LUNA | Decision 0012687 – Trademarkers Legal Blog

CANCELLATION No 12687 C (REVOCATION)

‘Neuer Wall’ Treuhand GmbH, Am Sandtorkai 41, 20457 Hamburg, Germany (applicant), represented by Taylor Wessing, Thurn-und-Taxis-Platz 6, 60313 Frankfurt am Main, Germany (professional representative)

a g a i n s t

McAirlaid's Vliesstoffe GmbH, Münsterstr. 61-65, 48565 Steinfurt, Germany (EUTM proprietor), represented by Bungartz Christophersen, Homberger Straße 5, 40474 Düsseldorf, Germany (professional representative).

On 27/06/2017, 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 8 633 661 are revoked as from 14/03/2016 for all the contested goods, namely:

Class 16: Paper, fine paper, writing paper, printing paper, newsprint, wrapping paper; cardboard (included in the class); carton paper; corrugated cardboard; packagings of cardboard, carton or corrugated cardboard.

3. The European Union trade mark remains registered for all the uncontested goods, namely:

Class 1: Paper pulp, wood pulp.

4. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 8 633 661 ‘LUNA’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 16:

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 14/03/2016 claiming that the EUTM proprietor has not put its European Union trade mark registration to genuine use for a continuous period of five years in connection with the goods in Class 16.

The EUTM proprietor submitted observations and evidence of use (listed below) within the time limit granted. The EUTM proprietor argues that the trade mark was registered on behalf of SCA Forest Products AB and was transferred to the current EUTM proprietor McAirlaid's Vliesstoffe GmbH in the beginning of 2015. The proprietor explains that the original trade mark owner produces goods made from cellulose obtained from wood, for example, products for personal hygiene, wiping, cleaning and polishing applications, baby diapers, etc. and that the intermediate product starting from the tree, as a raw material, is wood pulp and paper pulp. Pulp was marketed by SCA Forest Products AB under the trade name ‘LUNA’, which was sold all over Europe. The EUTM proprietor filed evidence, inter alia, statutory declarations, invoices, order confirmations and shipping documents, printouts from the internet, data sheets and product descriptions, photographs and sales figures and argues that the mark was used for paper pulp and wood pulp in the EU during the relevant period. Therefore, the mark was used during the relevant period in the relevant territory in respect of the goods for which it is registered.

The applicant argues that the proprietor clearly failed to provide evidence that the contested trade mark was put to genuine use for the goods in Class 16. In the applicant’s view, all the evidence does not refer to the contested goods in Class 16 but to the non-contested goods in Class 1. The applicant examines the individual pieces of evidence and gives examples where ‘LUNA’ is referred to as an ‘absorption material’, ‘CTMP’ (abbreviation for chemithermomechanical pulp), ‘wood pulp’, etc. In conclusion, the applicant argues that the proprietor failed to prove genuine use for the contested goods and that the request for revocation should be upheld.

The EUTM proprietor, in its response, refutes the arguments of the applicant. As regards the scope of the application for revocation, it was not limited to the goods in Class 16 only. Furthermore, the applicant acknowledged the genuine use of the contested mark for the goods in Class 1. The trade mark ‘LUNA’ was used for a product family starting from a wood pulp or paper pulp as initial products, which were processed into different semi-products called ‘LUNA’ and then the addition of the product quality, for example, to paper and cardboard. The EUTM proprietor claims that, for example, ‘Luna Core’ is a semi-finished material offered as a paper web or cardboard webs (Enclosure 4) and ‘Luna’ is referred to as an airlaid material available in rolls with smooth or patterned surface (p.7 of attachment 5). According to the EUTM proprietor, genuine use was proved for the goods in Classes 1 and 16.

On 02/02/2017, the Cancellation Division notified the parties that the adversarial part of the proceedings was closed and that a decision would be taken in due course.

Preliminary remark

In relation to the extent of the request for revocation, the EUTM proprietor argues that it was not limited to the goods in Class 16.

However, the Cancellation Division notes that the cancellation applicant indicated in the application for revocation that the request is directed against part of the goods covered by the EUTM. Furthermore, in compliance with the practice of the Office (see Guidelines for Examination in the Office, Part D, Cancellation, Extent of the application for cancellation (Rule 37(a)(iii) EUTMIR), p.7), the applicant clearly identified the specific contested goods in a list. The reasoned statement provided by the applicant on the second page of the application form for revocation also mentions that ‘the proprietor has not put the trade mark to genuine use in the Community in connection with the goods in Class 16, for which it has been registered’.

In light of the foregoing, the Cancellation Division considers that the revocation request is directed against all the goods in Class 16 (as listed in the application for revocation).

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 05/01/2011. The revocation request was filed on 14/03/2016. 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 revocation request, that is, from 14/03/2011 to 13/03/2016 inclusive, for the following contested goods:

On 18/08/2016 the EUTM proprietor submitted evidence as proof of use.

As the EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

The evidence consists of the following:

Enclosure 1: Statutory declaration by the sales and marketing manager of the company SCA Forest Products AB. In the declaration, it is explained, inter alia, that the trade name ‘Luna’ was used for CTMP products from 2006 until now and that since May 2014 the current EUTM proprietor granted a license to continue the use of the trade marks for wood pulp and paper pulp. It is furthermore mentioned that the products called ‘Luna’ are cellulose, especially in the form of airlaid made from CTMP. The declaration includes annual sales and turnover figures for ‘Luna’ products for 2010, 2011, 2012, 2013 and 2014 and makes reference to the following additional evidence (attachments 1 to 11):

Attachment 1: Printout from www.ctmpstarfluff.cn/en/pulp/products/luna/luna-story in relation to ‘Luna’ pulp products (referred to as ‘a semi-finished product’ and ‘an airlaid material’). The page bears an update date 24/08/2012.
Attachment 2: Printout from www.ctmpstarfluff.cn/en/pulp/products/luna/luna-in-consumer in relation to ‘Luna’ pulp in consumer products, wherein it is described that ‘Luna’ is suitable and used in the production of food absorbent packaging, hygiene products and special products. The page bears an update date 27/04/2012.
Attachment 3: Printout from www.ctmpstarfluff.cn/en/pulp/products/luna/luna-grades in relation to ‘Luna fluff’, an absorption material with specially adapted properties for hygiene products. The page bears an update date 05/09/2012.
Attachment 4: Printout from www.sca.com/en/pulp1/Media/Articles/2012 showing an article dated 30/01/2012 in relation to ‘Luna’ and several collaborations with companies for the creation of products based on ‘Luna’ dry-formed airlaid material.
Attachment 5: Product brochure titled ‘Zertifizierte Forst- und Papierprodukte von SCA’ published in 2012 in German, displaying the ‘Luna’ trade mark on page 7.
Attachments 6, 7 and 8: Order confirmation dated 13/02/2015 directed to a Swedish company in relation to ‘Luna Wave’ goods, including an invoice dated 19/02/2015 and shipping documents concerning the order. The invoice mentions, inter alia, the text ‘general trade rules for wood pulp’.
Attachments 9, 10 and 11: Order confirmation dated 11/09/2014 directed to a Dutch company in relation to ‘Luna Core’ goods, including an invoice dated 26/09/2014 and shipping documents concerning the order. The invoice includes, inter alia, the text ‘subject to the general trade rules for wood pulp, country of origin – Sweden’.

Enclosure 2: Printout from www.ctmpstarfluff.cn/en/pulp/products/luna/luna-grades in relation to ‘Luna Grades’. It is mentioned that ‘Luna’ comprises three product areas that can either be used as a semi-finished product or for defibration: Luna Wave, Luna Core and Luna Fluff. The page bears an update date 05/09/2012.

Enclosure 3: Printout from www.ctmpstarfluff.cn/en/pulp/products/luna/luna-grades in relation to ‘Luna Core’ referred to as a semi-finished product with excellent absorption properties. The page bears an update date 22/10/2008 and copyright date 2014.

Enclosure 4: Product data sheet for ‘Luna Core’ airlaid semi-finished material dated May 2013.

Enclosure 5: Printout from www.sca.com dated 09/07/2014 showing information about ‘Luna Eco Profile’.

Enclosure 6: Printout from www.sca.com dated 09/07/2014 showing information about ‘Luna Wave’. The page bears an update date 22/10/2008 and copyright date 2014.

Enclosure 7: Product data sheet dated May 2013 for ‘Luna Fluff White’ airlaid, referred to as ‘a dry formed fluff pulp’.

Enclosure 8: Screenshot (source not indicated) titled ‘Luna solves absorption’ dated 24/09/2013.

Enclosure 9: Printout from www.sca.com dated 09/07/2014 showing information about ‘Luna manufacturing process’.

Enclosures 10 and 11: Photos of a sample box displaying, inter alia, ‘Luna’.

Enclosures 12 – 15 : Photocopies of samples of ‘LUNA’ goods, in particular ‘LUNA WAVE’ 350 g/m2 in a transparent envelope, sample ‘LUNA CORE’” 600 g/m2 in a transparent envelope, sample ‘LUNA WAVE’ 600 g/m2 in a transparent envelope and sample ‘LUNA CORE’ 800 g/m2 in a transparent envelope.

Enclosure 16 and 17: Statutory Declarations dated 16/08/2016 and 17/08/2016 by the directors of a UK-based company confirming that during in the years 2008 – 2014 their company obtained the product ‘Luna’ made of wood pulp from SCA Forest Products AB, customized it according to its customers’ needs and sold it under its own trade names.

Enclosure 18: Invoice dated 21/02/2014 directed to the UK-based company mentioned in Enclosures 16 and 17 in relation to the sale of ‘Luna Core’. The invoice shows, inter alia, the text ‘subject to the general trade rules for wood pulp, country of origin – Sweden’.

Preliminary remarks

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The fact that the EUTM proprietor submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, it can be presumed that the evidence filed by the EUTM proprietor is an implicit indication that the use was with its consent.

To this extent, and in accordance with Article 15(2) EUTMR, the Cancellation Division considers that the use by those other companies was with the EUTM proprietor’s consent and, therefore, is equivalent to use by the EUTM proprietor itself.

Assessment of genuine use – factors

Use in relation to the registered goods

Article 51(1)(a) EUTMR and Rule 22(3) EUTMIR require that the EUTM proprietor proves genuine use for the contested goods and services for which the European Union trade mark is registered.

In the present case, the evidence of use submitted by the EUTM proprietor does not contain sufficient indications concerning the nature of use, in particular use for the contested goods in Class 16 for which the mark is registered. While it cannot be denied that the EUTM proprietor provided evidence showing use of the mark ‘Luna’ in relation to goods in Class 1, this use is not for the contested goods in Class 16.

The facts and evidence submitted by the EUTM proprietor do not contain any indications that the EUTM proprietor used its trade mark in connection with any of the contested goods. According to the EUTM proprietor the mark was used, for example, in relation to paper and cardboard. However, contrary to these statements, the evidence filed does not support such findings.

All the pieces of evidence filed, in particular the invoices and orders, the statutory declarations, the internet printouts, the articles and product data sheets relate to the use of the sign ‘Luna’ for pulp, a semi-finished product or material, an airlaid material made from CTMP (chemithermomechanical pulp), a dry-formed fluff pulp, etc. This is also clear from the invoices, which explicitly mention the text ‘subject to the general trade rules for wood pulp, country of origin – Sweden’. Although it is indeed described that ‘Luna’ is suitable and/or used in the production of finished goods in Class 16 (such as hygiene products, paper napkins, food absorbent packaging, etc.), this does not constitute use of the subject trade mark in relation to the mentioned goods in Class 16, as the ‘LUNA’ wood pulp airlaid material is a raw, semi-finished material, which needs to undergo further manufacturing process(es) in order to turn into a finished product belonging to Class 16, such as paper, cardboard or any of the mentioned goods such as napkins, absorption paper or other hygiene products.

In order to defend its position, the EUTM proprietor mentions that airlaid is a special paper made from fluff pulp and is denoted as ‘air-laid paper’ on Wikipedia. The Cancellation Division notes, however, that while this may be the case, the EUTM proprietor failed to demonstrate any document or evidence in relation to use for ‘airlaid paper’, which is not the same product as air-laid semi-finished material.

Consequently, the evidence submitted by the EUTM proprietor does not establish use in relation to the relevant contested goods. No proper reasons for non-use of the EUTM for these goods were given by the proprietor either. Therefore, since the EUTM proprietor failed to show the nature of use in relation to the contested goods in Class 16, the Cancellation Division considers that that the trade mark has not been genuinely used within the relevant territory and period in connection with the contested goods.

The factors time, place, extent and nature of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indication of all these factors in order to prove genuine use. Failure to fulfil one of the conditions is sufficient and, as the nature of use has not been proved, it is not necessary to enter into the other requisites.

Overall assessment

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 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).

Genuine use of a trade mark cannot be proved 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 (see judgment of 08/07/2010, T-30/09, peerstorm, EU:T:2010:298, § 29).

It follows from the above that the EUTM proprietor has clearly failed to prove genuine use, since it has not submitted evidence of the nature of use in relation to the contested registered goods.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested goods. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested goods, namely:

The EUTM remains on the register for all the uncontested goods, namely all the goods in Class 1.

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, i.e. as of 14/03/2016.

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

The Cancellation Division

Robert MULAC

Liliya YORDANOVA

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 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.

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