CANCELLATION No 11958 C (REVOCATION)

American Franchise Marketing Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (applicant) 

a g a i n s t

Bladox, s.r.o., 3 tr., Pṝístavní 321/14, Praha 7, Holešovice 17000, Czech Republic (EUTM proprietor) 

On 20/01/2017, the Cancellation Division takes the following

DECISION

1.        The application for revocation is upheld.

2.        The EUTM proprietor’s rights in respect of European Union trade mark No. 4 205 696 are revoked in their entirety as from 21/10/2015.

3.        The EUTM proprietor bears the costs, fixed at EUR 700.

REASONS

1. The European Union trade mark (EUTM) No. 4 205 696 for ‘Bladox’ (‘the contested mark’) was registered on 09/01/2006 for the following goods and services (‘the contested goods and services’): 

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer and communication software, firmware and hardware for use in information and data communication, information and data transactions, networking, cryptography, security; integrated circuits, telecommunications equipment; computer hardware and encryption software, encryption keys, digital certificates, digital signatures, software for secure data storage and retrieval and transmission of confidential customer information used by individuals; cards with integrated circuits; circuit boards provided with integrated circuits; computer application software for mobile phones; mobile phones; vehicle locating, tracking and security system comprised of an antenna and radio transmitter to be placed in a vehicle; identity verification devices; alarm systems; personal alarms; theft alarms; global positioning system [GPS] consisting of computers, computer software, transmitters, receivers, and network interface devices.

Class 12:        Vehicles; apparatus for locomotion by land, air or water; anti-theft alarms for vehicles; burglar alarms for vehicles.

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

2. The applicant filed a request for revocation, alleging that the contested EUTM had not been put to genuine use in the Community during a continuous period of five years, within the meaning of Article 51(1)(a) EUTMR, in connection with the contested goods and services.

3. The applicant filed its request on 21/10/2015. The EUTM proprietor is therefore required to prove that the contested EUTM has been put to genuine use between 21/10/2010 and 20/10/2015 inclusive, for the contested goods and services.

The evidence and arguments submitted by the EUTM proprietor

4. The EUTM proprietor has submitted the following evidence as proof of use:

•        Exhibit 1. 

Descriptions of products marketed under the contested mark taken from the EUTM proprietor’s web catalogue.

•        Exhibit 2. 

Extracts from the EUTM proprietor’s web e-shop.

•        Exhibit 3.

5 invoices addressed to clients in France, Finland, Spain, Greece and the Netherlands for Bladox products.

•        Exhibit 4.

5 invoices addressed to clients in Germany, Norway, France, Greece and the Netherlands for Bladox products. 

•        Exhibit 5.

5 invoices addressed to clients in Norway, Czech Republic and the United Kingdom for Bladox products.

•        Exhibit 6.

5 invoices addressed to clients in Finland, Germany and Austria for Bladox products.  

•        Exhibit 7.

3 invoices addressed to clients in France, Denmark and the United Kingdom for Bladox products.

•        Exhibit 8.

Date-stamped screen extracts from the EUTM proprietor’s e-shop dated 27 July 2011, 1 January 2012, 11 April 2013, 12 February 2014 and 19 September 2015.

•        Exhibit 9.

The EUTM proprietor’s PayPal transaction history for the years 2011 to 2015, with the relevant items paired to the invoices in Exhibits 3 to 7.

5. The EUTM proprietor is an inventor and producer of mobile phone accessories. It argues that the evidence taken as a whole proves that the contested mark has been put to genuine use. Exhibits 8 and 9 of the evidence may be cross-referenced against the invoices to prove that commercial transactions took place in the relevant countries. Although the number of invoices provided is not large, they are intended to serve as a sample in order to demonstrate the use of the contested mark in a range of EU countries.  

The applicant’s case

6. The applicant argues that the evidence filed by the EUTM proprietor fails to establish that the contested mark has been put to genuine use in the EU during the relevant period for any of the contested goods and services.

7. In the submission of the applicant, Exhibits 1 and 2 merely show the products offered for sale on the BLADOX web site. The web pages are undated and there is no proof that customers in the EU visited the web site or purchased the products.

8. Exhibits 3 to 7 contain 23 invoices issued to clients of the EUTM proprietor between 2011 and 2015. The applicant submits that the invoices are insufficient both in number and in the quantity of the low price products concerned to demonstrate that the contested mark has been put to genuine use. The extent of the use is very low. There is no evidence that the EUTM proprietor has established a market share for the contested goods and services under the contested mark.

9. The applicant states that the inability of the EUTM proprietor to provide any purchase orders, payment receipts, customer feedback, or figures for turnover, advertising expenditure and market share for the relevant countries, represents a failure to show that the contested mark has been put to genuine use, as required.

10. As regards Class 9 of the specification for which the contested mark has protection, the EUTM proprietor has only provided evidence (albeit insufficient) in relation to hardware and software products like SIM cards, boards and communication kits.

11. In Class 12, the only evidence submitted concerns alarms for mobile phones.

12. No evidence has been filed to prove use of any of the services in Class 42.  

 

GROUNDS FOR THE DECISION

The law

13. Pursuant to Article 51(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

14. According to Rule 22(3) EUTMIR, which is applicable mutatis mutandis by virtue of Rule 40(5) EUTMIR, ‘the indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered’. Pursuant to Rule 22(4) EUTMIR, ‘the evidence shall be filed in accordance with Rules 79 and 79a and shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 76(1)(f) of the Regulation’.

15. The rationale behind the requirement that the contested EUTM must have been put to genuine use is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from the active functioning of the mark on the market (judgment of 12/03/2003, T-174/01, Silk Cocoon, paragraph 38).

16. A number of propositions have been established as General Court case law:

•        Genuine use equates to actual use of the trade mark by the EUTM proprietor, or a third party with authority to use the mark (Ansul BV v Ajax Brandbeveilging BV (C-40/01) [2003] R.P.C. 40 CJEU).      

•        The use must be more than “token”, i.e. the use must not serve solely to preserve the registration (Ansul).

•        The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods and services to consumers, by enabling them to distinguish the goods and services of one trader from those of other traders (Ansul and Silberquelle GmbH v Maseli-Strickmode GmbH (C-495/07) [2009] E.T.M.R. 28 CJEU).  

 

•        The use of the mark must be aimed at maintaining or creating an outlet for the goods and services, or a share in that market, for example, by running an advertising campaign (Ansul and Silberquelle). Business activities which do not amount to real commercial exploitation include, inter alia: (a) internal use by the CTM proprietor (Ansul); (b) the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter (Silberquelle); and (c) use during purely private events (Verein Radetsky).

•        When the trade mark serves a real commercial purpose, in the circumstances cited above, even minimal use of the mark or use by only a single importer in the Member State concerned can be sufficient to establish genuine use” (La Mer Technology Inc v Laboratories Goemar SA (C-259/02) [2004] F.S.R. 38, CJEU, and VITAFRUIT (T- 203/02). However, the more limited the volume of sales of items bearing the mark, the more necessary will it be to produce additional evidence to dispel possible doubts as to the genuineness of the use of the mark in question (see, by analogy, judgment of 30 April 2008, T-131/06, ‘Sonia Sonia Rykiel’, para. 42 and the case-law cited therein).

Has the EUTM proprietor provided sufficient evidence to prove genuine use of the contested mark for the goods and services concerned?

17. As stated above, the EUTM proprietor is required to prove that the contested mark has been put to genuine use between 21/10/2010 and 20/10/2015 inclusive, for the contested goods and services (listed in paragraph 1 above). The evidence must indicate the time, nature, extent and place of use of the contested CTM. In other words, the EUTM proprietor must demonstrate genuine use of the contested EUTM under each and every one of these headings. Failure to do so will result in the mark being revoked for want of proof of use.

Extent of use

18. The General Court has declined, so far at least, to set a quantitative threshold for the owners of EUTM registrations to meet when filing evidence of use of their trade marks. Nor is there any precise definition of where token use ends and genuine use begins.

19. The EUTM proprietor has provided some evidence, in the form of invoices for online sales, to show it has used the trade mark ‘BLADOX’ for highly specialised hardware products in the field of mobile phone technology.

20. The invoices are few in number (21 if one excludes Norway). Since the invoices are low in monetary value, they are also low in probative value. The table below shows the total amounts in euros (rounded up or down) for each of the EU countries for which invoices were provided, covering the five year period concerned.

AT	DK	CZ	DE	EL	ES	FIN	FR	NL	UK
154	74	814	331	267	450	1610	1433	753	1228

21. Some of the figures are so low as to be discountable as evidence. But even for the highest, Finland, the proven annual sales only amount to an average of 322 euros a year. For France the figure is 287 euros a year and for UK 246 euros. Naturally, the EUTM proprietor invites the Cancellation Division to regard the invoices provided as a sample which represents only a fraction of real sales. But while it can reasonably inferred that actual sales are greater than the total contained from the aggregated invoices, it is not possible to extrapolate substantial sales and market share based on such paltry amounts.

22. It is regrettable that the EUTM proprietor did not submit any annual reports from certified accountants to demonstrate the annual sales figures of the EUTM proprietor for the good and services in question, since that could have put to rest any doubts concerning the extent of use. Indeed, the EUTM proprietor failed to provide any other evidence from which greater commercial activity could reasonably have been surmised, such as advertising expenditure or samples of widespread promotion of products under the mark ‘BLADOX’.

23. It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for the goods and services for which it is registered to an extent that would justify maintaining a legal monopoly over the use of the mark ‘BLADOX’ for the whole of the EU. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

24. According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 21/10/2015.

COSTS

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

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

27. According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.

 

The Cancellation Division

Lucinda CARNEY	Rhys MORGAN	Janja FELC

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.