CARDON COSAS NUESTRAS | Decision 981/2016-4

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DECISION

of the Fourth Board of Appeal

of 10 January 2017

In Case R 981/2016-4

TAWNY, S.A.

Calle Buenos Aires, 484, piso 2°, Escritorio 10

Montevideo

Uruguay

EUTM Proprietor / Appellant

represented by SCP Granrut Avocats, 91, rue du Faubourg-Saint-Honoré, F-75008 Paris, France

v

DECA Y TECH ENGINEERING ITALIA S.R.L.

Via Gabriele Camozzi, 56

I-24121 Bergamo

Italy

Cancellation Applicant / Respondent

APPEAL relating to Cancellation Proceedings No 9 377 C (European Union trade mark No 6 975 361)

THE FOURTH BOARD OF APPEAL

composed of D. Schennen (Chairman and Rapporteur), C. Bartos (Member) and S. Martin (Member)

Registrar: H. Dijkema

gives the following


Decision

Summary of the facts

  1. European Union trade mark (EUTM) No 6 975 361 for the figurative mark

http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=57992286&key=7e7875420a840803770fd00515d3c4cb

was registered on 29.1.2009 for the following goods and services:

Class 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25 – Clothing, footwear, headgear.

Class 35 – Advertising; business management; business administration; office functions.

  1. On 24.5.2014, Deca y Tech Engineering Italia S.r.l. filed a request for revocation against this European Union trade mark on the grounds laid down in Article 51(1)(a) EUTMR, namely that the mark had not been put to genuine use.

  1. The application for revocation was directed against all the goods and services of the contested EUTM.

  1. On 20.6.2014, the Cancellation Division set a time limit for the appellant to submit evidence of genuine use of its trade mark, which was, at the request of the appellant, extended by further two months, to expire on 25.11.2014.

  1. Within the time limit, the appellant filed the following documents as proof of use of its trade mark:
  • Twenty invoices dated between June 2013 and April 2014, issued by the appellant to clients (physical persons) in France (Paris), Spain (Madrid) and Portugal (Lisbon and Cascais). They concern sales of ‘CARDON COSAS NUESTRAS’ goods in US dollars. For the 20 invoices, the total quantities sold are as follows: briefcase, 1; shirts, 3; umbrella, 1; trousers, 3; card cases, 1; headgear, 4; shawls, 2; tights, 1; T-shirts, 2; jacket, 1; dress, 1; footwear, 2; wallets, 7; shorts, 1; gloves, 2; sweaters, 4; handkerchief, 1; belt, 1.
  • Two notes dated 21.9.2011, issued by ExportAr Foundation, stating that ‘CARDON’ employees were selected to represent Argentina at Paris Fashion Week in September 2011.
  • Exchange of emails concerning a travel of representatives of ‘CARDON’ to Paris (claimed to be in connection with a fashion fair in Paris) in relation to the organisation of that event.

  • Internal note addressed to the franchisees, licensees and staff of the appellant informing them about the participation of ‘CARDON’ at Paris Fashion Week in September 2011.
  • Four undated photographs. In two of them, the word ‘Cardón’ appears in the background. According to the appellant, these pictures were taken during that event in Paris.
  • Agreement dated 5.9.2013 between the appellant and ‘Pangea Consulting S.R.L.’ about the promotion of the trade mark ‘CARDON COSAS NUESTRAS’ in the European Union.
  • Certificate dated 19.8.2014 attesting to the participation of the company ‘CARDON COSAS NUESTRAS’ at the International Franchise Fair in Valencia (Spain) in October 2008 and two pictures of a stand showing the EUTM.
  • Two pages from a leaflet titled ‘Argentina franchises 2009 ‒ 2010’ bearing the EUTM and demonstrating the presence of the company ‘CARDON COSAS NUESTRAS’ at the International Franchise Fair in Valencia in October 2008.
  • Google Analytics: graphs of visits on the website www.cardon.com.ar during the periods of 1.1.2009 ‒ 30.4.2014 and 1.4.2014 ‒ 29.7.2014. In the e-commerce section, the documents show no transactions for European countries.
  • Pages of a catalogue for Spring-Summer 2009 ‒ 2010, showing the mark on the front page and on some pieces of clothing.
  • Cover pages of the magazine ‘Hola’ (editions in Spain and Argentina) dated August 2014, showing King Felipe VI of Spain.
  • Emails dated August 2013 about a trip to Milan.
  • Two invoices and a certificate of origin concerning sunglasses, three photographs of sunglasses and a packing list for sunglasses.
  • Certificate granting ‘CARDON’ the status of a country trade mark, issued by the Ministry of Tourism of Argentina.
  • Printouts from the website www.cardon.com.ar. It is stated that ‘Cardon has more than 110 stores across the entire territory of Argentina’. Some goods are displayed (clothing, belts, footwear, leather goods and jewellery).

  1. By decision of 1.4.2016, the Cancellation Division revoked the contested EUTM in its entirety and ordered the appellant to bear the costs.

  1. The reason given by the Cancellation Division was that the documents filed as evidence were not sufficient to prove genuine use of the mark in the relevant territory.

  1. The invoices only demonstrate low sales figures and small quantities of sales. The appellant did not submit evidence of the overall volume of sales in the European Union. It is unclear whether the catalogue has been distributed to Europe and where the advertisements have been published. The catalogue does not contain any information such as prices or product codes to link the products to the invoices and the other evidence such as the emails, the arrangements for cooperation with European partners or the photographs do not prove actual sales.

  1. Furthermore, it is not clear whether the goods of the appellant can be bought in the European Union because all of its retail stores are in South America and purchases in the online store cannot be made from Europe. In addition, some evidence regards goods that do not fall to the classes for which the EUTM is registered (e.g. jewellery and sunglasses). Thereby, in its entirety, the evidence is not sufficient to prove genuine use in the European Union.

Submission and arguments of the parties

  1. On 1.6.2016, the appellant filed a notice of appeal and on 1.8.2016 a statement of grounds. It requests that the Board overturns the decision of the Cancellation Division in part, namely in so far as it revoked its trade mark for the goods in Class 25.

  1. The appellant’s arguments may be summarized as follows:

  • As the invoices submitted demonstrate, the relevant goods have been sold to the EU.
  • The appellant has only recently started expanding its business to the European Union market and therefore the sale figures may appear low.
  • Google Analytics shows that Cardon’s website is visited by people in the European Union. These visitors see the EUTM on the page.  
  • Arrangements with European companies regarding the expansion of the business show that the appellant intended to use the EUTM in the course of trade in Italy.
  • The appellant has participated in public events in the European Union (Paris Fashion Week and a fair in Valencia) and used its EUTM there.
  • Already preparations to secure customers should be considered when evaluating the use of the mark on the relevant market.

  1. The evidence submitted by the appellant together with the statement of grounds of appeal consists of the following documents:

  • Flight tickets and hotel bookings regarding two trips to Europe;
  • Translations of some of the previously filed documents.

  1. The respondent requests the Board to reject the appeal and to award the costs in its favour.
  2. The respondent argues:

  • The translations of evidence were inadequate and submitted too late.
  • The appellant’s goods are only sold in Argentina and only few items have been purchased in the European Union and by only 3 individuals.
  • The authenticity of the invoices is doubtful because the Europeans do not have a possibility to buy the appellant’s goods.
  • The claim that the EUTM proprietor only recently started entering the European Union market is not a valid reason for non-use.
  • At some events in the European Union the appellant was representing Argentina and not the EUTM.
  • The emails submitted as evidence only prove internal use, not external.

Reasons

  1. The appeal is not well founded. The appellant failed to prove the genuine use of its trade mark.

Scope of the appeal

The appeal challenges the contested decision only in part, namely to the extent
that the mark was revoked for ‘clothing, footwear, headgear’. The revocation with regard to the goods and services in Classes 18 and 35 is not subject of the appeal and has become final.

Article 51(1)(a) EUTMR

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

  1. The contested EUTM was registered on 29.1.2009 and the request for revocation filed on 24.5.2014. The appellant had to show use of its registered mark within the period of five years preceding the filing of the application for revocation, that is, between 24.5.2009 and 23.5.2014.

  1. There is ‘genuine use’ of a trade mark 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, thereby excluding token use for the sole purpose of preserving the rights conferred by the mark (11.3.2003, C-40/01, Minimax, EU:C:2003:145, § 43). Genuine use of the trade mark requires that the mark is used publicly and outwardly (Minimax, § 37).

  1. When assessing whether use of a trade mark is genuine, all the facts and circumstances, relevant to establishing whether the commercial exploitation of the mark is real, shall be taken in to account. Such facts are particularly the following; whether the 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 (11.3.2003, C-40/01, Minimax, EU:C:2003:145, § 43).

  1. Genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (27.9.2007, T418/03, La Mer, EU:T:2007:299, § 59).

  1. According to Rule 22(3) and (4) CTMIR the indications and evidence for furnishing 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. The evidence shall, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspapers, advertisements.

  1. The documents submitted by the appellant within the set time limit to prove genuine use of its trade mark are summarised in paragraph 5 above.

  1. The evidence submitted by the appellant almost exclusively relates to use of the trade mark in South America. The pieces of evidence relating to Europe and regarding the relevant goods are limited to the following: the 20 invoices addressed to individuals in France, Spain and Portugal, the evidence regarding the appellant’s representatives’ participation in a fashion event in Paris and a fair in Valencia, the evidence regarding the appellant’s arrangements to expand its business to Europe, the printouts from Google Analytics regarding visits on the appellant’s website and the extract from the Spanish Magazine ‘Hola’.

  1. Use of the mark need not always be quantitatively significant in order to be deemed genuine, and even minimal use can be sufficient, provided that it 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 (27.1.2004, C259/02, Laboratoire de la mer, EU:C:2004:50, § 21).

  1. However, when assessing the extent of use, the nature of the goods in question has to be taken into consideration. In the present matter, the products are items for everyday use and directed to consumers and therefore proving minimal use is not enough (30.4.2008, T-131/06, Sonia Rykiel, EU:T:2008:135).

  1. In regard to the relevant goods, the invoices submitted demonstrate sales of 2 pairs of shoes, 22 pieces of clothing and 4 items of headgear. Such evidence does not demonstrate a sufficient extent or frequency of the use of the trade mark. Taking into account that these goods are items of everyday use, such quantities are insignificant.

  1. In addition, it remains open to question, how the purchases were made. As the appellant itself admits, the appellant has no retail stores outside Argentina and does not deliver goods to retail stores in the European Union, and sales on the appellant’s online store are not possible for clients in the European Union. As mentioned on the document No 15, page 1, the appellant ‘has more than 110 stores in the entire territory of Argentina’, but stores in the European Union are not mentioned. The appellant did not provide any explanation as to how these sales took place. When the respondent expressed doubts regarding the authenticity of the invoices, it would have been its duty to explain, in a substantiated manner, how the individuals identified in the invoices were able to select and buy the respective goods.

  1. The evidence regarding the appellant’s participation in the Paris Fashion Week rather indicates that the appellant was representing its country of origin than itself. Therefore this participation does not provide evidence of using the EUTM in the European Union. What is more, the appellant did not provide any explanation regarding the extent of the event and therefore it remains unclear whether the event was of mere local significance or for example European-wide or worldwide. Thus, had the appellant used the EUTM at the event, the evidence regarding the participation does not state anything about the extent of such use.

  1. Due to no evidence having been submitted of actual sales or other concrete effect of the participation in the event, it is left unexplained how or whether the participation contributed to the use of the EUTM in the relevant territory.

  1. Similarly, the appellant submitted evidence of having met a European partner in Milan. However, no evidence has been submitted of the meetings leading to actual use of the mark within the European Union. The appellant’s plans to expand its business to the European Union are not use of the EUTM but rather mere preparations for use. Such preparations cannot replace actual use of the trade mark. The appellant states that its sales figures from the European Union appear low because of it only recently having started expanding its business to the European Union. By stating this, the appellant itself admits that entering the European Union and thereby using the mark on the European Union market had not yet taken place and had not yet been successful by the relevant date, in May 2014.

  1. The statistics from Google Analytics indicating visits on the appellant’s website do not act as proof of use in the course of trade of the EUTM in the relevant territory because visitors residing in the European Union cannot make purchases on the website. Additionally, the information regarding the duration of visits demonstrates that those of European residents have been very short, at maximum about two minutes on average.  

  1. The extracts of the Spanish magazine ‘Hola’ are from 13.8.2014, which falls outside the relevant period. Furthermore the EUTM is not visible in the extracts. The appellant merely submitted cover pages of this magazine on which the King of Spain, Felipe VI, appears. According to the appellant, the King of Spain would bear a ‘CARDON’ leather belt. However, that belt, or a trade mark on it, is not readily visible on the photo. Moreover, it would be purely speculative how the King of Spain obtained that belt, where he bought it, etc. This item of evidence is inconclusive for sales of the goods in Spain or elsewhere in the European Union.

  1. The appellant’s participation in the franchise fair in Valencia, according to the evidence submitted, took place 23. ‒ 26.10.2008, which also falls outside the relevant period. Neither was any evidence submitted of any sales taking place at or due to this event. Indirectly, by admitting that it did not deliver goods to any retail shop in the European Union thereafter, the appellant admitted that participation in that fair did not lead to any commercial result.

  1. Considered as a whole, the evidence that regards use of the EUTM in the relevant territory, and that was submitted by the appellant by the set time limit, 25.11.2014, namely the 20 invoices addressed to individuals in France, Spain and Portugal, the evidence regarding the appellant’s representatives’ participation in a fashion event in Paris and a fair in Valencia and its arrangements to expand its business to Europe, the printouts from Google Analytics and the extract from the Magazine ‘Hola’ do not comprise any evidence of the commercial volume of the use of the mark, its territorial scope, duration or frequency of use.

  1. The Cancellation Division was correct to find that the submitted evidence was not sufficient for it to determine whether sufficiently frequent and extensive use had occurred in the relevant territory.

Evidence submitted after the set time limit

  1. Article 76(2) EUTMR stipulates that the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. Where some evidence is submitted within the time limit, the Office is not prohibited from taking into account facts and evidence which are submitted belatedly but it enjoys a wide discretion as to whether or not to take such evidence into account (18.7.2013, C-621/11 P, Fishbone, EU:C:2013:484, § 22, 23).

  1. A request for proof of use has been sent to the appellant. This request was accompanied with an information sheet regarding the filing of evidence. In the information sheet it was stated that ‘The items of evidence … must be filed within the time limit fixed by the Office’. Furthermore it was stated that ‘… the applicant/holder’s comments will also be forwarded to you with a time limit to reply. However, please note that during the latter time limit it will in principle not be allowed to file any further evidence of use and, if filed, it may not be taken into account’. The definitive nature of the set time limit has thereby unequivocally been communicated to the appellant.

  1. The appellant submitted some evidence at the appeal stage on 1.8.2016. This was more than 20 months after the set time limit, 25.11.2014.

  1. The vast majority of the evidence attached to the statement of grounds are just translations into English of documents which are in Spanish. Actually all these documents have already been taken into account in the assessment of the original evidence. Notably, the appellant was not under an obligation to translate the evidence of use, at least not to the extent that it is self-explanatory (Rule 22(6) in conjunction with Rule 40(5) CTMIR, see Guidelines, Part D, Section I, 6.5.; 13.2.2015, T287/13, Husky, EU:T:2015:99, § 55; 11.3.2010, R 167/2009-1, INA/INA, § 2425). To the extent that some documents filed in first instance such as emails were now translated, that adds nothing to the substance of the case.

  1. Besides that the appellant merely furnished some documents about flight reservations or that somebody from the appellant’s firm visited Europe, but have prima facie no bearing on the sales of goods in Europe. Moreover, the appellant did not specify as to how these documents could be indicative for a use of the mark and how they would affect the assessment made by the Opposition Division.

  1. It speaks against the Board’s discretion to be exercised in the appellant’s favour that also the legitimate interest of the respondent has to be taken into account as dictated by the principle of equality of arms. The respondent had obtained a decision from the Office to allow revocation which was lawfully taken.

  1. Moreover, the evidence submitted is manifestly inconclusive, in particular as regards the crucial issue whether and to what extent the appellant is active on the European market. Once again, evidence of arrangements trying to expand the business to the European Union does not act as evidence of use of the EUTM.

Conclusion

  1. The appellant has not submitted sufficient evidence to prove genuine use of the EUTM No 6 975 361. The revocation shall be allowed and take effect from the date of the application for revocation, 24.5.2014.

  1. The appeal shall be dismissed.

Costs

  1. As the appellant is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the costs of the cancellation and appeal proceedings.

Fixing of costs

  1. In accordance with Article 85(6) EUTMR in conjunction with Rule 94(3) CTMIR, the decision of the Board shall, where applicable, include the fixing of the amount of the costs to be paid by the losing party. Pursuant to Rule 94(6) CTMIR, the Board fixes the cancellation fee of EUR 700 to be reimbursed by the losing party. Under Rule 94(7)(d) CTMIR, representation costs are only to be fixed in favour of a party who was represented by a professional representative within the meaning of Article 93 EUTMR. This is not the case for the successful respondent. Therefore, there are no representation costs to be fixed. The same applies for the cancellation proceedings.

Order

On these grounds,

THE BOARD

hereby:

  1. Dismisses the appeal;
  2. Orders the appellant to bear the costs of the appeal proceedings;
  3. Fixes the amount of the costs to be reimbursed by the appellant to the respondent with respect to the cancellation and appeal proceedings at EUR 700.

Signed

D. Schennen

Signed

C. Bartos

Signed

S. Martin

Registrar:

Signed

H. Dijkema

10/01/2017, R 981/2016-4, CARDON COSAS NUESTRAS

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