CANCELLATION No 14 169 C (REVOCATION)

 

Bois & Matériaux, Route de Saint Brieuc, 35740 Pace, France (applicant), represented by T Mark Conseils, 31, rue Tronchet, 75008 Paris, France (professional representative).

 

 

a g a i n s t

 

Evonik Industries AG, Rellinghauser Str. 1-11, 45128 Essen, Germany (EUTM proprietor) represented by Roland Weiß, Rodenbacher Chaussee 4, 63457 Hanau-Wolfgang, Germany (professional representative).

 

On 02/05/2017, 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 6 818 801 are revoked in their entirety as from 12/12/2016.

 

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

 

 

REASONS

 

The applicant filed a request for revocation of European Union trade mark No 6 818 801 ‘EVONIK DEGUSSA’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:

 

Class 1:         Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; inorganic and organic basic chemicals, organic special chemicals, fine chemicals and biochemicals, agro-chemicals, petroleum auxiliaries, chemicals used in the construction industry; unprocessed artificial resins, unprocessed plastics; manures; plant growth regulators, flame protection preparations and fire extinguishing agents; tempering and soldering preparations; chemical preparations used in animal breeding, wine-making and in the textile and paper industries; enzymes for industrial purposes; chemical substances for preserving foodstuffs; odour inhibitors for organic waste and for incorporating into plastics, textiles and paper; tanning substances; adhesives used in industry.

 

Class 2:        Paints, varnishes, lacquers, pigments, paint dispersions, coatings for buildings of all types; preservatives against rust and corrosion and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

 

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

 

Class 4:         Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants.

 

Class 5:        Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food supplements, food for babies; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

 

Class 31:        Agricultural, horticultural and forestry products and grains included in class 31; foodstuffs for animals, animal foodstuff additives, not for veterinary purposes.

 

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.

 

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 21/01/2009. The revocation request was filed on 12/12/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

 

On 20/12/2016, the Cancellation Division duly notified the EUTM proprietor of the application for revocation and gave it a time limit of three months to submit evidence of use of the EUTM for all the goods for which it is registered.

 

The EUTM proprietor 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 EUTM proprietor, there is neither any evidence that the EUTM has been genuinely used in the European Union for any of the goods for which it is registered nor any indications of proper reasons for non-use.

 

Pursuant to Article 55(1) EUTMR, the EUTM must be deemed not to have had, as from the date of the application for revocation, the effects specified in the EUTMR, to the extent that the proprietor’s rights have been revoked.

 

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

 

 

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

 

 

 

 

 

The Cancellation Division

 

 

 

Claudia SCHLIE

Raphaël MICHE

José Antonio GARRIDO OTAOLA

 

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).