CANCELLATION No 11 980 C (REVOCATION)
CKL Holdings N.V., Leeuwenstraat 4, 2000 Antwerp, Belgium, (applicant),
a g a i n s t
Honda Motor Co., Ltd., 1-1, Miniami-Aoyama 2-chome, Minato-Ku, Tokyo 107-8556, Japan (EUTM proprietor), represented by Mitscherlich, Patent-Und Rechtsanwälte, Partmbb, Sonnenstrasse 33, 80331 Munich, Germany (professional representative).
On 14/03/2017, the Cancellation Division takes the following
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 8 672 594 are revoked in their entirety as from 26/10/2015.
3. The EUTM proprietor bears the costs, fixed at EUR 700.
The applicant filed a request for revocation of European Union trade mark registration No 8 672 594 (word) (the EUTM). The request is directed against all the goods covered by the EUTM, namely
Class 7: Gas engines for systems; gas engines for cogeneration systems for household purposes; engines (not for land vehicles); non-electric prime movers (not for land vehicles); parts and accessories thereof.
Class 12: Gasoline engines for automobiles; non-electric prime movers for land vehicles (not including their parts).
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested mark has not, within the period of 5 years, been put into genuine use. The applicant requests the revocation of the mark to be effective from 28/04/2015 or another date.
The EUTM proprietor sends evidence described below and argues that the mark has been used for several years for “gas engines using gas power combined heat power units” within the European Union.
The applicant answers that the evidentiary value of the affidavit is questionable as it comes from the Owner’s business partner who may be biased towards the Owner for their common business interests, the statement from such a party, thus, cannot be considered reliable. The purchase order post-dates the relevant period and should be disregarded. Finally, the applicant underlines that all the submitted drawings and the images are undated except for one image sheet. However, taking all the submitted drawings and the images into consideration, there is no indication as to when and where the said images were taken, published or used. Therefore, it is not clear from the given evidence as to where or when the concerned goods were used, whether the goods shown were meant for sale in the European Union or whether the goods in question were used in any kind of commercial dealings. It considers that the submitted images are the technical drawings meant for internal usage by the staff of the Owner’s company as these images and technical drawings are not supported by further evidence of marketing or commercial sales of the concerned goods. Clearly, such usage cannot be regarded as the public and outward use of the subject mark in relation to the specified goods in Classes 7 and 12. It concludes that the overall assessment of the use of the subject mark in terms of time, place, nature and extent does not constitute the genuine use of the mark at issue.
The EUTM proprietor requests the Office to take its decision.
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 28/04/2010. The revocation request was filed on 26/10/2015. 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 26/10/2010 to 25/10/2015 inclusive, for the above mentioned following contested goods in Classes 7 and 12.
On 20/06/2016 the EUTM proprietor submitted evidence as proof of use.
The evidence to be taken into account is the following (numbered by the cancellation division):
- 1. Affidavit of Peter Sohns, employee of Vaillant GmbH, one of the EUTM proprietor’s customer in Germany, indicating that since at least 2013, the mark has been used and in 2014 and 2015, more than 600 pieces of gas engine were ordered.
- 2. Copy of a purchase order in German of ‘Gasmotor’ by Vaillant GmbH to the EUTM proprietor dated 08/06/2016 where there is a reference to GFV110 RZ Y1
- 3. Undated document titled ‘YR2 Engine & Packaging Image’ showing GFV110 affixed on the outer design of a package of engines with other elements and in particular EAN 13 and HONDA.
- 4. Document dated 28/02/2012 and titled ‘YR1J ENG Package’ with no reference of the contested mark.
- 5. Undated document titled “YR1J ENG outer package design” displaying HONDA and GFV110-RZY1 which appears to be a technical drawing
- 6. Undated technical document titled “YR1J ENG pallet for 6 units” where GFV is not shown.
Assessment of genuine use – factors
Documents 4 and 6 do not display the trade mark GFV and do not provide any other information as regards the use of the contested mark, therefore they are no relevant.
The only piece of evidence mentioning the different factors (time, place, extent, use as registered, use as a trade mark and use for the goods covered) is the affidavit (point 1) as it indicates that the trade mark GFV was used ‘at least’ since 2103 for an extent of ‘more than’ 600 pieces for gas engines in Germany. The affidavit comes from an independent source as, contrarily to what stated by the applicant, an external client is a third party. Nevertheless, this document is very short and not precise (‘at least’, ‘to a large extent’, ‘more than’, etc.). It gives only very general indications and cannot suffice per se as evidence of genuine use. If the mark has been used, considering also that all means of evidence are possible, the EUTM proprietor should be able to support the statement by other type of evidence, in order in particular to show that the trade mark was used as registered, as a trade mark and to a sufficient extent.
In the present case, the additional evidence cannot support the affidavit. The purchase order in German from the client who signed the affidavit (point 2) is dated after the relevant period (26/10/2010 – 26/10/2015) and therefore it is not sufficient to support the affidavit. In addition, it mentions ‘GFV110 RZ Y1’ while the trade mark is registered as ‘GFV’. Even if the elements ‘110 RZ Y1’ might be related to technical specificities of ‘Gasmotor’, (product indicated in German), this is not explained by the EUTM proprietor and the Cancellation division cannot based itself on suppositions.
The undated document (points 3 and 5) show respectively references to ‘GFV110’ and ‘GFV110-RZY1’ confirming in a way that the letters are not used alone.
There are also doubts as to whether the letters GFV (in combination with other elements) are used as a trade mark at all. The letters GFV seem to be used as a technical reference and not as a trade mark distinguishing goods (doc.3 and doc.5). Therefore, the additional documents created more doubts instead of supporting the affidavit.
Finally, the additional documents even if they were not flawed with the above mentioned elements, would not be enough to support the extent of use. As mentioned by the applicant, there is no evidence supporting any marketing or commercial sales of the goods in question.
In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 36).
An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43).
The methods and means of proving genuine use of a mark are unlimited. The finding that genuine use has not been proven in the present case is due not to an excessively high standard of proof, but to the fact that the EUTM proprietor chose to restrict the evidence submitted (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 46).
It follows from the above that the EUTM proprietor has clearly failed to prove genuine use, since the evidence of the time of use, extent of use, use as registered, use for the goods, use as a trade mark is not sufficient.
It follows from the above that 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 26/10/2015. An earlier date, on which one of the grounds for revocation occurred, may be fixed at the request of one of the parties. In the present case, the applicant has requested an earlier date (28/04/2015). However, in exercising its discretion in this regard, the Cancellation Division considers that it is not expedient in this case to grant this request, since the applicant has not shown sufficient legal interest to justify it.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.
The Cancellation Division
Ana MUÑIZ RODRÍGUEZ
Pierluigi M. VILLANI
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.