CANCELLATION No 12 163 C (REVOCATION)

Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative)

a g a i n s t

Lifestyle Equities C.V., Prins Bernhardplein 200, 1097 JB Amsterdam, Netherlands (EUTM proprietor), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative).

On 25/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for revocation is rejected in its entirety.

2.        The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed a request for revocation of European Union trade mark No 364 257   (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

Class 18:        Luggage.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark was not put to genuine use for a continuous period of five years.

The EUTM proprietor submits documents to prove use of the mark. It argues that the application is inadmissible because the applicant did not provide any facts and evidence in support of the application. It contends that Beverly Hills is a location filled with celebrities and millionaires and few places can surpass such aspirations. It goes on to explain the fondness of Moghuls for polo and concludes that this is a sport of kings. The mark was established in 1982 using these images of material wealth and exclusion of people not belonging to a private club and it became an immediate success in the USA. The EUTM proprietor’s products are available around the world and are promoted by licensees. The EUTM proprietor submits that the mark as registered is its principal mark but that the mark has been used also in minor variations none of which alters the distinctiveness of the mark as registered. The EUTM proprietor explains the relevance of the individual pieces of evidence and how they are cross-referenced. It contends that the evidence dated outside the relevant period should also be taken into account as it offers indications about use of the mark within the relevant period. It concludes that the evidence is sufficient to prove genuine use of the mark in relation to all the contested goods and the application should be rejected.

The applicant refutes the EUTM proprietor’s arguments as to the admissibility of the application. As regards the evidence submitted, the applicant argues that the mark as shown in the documents alters the distinctive character of the contested mark as registered. Furthermore, the applicant contests the probative value of the evidence, in particular in view of the fact that most of the information identifying the parties of the translations has been blackened. It casts doubt on the probative value of the sales reports. It points out that the EUTM proprietor’s comments relating to the documents are merely claims of the interested party and as such, have no probative value. Overall, the evidence, according to the applicant, does not prove sufficient extent of use of the mark within the EU, in the relevant time period and in the form as registered.

The EUTM proprietor maintains its position and considers the arguments of the applicant to be largely irrelevant or incorrect. It gives examples from the Office’s Guidelines of trade marks that were accepted as used as registered. It contends that the sales reports have to be reviewed in the context of a global assessment taking into account also the additional supporting evidence. It submits an additional document, excerpt from a website where luggage is offered for sale. Overall, the EUTM proprietor insists that the evidence taken as a whole is sufficient to show genuine economic activity as regards luggage under the contested mark.

Preliminary remark

Admissibility of the application

The EUTM proprietor argues that the application is not admissible because the applicant did not submit facts and evidence as required by Rule 37(b)(iv) EUTMIR. While the applicant submitted statement of grounds and arguments in support of its application (in particular it claimed that the mark has not been put to genuine use for a continuous period of five years and should be revoked pursuant to Article 51(1)(a) EUTMR), it is not obliged to file facts and evidence in support of its arguments in the present case. Rule 37(b)(iv) EUTMIR is a common requirement for all applications for revocation and declarations of invalidity. However, the facts and evidence requirement does not apply to application for revocation based on non-use as the applicant cannot be forced to demonstrate a negative fact, namely that the EUTM proprietor has not been using the mark. In applications based on Article 51(1)(a) the burden of proof is reversed and it is the EUTM proprietor who has to demonstrate use of the mark. Consequently, this EUTM proprietor’s argument must be set aside.

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 27/11/1998. The revocation request was filed on 01/12/2015.  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 01/12/2010 to 30/11/2015 inclusive, for the following contested goods:

Class 18:        Luggage.

On 13/05/2016 the EUTM proprietor submitted evidence as proof of use.

As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• License agreements, between Lifestyle Licensing and Intertrust Netherlands and an undisclosed Italian entity for use of the contested mark and its variations, for periods within the relevant period and the EU territories.

• Royalties reports relating to i) sales of ‘luggage’ in the period between 2013 and 2014, in several EU countries for thousands of products sold; ii) sales of ‘handbags and luggage’ mainly in Italy, Germany and Greece in 2015, including the ID number of invoices (the numbers are consecutive and go up to 1040) for the total amount of almost EUR 1 million; iii) sales of specific goods (trolleys, set of trolleys, bags, backpacks etc.) in Spain and Portugal in 2012 and 2014 for thousands of products sold, including reference numbers of the products that can be found in the Spanish catalogue (see below), for example, the set of trolleys indicated in the sales report under the number 38216 is displayed in the catalogue as follows:  with the mark visible on the side of the suitcases.

• Invoices to customers in Italy, Greece, Poland, Cyprus, Belgium and Germany dated in 2015 (before December) containing the ID numbers that can be traced to the sales reports and the codes of the products included also in the catalogue (see below); the invoices are mainly for wallets and bags, for example, the invoice P757 (which can also be traced in the sales report with the corresponding country of the client (Germany) and the corresponding total amount) contains bags BH-421 and BH-422 which are displayed in the Italian catalogue in the following manner  

• A catalogue from spring/summer 2015 displaying bags, suitcases and wallets labelled with the marks     .

• A catalogue from autumn/winter 2015, in Italian, containing bags and wallets  with the marks    . The sign  is displayed at the top of the pages.

• Catalogues from 2010-2011 and from 2015, in Spanish, displaying suitcases, bags and wallets bearing the following marks         .

The additional document submitted by the EUTM proprietor on 17/03/2017 does not need to be taken into account because, as will become apparent from the assessment below, the evidence originally submitted is sufficient to prove use for all the contested goods. Therefore, it is not necessary to give the applicant an opportunity to file its comments on this document.

Assessment of genuine use – factors

Preliminary remark

The evidence submitted by the EUTM proprietor to demonstrate use of the mark includes sales reports of unknown origin. The EUTM proprietor claims that they are royalty report summaries concerning royalties for the relevant goods by licensees to the EUTM proprietor.

It is noted that documents coming from the sphere of the owner of the mark (drawn up by the interested parties themselves or their employees) are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4, BOTODERM, § 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610). Such a statement cannot in itself sufficiently prove genuine use (judgment of 9/12/2014, T-278/12, PROFLEX, EU:T:2014:1045, § 54) However, this does not mean that such statements are totally devoid of all probative value (judgment of 28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 30).

The final outcome depends on the overall assessment of the evidence in each individual case. In general, further material is necessary for establishing evidence of use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important. An assessment should be made of whether the content of the evidence originating in the interested party itself is sufficiently supported by the further material (or vice versa). The fact that the national office concerned may adopt a certain practice in assessing such kind of evidence of use does not mean that it is applicable in the proceedings concerning European Union trade marks (judgment of 07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 41 et seq.).

In the present case, as will become evident from the assessment below, the Cancellation Division considers that the additional evidence supports the information given in the sales reports, in particular in the second report (ii) which is cross referenced with invoices and a catalogue, and provides sufficient indications as regards use of the mark in relation to the relevant goods in the relevant period as to render the data given in the sales reports plausible.

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, that is, from 01/12/2010 to 30/11/2015.

The royalties reports are dated within the relevant period, as are the invoices and most of the catalogues. The fact that the invoices are concentrated in the last year of the relevant period is not to the detriment of the EUTM proprietor as, first, there are sufficient additional documents showing use also in the less recent years and, second, for a mark to avoid sanctions for non-use it is sufficient that a trade mark is used only for part of the relevant period (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52). Consequently, the time of use was sufficiently demonstrated.

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 royalties reports indicate sales in many countries of the EU. Of particular relevance is the second one (ii) which is supported by the invoices and a catalogue and the third one (iii) in which the codes of the products indicated in the attached catalogue can be found. The invoices show sales to clients in Italy, Greece, Germany and other EU countries, the third royalties report (iii) indicates Spain and Portugal. The catalogues are in Italian and Spanish. All in all, as there are indications of use within several parts of the relevant territory, it is concluded that the place of use was sufficiently used.

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.

The catalogues show that the mark was used directly on the products to identify their commercial origin. Consequently, the sign was used as a trade mark.

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.

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 mark was registered in the following form: . In the catalogues the products are labelled with several different variations of the mark, as shown above in the list of evidence. Most of the goods are labelled with either the mark as registered (i.e. the device representing a running horse with a rider in the centre and the verbal elements surrounding it) or with slight modifications such as the verbal elements ‘Beverly Hills’ are below the image of the horse instead of above or the verbal elements surround the horse in a horizontal manner instead of vertical. These variations do not alter the overall distinctiveness of the mark as all the elements of the mark, both figurative and verbal, are present. The figurative element retains all the perceivable features of the registered figurative element, namely the running horse with the same leg position carrying a rider / polo player with a stick over his head. The verbal elements are also present, the only difference being the position of the words. However, the particular positioning of the words ‘Beverly Hills Polo Club’ does not, within the mark as a whole, give to the mark any particular distinctive character. The replacement of these words to the bottom of the mark or to the sides of the horse does not, without any other perceptible change in the mark, change the entire mark’s distinctive character.

Admittedly, some of the products show variations of the mark that would alter the mark’s distinctive character such as  or . However, these goods are a minority and, moreover, by crosschecking the invoices and the royalties reports with the catalogues, it is clear that at least some of the goods mentioned therein are those that display the sign not altering the distinctive character of the mark as registered. As shown above, the examples of bags and suitcases identified in the catalogues from the invoices and the royalties report are both labelled with the ‘horizontal’ variation of the mark  and .

Consequently, it is considered that sufficient use of the mark in compliance with Article 15 EUTMR was demonstrated.

Use in relation to the registered goods and extent of use

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.

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 contested EUTM is registered for luggage. According to the Collins dictionary online, luggage is the suitcases and bags that one takes when travelling. The catalogues show suitcases and trolleys, bags and wallets. Whilst wallets cannot be considered to fall within the category of luggage as they are not designed for travelling but rather for storing money and documents, the suitcases, trolleys and bags are indeed either specifically designed for travel or are commonly used for travel. Therefore, the use of the mark in relation to bags, suitcases and trolleys is considered to be use of the mark for all the goods for which the mark is registered, namely luggage.

The invoices show mainly wallets and bags sold, the royalties reports are either unspecific (luggage or handbags and luggage) or (the third report) indicate specific goods, in particular a number of trolleys/suitcases and bags. The second report (ii) indicates rather large amounts of products sold. Admittedly, the invoices, which support and specify the data of this report, show that many of these products were wallets, which do not constitute the registered goods. However, they also show that at least a considerable part of those products were bags, which do fall into the category of the registered goods and, in view of the large total amount of nearly EUR 1 million indicated in the royalties report (ii), even considering that only a part of these products were luggage, the use is still significant. Admittedly, the invoices do not show such high amounts of products but the invoices are clearly only samples as can be deduced from the fact that they are identified with merely several non-consecutive numbers from those indicated in the royalties report (ii) from 1 to 1040. Moreover, as explained above, the sales were spread in various territories within the EU, and also taking into account the other sales reports, in particular the third one (iii), which can be cross referenced with the corresponding catalogues and which shows considerable quantities not only for bags but also specifically for trolleys/suitcases, the use was also spread within several years of the relevant period.

Taking into account the evidence as a whole, it is concluded that the documents provide sufficient information as to the nature of the products and the extent of use. The evidence demonstrates sufficiently that use of the mark was genuine, that is, aiming at creating and preserving an outlet for luggage, as opposed to a mere token use the only purpose of which is to preserve the trade mark rights.

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).

It was demonstrated that the mark had been used in relation to the registered goods during the relevant period in the relevant territory to an extent sufficient to indicate that the use was genuine. It was used as a trade mark and in a form not altering the distinctive character of the mark as registered. 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 luggage in Class 18.

Conclusion

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

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) EUTMIR and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

María Belén IBARRA DE DIEGO

Michaela SIMANDLOVA

Gueorgui  IVANOV

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.