without resorting to probabilities or
suppositions.
Regarding the remaining services in Class 35 – namely commercial or industrial
management assistance, organisation of exhibitions for commercial or advertising
purposes, business management assistance, import, export – the fact that the mark is
used for promoting third parties’ business does not imply that the proprietor offers any
commercial, business or industrial consultancy to these undertakings. Further there is
no indication in the evidence that the proprietor is involved in the organisation of
exhibitions or in import/export activities.
Concerning the contested goods in Class 16, namely pamphlets, printed matter,
catalogues, magazines, instructional and teaching material, stickers, the fact that the
mark is displayed on booklets does not entail that the EUTM is used for pamphlets or
any kind of printed matter in this class. Indeed, the proprietor’s business is not the sale
of booklets, but it is to promote third parties’ tourist attractions through such items.
As to the contested services in Class 39, in essence, they all relate to transport,
sightseeing, tour guide and excursion services. From the evidence it appears that
these services can be eventually provided by the proprietor’s clients under their own
marks, but not by the proprietor itself under the contested mark.
In light of the above, the present assessment will continue taking into account that the
evidence has shown use of the EUTM for advertising in the field of tourism in Class 35.
Place and extent of use
The evidence must show that the contested EUTM has been genuinely used in the
European Union (see Article 18(1) EUTMR and Article 58(1)(a) EUTMR).
Concerning extent of use, it is settled case-law that account must be taken, in
particular, of the commercial volume of the overall use, as well as of the length of the
period during which the mark was used and the frequency of use (08/07/2004,
T-334/01, Hipoviton, EU:T:2004:223, § 35).
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On this issue, the applicant notes that the proprietor’s documentation contains
indication of use only in relation to the city of Barcelona. In its view, such use is not
sufficient to demonstrate use of the EUTM in the relevant territory, since the relevant
market for the contested goods and services is not restricted to a single city, but it
extends to the territory of the entire EU. The applicant claims that the fact that the
EUTM proprietor operates its business exclusively in Barcelona shows that it does not
attempt to expand its activities in EU relevant territory. According to the applicant,
considering that Spain is one of the most popular tourist destinations in the European
Union, the evidence submitted by the proprietor is insufficient to show that that there
had been an intention or an attempt to seriously acquire a commercial position in the
tourism industry.
In the case at hand, the entire EUTM proprietor’s evidence, namely the booklets, the
invoices and the written statements, shows that the place of use is ‘Barcelona’.
The question whether use of the mark in a single city is sufficient to prove genuine use
in the EU territory must be assessed in light of several factors, since the geographical
dimension of use of a trade mark is only one of the aspects to be considered.
As a general principle, it is apparent from the case law that the territorial borders of the
Member States should be disregarded in the assessment of ‘genuine use in the
[European Union]’ within the meaning of Article 18(1) EUTMR (19/12/2012, C-149/11,
Leno Merken, EU:C:2012:816, § 44). It is not necessary that the mark should be used
in an extensive geographic area for the use to be deemed genuine. It cannot be ruled
out that, in certain circumstances, the market for the goods or services for which an EU
trade mark has been registered is in fact restricted to the territory of a single Member
State. In such a case, use of the EU trade mark in that territory might satisfy the
condition for genuine use of an EU trade mark (02/02/2017, T-686/15, Cremcaffé by
Julius Meinl (fig.) / café crem (fig.), EU:T:2017:53, § 26 and 19/12/2012, C-149/11,
Leno Merken, EU:C:2012:816, § 50 and 54).
Use of an EUTM in a single Member State (15/07/2015, T-398/13, TVR ITALIA (fig.) /
TVR et al., EU:T:2015:503, § 57) or even in a single city may be geographically
sufficient (30/01/2015, T-278/13, Now, EU:T:2015:57). It is irrelevant in how many
Member States or cities a trade mark is used as long as the use may be considered
genuine use in the Internal Market of the European Union, being defined as a space
without borders, and namely the mark is used as a badge of trade origin for the
purpose of ‘maintaining’ or ‘creating’ market share, taking into account the ‘territorial
extent’ and the ‘scale’ ‘frequency’ and ‘regularity’ of use and the ‘characteristics’ of the
market concerned (02/07/2014, R 2100/2013-2, Vieta (fig.), § 27).
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 (19/12/2012, C-149/11, Leno Merken, EU:C:2012:816, § 58).
Therefore it is impossible to establish, 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, which would not allow the European Union judicature to appraise all the
circumstances of the dispute before it, cannot therefore be laid down (30/01/2015, T-
278/13, Now, EU:T:2015:57, § 47).
In this case, therefore, the Cancellation Division should take into account not only the
geographical area as such, but also the relevant market in which the proprietor
operates under the EUTM. In this regard, as seen above in the section dedicated on
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the ‘nature of use’, the proprietor is a consortium which uses the mark in order to
promote third parties’ tourist attractions in the city of Barcelona. The invoices show that
several undertakings have purchased the proprietor’s advertising services between
30/04/2011 and 29/11/2012 for a total amount of almost EUR 17 000. The applicant
points out that the invoices submitted as annex 3 contain no reference to the contested
EUTM as they display the sign ‘Barcelona Card’. However, even though the invoices
issued in 2011 do not directly mention the contested EUTM, the corresponding
accounting sheet clearly features the sign ‘Barcelona Pass’ and refers to all the
invoices together with their reference numbers (i.e. No 200/10194; No 200/10195, etc.).
In addition, some of the addressees of these invoices are those declaring that the
proprietor furnished them promotional services under the mark ‘Barcelona Pass’ (annex
5). Therefore, the invoices dated in 2011 can be linked to the corresponding accounting
sheet mentioning the sign.
Furthermore, the booklets confirm that the proprietor’s services were valid at least until
March 2013. This is also corroborated by the written statements (annex 5) which
appears sound and reliable as they originate from independent sources, namely the
undertaking purchasing the proprietor’s services (07/06/2005, T-303/03, Salvita,
EU:T:2005:200, § 42).
Even though the market for advertising services in the field of tourism may not be
limited to a certain area, the evidence has shown that the services rendered by the
proprietor are particularly concentrated in the city of Barcelona, which is internationally
renowned as a tourist destination. In this respect, bearing in mind the local character of
the proprietor’s services, these services are rendered in one of the major tourist area in
the EU. In this respect, the evidence has shown that the EUTM was used to promote
several tourist attractions (i.e. ‘L‘Aquàrium de Barcelona’, ‘Caixa Forum’, ‘Casa Batlló’,
‘Fundació Joan Miró’, ‘Macba’, ‘Zoo Barcelona’, ‘Tibidabo’, etc.)
Although the concept of genuine use excludes all minimal and insufficient use as the
basis for a finding that a mark is being put to real and effective use on a given market,
nevertheless the requirement of genuine use does not seek 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 (30/01/2015, T-278/13, Now, EU:T:2015:57, § 45).
Furthermore, use of the mark need not always be quantitatively significant in order to
be deemed genuine. For the purposes of proof of genuine use, even minimal use is to
be considered sufficient to qualify as genuine use, if it is deemed to be warranted in the
economic sector concerned as a means of maintaining or creating a share in the
market for the goods or services protected by the mark (08/07/2004, T 203/02, Vitafruit,
EU:T:2004:225, § 42; and 08/07/2004, T 334/01, Hipoviton, EU:T:2004:223, § 36).
In the present case, even though the invoiced sums do not reach high figures, the
proprietor’ documentation shows a regular use of the mark for a two-years period within
the relevant time frame. That information makes it possible to rule out token use for the
sole purpose of preserving the rights conferred by the aforesaid mark for the aforesaid
services.
On the basis of the foregoing, it must be concluded that despite the relatively small
turnover that can be associated to the provision of advertising in the field of tourism,
based on the duration and frequency of the trade mark use, the contested EUTM is
considered to have been sufficiently used in respect of the required extent of use in the
relevant territory.
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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).
Having regard to the findings made above, it must be held that, considered as a whole,
the various pieces of evidence adduced by the EUTM proprietor have demonstrated
that the EUTM had been used in relation to advertising in the field of tourism in Class
35 during the relevant period in the relevant territory. Although the amount of sales
indicated by the EUTM proprietor’s invoices is not particularly high, it is sufficient to
submit evidence which proves that the minimum threshold for a finding of genuine use
has been passed (11/05/2006, C-416/04 P, Vitafruit, EU:C:2006:310,§ 72).
The EUTM proprietor has shown commercial activities, which have intended and to
some extent succeeded in creating a real share on the market for part of the relevant
services. It has also produced additional evidence (such as the booklets and
declarations from third parties) and that this additional evidence can dispel possible
doubts as to the genuineness of the use of the EUTM (08/07/2004, T-334/01,
Hipoviton, EU:T:2004:223, § 37).
Considering all the above, the Cancellation Division concludes that the evidence, as a
whole, is sufficient to demonstrate that the contested mark was genuinely used during
the relevant period in the relevant territory for the abovementioned services.
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 16: Pamphlets, printed matter, catalogues, magazines, instructional and
teaching material, stickers.
Class 35: Commercial or industrial management assistance, distribution of leaflets
directly or by mail, distribution of samples, organisation of exhibitions for
commercial or advertising purposes, business management assistance,
import, export, advertising (except for adverting in the field of tourism).
Class 39: Arranging, brokerage, reservation and contracting of tours, transport and
visits to cities, escorting and transport of travellers by land, sea and air,
arranging of cruises, tours and sightseeing (tourism).
The EUTM proprietor has proven genuine use for the remaining services advertising in
the field of tourism; therefore, the application is not successful in this respect.
According to Article 62(1) EUTMR, the revocation will take effect from the date of the
application for revocation, that is, as of 03/11/2016.
Decision on Cancellation No 13 990 C Page: 12 of 12
COSTS
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must
bear the fees and costs incurred by the other party. According to Article 109(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
Michaela SIMANDLOVA Pierluigi M. VILLANI José Antonio GARRIDO
OTAOLA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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.