CANCELLATION No 12 285 C (REVOCATION)

Excellent Brands JMI Ltd., Oberneuhofstr. 1, 6340 Baar, Switzerland (applicant), represented by Mitsche۰Majer۰Horak, Mahlerstrasse 13, 1010 Vienna, Austria (professional representative)

a g a i n s t

Marcas Costa Brava S.L., Pol. Ind. Bosc de Can Cuca, Sector 2, Parc. 12, 17410 Sils (Gerona), Spain (EUTM proprietor), represented by Manresa Industrial Property, Calle Aragó, nº 284, 4º 2º, 08007 Barcelona, Spain (professional representative).

On 09/06/2017, 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 2 423 705 are revoked in their entirety as from 23/12/2015.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 2 423 705  (figurative mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely coffee, sugar and infusions in Class 30.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark is not being used in the market. It refers to the decision of 29/09/2015, R 2517/2014-5, Cremcaffé by Julius Meinl (FIG. MARK) / café crem (FIG. MARK); the decision of 29/09/2015, R 2757/2014-5, Cremcaffé by Julius Meinl (FIG. MARK) / café crem (FIG. MARK); the decision of 28/09/2015, R 2491/2014-5, Cremcaffé by Julius Meinl (FIG. MARK) / café crem (FIG. MARK); and the decision of 29/09/2015, R 2586/2014-5, Cremcaffé (FIG. MARK) / café crem (FIG. MARK), where the Boards of Appeal overruled the contested decisions of the Opposition Division because they found that there was no proof of the use of the marks at issue. The applicant argues that the documents filed by the proprietor in the present proceedings are of basically the same nature as those provided in the abovementioned opposition proceedings, with the addition of some other documents related to sponsoring activities and the counterparty’s presence on social media. Therefore, they have the same shortcomings: many of the documents are not dated, some of the documents are dated outside the relevant period, the proprietor has provided only links to web pages or websites for some of the company’s activities and not information itself, the place of use is very limited and, last but not least, the nature of the sign as used is not in compliance with Article 15(1)(a) EUTMR.

The EUTM proprietor replies that the documents filed, when evaluated in combination with each other, are indeed sufficient to prove the use of the mark, and the sign as used does not alter the distinctive character of the sign as registered.

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 04/06/2003. The revocation request was filed on 23/12/2015. 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 23/12/2010 to 22/12/2015 inclusive, for the contested goods mentioned above.

On 22/06/2016, the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Documents 1 to 7: affidavits signed by distributors of the goods with details of the invoicing.
• Document 8: An invoice dated 20/12/2010 issued to a Spanish company.
• Document 9: 35 invoices dated 03/02/2011 to 18/01/2016 issued to a German retailer.
• Document 10: one invoice dated 20/01/2016 issued to a person in Poland.

• Documents 11 to 13: catalogues, of which only one (included in document 12) is dated. The goods shown in the catalogues are ‘coffee’.
• Documents 14 to 16: merchandising items, including two posters and one commercial leaflet. The goods shown in the documents are ‘coffee’.
• Documents 17 to 19: photographs of packaging and the graphic design of the contested logo.

Regarding most of the following documents, the EUTM proprietor merely provided links to web pages and explained the content of the links as follows:

• Promotional videos, all of which were uploaded to the proprietor’s official Facebook page and to YouTube in October and December 2015. The links to these videos are provided.
• One newspaper article from LAVANGUARDIA.COM dated 12/04/2013 relating to the re-launch of Café Crème products.
• Newspaper articles and information from Twitter, relating to the proprietor’s sponsorship activities for the CAFÉ CREM CALAFELL TOT L’ANY Roller Hockey team (Calafell, Spain), from EL MUNDO DEPORTIVO.COM, all dated in 2015.
• Information regarding the sponsorship of the ‘JUST TEN’ Paddle Team (Manresa, Spain).
• Information regarding the sponsorship of ‘TORNEIG DE NADAL PADEL 20’ (Christmas paddle tournament in Ripollet, Spain).
• Information regarding the collaboration between the proprietor’s company and the Red Cross of Girona (Spain).
• Information regarding the proprietor’s collaboration in the restoration of a coffee plantation in Barahona, Soria (Spain).
• Information from Twitter accounts regarding various promotional activities for cafeterias and restaurants.
• Information regarding the presence of the contested mark on social media.

To assess whether a trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, taking account of all the relevant factors in the case. In such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the 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 share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 29; 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 27; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

Rule 22(3) EUTMIR does not state that each item of evidence must necessarily give information about all four elements to which proof of genuine use must relate, namely the place, time, nature and extent of use. Therefore, items of evidence taken together may establish the necessary facts, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (16/11/2011, T-308/06, Buffalo Milke, EU:T:2011:675, § 61; 24/05/2012, T-152/11, Mad, EU:T:2012:263, § 33, 34).

Nevertheless, genuine use must be proven by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned, and cannot be determined on the basis of probabilities (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 37). The commercial exploitation of the European Union trade mark must be real and use of the mark must seek to maintain or create a share on the market for the goods or services protected by the mark in the European Union (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 29; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 38).

As regards the extent of use of the earlier trade mark, 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-203/02, Vitafruit, EU:T:2004:225, § 41; 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

As seen above, the proprietor filed several affidavits. In relation to this kind of document, it must be stated that Rule 22(4) EUTMIR (applicable to cancellation proceedings by virtue of Rule 40(6) EUTMIR) expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, however, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

The Cancellation Division observes that the affidavits submitted all use the same standardised set of words, are in the same format and are not corroborated by independently sourced documents such as audited statistical tables, annual reports or the like. They were all drafted for these proceedings and give only exact sums, which are not even broken down to the main product categories (coffee, sugar and infusions) that the proprietor must refer to (29/09/2015, R 2517/2014-5, CREMCAFFE BY JULIUS MEINL (FIG. MARK) /CAFE CREM (FIG. MARK); confirmed by 02/02/2017, T-686/15, CAFE CREM (FIG. MARK), EU:T:2017:53).

The catalogues submitted show the use of several marks; specifically, the ‘Café Crem’ catalogue in document 13 shows pictures of infusions branded with the logo ‘instant fusion’. Even considering the proprietor’s explanation that, in the invoices, the goods sold under the mark are identified as ‘CC CREM’, it must be stated that the extent of use shown is quite limited if account is taken of the kind of goods concerned and the territorial scope. The pictures in the catalogues show predominantly coffee, which is consumed on a daily basis and whose price is not high. Furthermore, the coffee market in Europe is very large, and the invoices submitted concern just EUR 22.90 sold in Poland (document 19; the invoice postdates the relevant period) and very limited amounts sold in Spain (around EUR 5 000; document 8). Moreover, all the invoices relating to Germany (document 9) are addressed to the same retailer located in Haslach, a very small place with no more than 7 500 inhabitants, with no evidence that could support the goods having been further distributed to any important location in the country. In addition, in relation to the company’s promotional and marketing activities, instead of filing copies of documents, the proprietor merely provided the Office with links to different sites for most of the mentioned activities. However, at any rate, what matters is that, according to the proprietor, these activities were carried out in relation to events held either in a very specific and small location in Spain (i.e. three places in Catalonia, none of which is the capital of the Catalonian province) or in Barahona (Soria, Spain), which has barely 200 inhabitants. Furthermore, the dates of these activities are mostly concentrated in 2015, that is to say, at the very end of the relevant period, and, taking all these elements into account, it cannot be ascertained how widespread the use of the mark was in the relevant period and in the relevant market.

There are also some issues concerning the sign shown in the documents. ‘Nature of use’ in the context of Rule 22(3) EUTMIR 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.

As seen above, the proof should concern the sign , whereas the sign seen in the documents is , either in black and white or on a background of different shades of brown and red. It must be taken into account that the words ‘café crem’ are very weak, if not completely devoid of distinctive character, for coffee, as they denote a well-known way of making coffee, namely an espresso with milk. The distinctiveness of the sign as registered lies in the combination of these words, placed on what seems to be a simple label, and the very specific figurative elements above and below. The sign as used is a significant modification of the sign as registered because the specific figurative elements are missing and instead the words are against a background, in different shades of brown and red, which is not a simple label and instead resembles a coffee bean. Consequently, the sign is not used in compliance with Article 15(1)(a) EUTMR.

Conclusion

For all the reasons given above, the EUTM proprietor has not proven genuine use of the contested EUTM for any of the goods for which it is registered. As a result, the application for revocation is wholly successful and the contested EUTM must be revoked in its entirety.

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 23/12/2015.

COSTS

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

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

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

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.