CANCELLATION DIVISION

CANCELLATION No 13 144 C (REVOCATION)

Damas Jewellery Ltd, 29 Dawley Avenue, UB8 3BU Uxbridge, United Kingdom

(applicant), represented by Stevens Hewlett & Perkins, 1 St. Augustine’s Place,

BS1 4UD Bristol, United Kingdom (professional representative)

a g a i n s t

Damas Jewellery LLC, P.O. Box 1522, Dubai, United Arab Emirates (EUTM

proprietor) represented by Nucleus IP limited, 10 St. Bride Street, EC4A 4AD London,

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431,

subject to certain transitional provisions. All the references in this decision to the

EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations

currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed a request for revocation of European Union trade mark registration

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The applicant argues that the EUTM has not been put to genuine use in the EU since

its registration on 07/06/2005 and that there are no proper reasons for non-use. The

applicant requests that the EUTM be revoked and the costs for the proceedings be

borne by the EUTM proprietor.

The EUTM proprietor argues that the EUTM has been put to genuine use by the EUTM

proprietor and/or its associated companies during the relevant period in respect of the

relevant goods and where use has been interrupted there are valid reasons for non-

use. The EUTM proprietor submits evidence (listed below in the decision) and provides

analysing in detail the evidence submitted by the EUTM proprietor. The applicant

argues in particular that the EUTM has not been used in the form as registered and

that the use was not in the relevant period. Moreover, according to the applicant if there

is some use at all it is shown for the company name of the EUTM proprietor, where no

connection can be established between the company name and the goods. As to the

evidence submitted in order to show that there are proper reasons for non-use the

applicant considers this attempt to be a tacit acknowledgment that the evidence does

not support a finding of genuine use of the trade mark during the relevant period.

Further, the applicant submits that the reasons set out by the EUTM proprietor cannot

be considered to constitute proper reasons for non-use and refers to Case-Law which

provide proper reasons for non-use, whereas it is not under the obligation to provide

sensitive commercial information.

The EUTM proprietor requests the application to be rejected and the costs to be

awarded to the EUTM proprietor.

GROUNDS FOR THE DECISION

According to Article 58(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

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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,

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 07/06/2005. The revocation request

was filed on 21/06/2016. 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

contested goods:

The evidence to be taken into account is the following:

Exhibit A Eleven invoices and ‘other related documents’, none of which translated

into the language of proceedings. Four of the invoices are dated outside

of the relevant period. None of the invoices shows the contested EUTM.

Exhibit B Documents, issued by the Companies House providing registration

details regarding the companies ‘Damas Southall Limited’ and ‘Damas

UK limited’.

Exhibit C A picture extracted from the webpage www.citikey.co.uk dated

05/10/2016 showing a shop displaying the sign .

Exhibit D A picture extracted from the webpage www.citikey.co.uk dated

05/10/2016 showing a shop displaying the sign

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Exhibit E Articles related to the appointment of the star Penelope Cruz as the face

for the Damas’ new product line Sama. The articles relate to an event

which took place in Dubai and are published in September 2016 (outside

of the relevant period).

Exhibit F Articles revealing details about Damas’ business.

1. Preliminary remarks

information can be clearly understood.

Тhe ratio behind the lack of a general obligation for the EUTM proprietor to provide

translation of each and every document is in principle that self-explanatory documents

don’t have to be translated, so that the EUTM proprietor does not incur unnecessary

costs. However, the application of this principle should not be abused and shall not

preclude the Cancellation Division and the applicant from the possibility to get familiar

with the content of the evidence, in particular the information that is important for

evaluating the time, place, extent and nature of use of the contested EUTM.

Taking into account the above considerations and also the principle of procedural

expediency the Cancellation Division does not find it necessary to request the EUTM

not in the language of proceedings. The EUTM proprietor did not translate at least the

invoices would have not incurred any additional costs on the EUTM proprietor. A

simple, non-certified translation in handwriting would have been sufficient. Finally,

bearing in mind also the pending opposition proceedings between the same parties,

the unwillingness of the EUTM proprietor to translate the most relevant and important

information regarding use of the contested EUTM in relation to the goods in the

specification, speaks rather in favour of applying some delaying tactics to the current

Taking on board all the particularities of the case, the Cancellation Division does not

find it necessary to re-open the proceedings and request the EUTM proprietor to

submit translation of the evidence. As it will also become evident later on in the

decision, the outcome of the revocation case would not have been any different, had

the EUTM proprietor submitted the translations.

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2. Assessment of genuine use – factors

The factors time, place, extent and nature of use are cumulative (05/10/2010, T-92/09,

provide sufficient indications of all these factors to prove genuine use. The Cancellation

Division finds it appropriate to first examine the nature of use of the contested EUTM.

Nature of use: use as a trade mark

essential that the rights conferred by a mark for a given class of goods or services are

belonging to that class (15/01/2009, C-495/07, Wellness, EU:C:2009:10, § 19).

The contested EUTM is not displayed on any of the submitted invoices. The verbal

element ‘DAMAS’ appears on the invoices as part of the company name ‘DAMAS

EUROPE S.P.A. IN LIQUIDAZIONE E C.P.’

The purpose of a company name is not to distinguish goods or services. The purpose

of a company name is to identify a company. Accordingly, use of a company name

cannot be considered as being ‘in relation to goods or services’ within the meaning of

Article 5(1) of the Directive.

It is to be noted further that the company name and the contested EUTM show

perception of the company name ‘DAMAS EUROPE S.P.A. IN LIQUIDAZIONE E C.P.’

will be perceived as such. Thus, the sign as registered does not constitute the EUTM

proprietor’s company name.

Apart from being so different from the mark as registered, it is not evident that the

EUTM proprietor affixes its company name to the goods.

Furthermore, no link can be established between the company name and the goods in

the specification.

Use of the EUTM in relation to the registered goods and services

EUTM proprietor is that reflected on the undated shop pictures submitted as Annexes

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Article 58(1)(a) EUTMR and Article 10(3) EUTMDR require that the EUTM proprietor

proves genuine use for the contested goods and services for which the European

Union trade mark is registered.

The only possible conclusion that can be drawn on the basis of the submitted

documents is that the sign is used as a shop name, which

could eventually prove use in relation to retail services. Use of the sign ‘Damas’ in

relation to retail services is also supported by the evidence, in particular it is mentioned

in one of the articles (Exhibit 6) that ‘… leading jewellery retailer Damas launched its

luxury jewellery brand – Sama…’. Two conclusions can be drawn from this evidence.

First of all, ‘DAMAS’ is a jewellery retailer, and second – jewellery products/product

lines are launched under different brands such as ‘Sama’.

Even under the assumption that use of the signs and ‘DAMAS’

could be considered use of the registered EUTM in a form which does not alter its

distinctive character and that such use was made during the relevant period (which is

3. Overall assessment on the genuine use

The evidence for the nature of use does not show use of the EUTM as a trade mark. It

only shows the name of the company in a way which does not suggest that the

consumer will establish a link between the company name and the relevant goods. In

the only occasion where such use of the sign could eventually be considered despite

other factors of genuine use not being present (such as time and extent) the conclusion

that can be drawn from the submitted evidence is that the sign could have been used in

relation to services which are not covered by the specification. All in all, the evidence

furnished by the EUTM proprietor is clearly insufficient to prove that the contested trade

mark was put to genuine use.

The EUTM proprietor itself does not claim directly the reasons for non-use but instead

refers to some articles allegedly revealing the reasons ‘why the business stalled in the

EU and the intention to re-establish the business in EU’ and lets the Cancellation

Division extract the reasons for non-use from these documents.

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In an article dated 25/11/2013 the CEO of Damas (Dubai-based jeweller) the chief

executive Anan Fakhredin refers to the markets in the U.S., China, Europe and India as

markets where the company wants ‘to explore the possibility of securing market share

for Damas’. This is an indirect evidence that the possibilities to expand to the European

market were considered for the first time not earlier than 2013 and supports the finding

that the Cancellation Division reached in the above section.

The article also mentions ‘an embarrassing’ chapter in 2010 when the jeweller (Damas)

‘was fined by the Dubai regulator after the three brothers heading the business then

took gold from the company for personal investment purposes.’ In another article Mr.

Fakhredin speaks about ‘a major crisis in 2010’. It can be inferred from the article that

the crisis might have been caused by the conviction of the owners of the business of

particular claim on behalf of the EUTM proprietor) might have been these commercial

difficulties. However, financial difficulties encountered by a company as a result of its

own financial problems are not considered to constitute proper reasons for non-use

within the meaning of Article 47(2) EUTMR, as these kinds of difficulties constitute a

natural part of running a business. It is established Case-Law that the concept of

proper reasons must be considered to refer to circumstances arising independently of

the will of the owner that make use of the mark impossible or unreasonable, rather than

to circumstances associated with commercial difficulties it is experiencing (decision of

14/05/0008, R 0855/2007-4, PAN AM, § 27; judgment of 09/07/2003, T-162/01, Giorgio

Beverly Hills, EU:T:2003:199, § 41, (judgment of 18/03/2015, T-250/13, SMART

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COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs