CANCELLATION No 14238 C (REVOCATION)

Dr. Goerg GmbH, Geschwister-Scholl-Straße 25, 56410, Montabaur, Germany (applicant), represented by Zirngibl Rechtsanwälte Partnerschaft mbB, Brienner Str. 9, 80333, München, Germany (professional representative)

a g a i n s t

Choco Mundo B.V., Kennemerstraatweg 186, NL-1851 Aw Heiloo, The Netherlands (IR holder), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage  Anna van Buerenplein 21A, 2595DA, Den Haag, The Netherlands (professional representative).

On 11/09/2017, the Cancellation Division takes the following

DECISION

1.        The application for revocation is upheld.

2.        International trade mark registration No 946 984 is revoked in its entirety for the European Union as from 23/12/2016.

3.        The IR holder bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for revocation of international registration designating the European Union No 946 984 ‘CHOCO MUNDO’ (word mark) (the IR). The request is directed against all the goods and services covered by the IR, namely:

Class 29:        Milk based beverages, containing chocolate and/or cocoa; milk and milk products; edible oils and greases, aforesaid products are all biological;

Class 30:        Pastry and confectionery, chocolate, cocoa, candy, nougat, sweets; fine foodstuffs and delicatessen as far as not included in other classes; edible ices, ice cream products; aromatic substances for beverages (except essential oils); sweet spreads and savoury spreads for bread as far as included in this class; chocolate paste; sauces; cocoa and cocoa based preparations; chocolate and/or cocoa based beverages; aforesaid products are ecological and/or biological;

Class 35:        Wholesaling and retailing services in the field of the products list aforesaid in classes 29 and 30; sales promotion and business agency services by purchase and sale of products of the aforesaid in classes 29 and 30; import and export of products of the aforesaid in class 29 and 30.

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

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.

According to Article 145 EUTMR, unless otherwise specified, both the EUTMR and the EUTMIR apply to applications for international registrations. As regards the application of Article 51(1) EUTMR to international registrations designating the Union, Article 160 EUTMR establishes that the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark must be put to genuine use in the Union.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the IR holder 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 IR holder who must prove genuine use within the European Union or submit proper reasons for non-use.

In the present case the IR was published in accordance with Article 152(2) EUTMR on 17/11/2008. The revocation request was filed on 23/12/2016. Therefore, the IR had been published for more than five years at the date of the filing of the request.

On 17/01/2017, the Cancellation Division duly notified the IR holder of the application for revocation, after rectification of deficiencies by the applicant, and gave it a time limit of three months to submit evidence of use of the IR for all the goods and services for which it is registered.

The IR holder did not submit any observations or evidence of use in reply to the application for revocation within the time limit.

According to Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide proof of genuine use of the contested mark within the time limit set by the Office, the European Union trade mark will be revoked.

In the absence of any reply from the IR holder, there is neither any evidence that the IR has been genuinely used in the European Union for any of the goods and services for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 158 EUTMR in conjunction with Article 55(1) EUTMR, the effects of the IR in the Union must be declared invalid as from the date of the application for revocation.

Consequently, the IR holder’s rights must be revoked in their entirety and deemed not to have had any effects as from 23/12/2016.

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 IR holder 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 costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Arkadiusz GORNY

Cindy BAREL

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 of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Annex 1 A(33) EUTMR).