CANCELLATION No 12 615 C (REVOCATION)
Hoog Catharijne B.V., Stationsplein 97 Duvenborch, 3511 ED, Utrecht, Netherlands (applicant), represented by De Brauw Blackstone Westbroek, Claude Debussylaan 80, 1082 MD Amsterdam, Netherlands
a g a i n s t
Rodamco Nederland Winkels B.V., Jollemanhof 8, Amsterdam, Netherlands (EUTM proprietor), represented by Dentons Boekel N.V., Gustav Mahlerplein 2, 1082 MA, Amsterdam, Netherlands (professional representative).
On 28/06/2017, 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 6 833 834 are revoked in their entirety as from 29/02/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed a request for revocation of European Union trade mark registration No 6 833 834 (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:
Class 16: Printed matter, newspapers, magazines, newsletters, periodicals, books, files (stationery), albums, catalogues and pamphlets, posters; paper, cardboard; printed matter; publications; prospectuses; signboards of cardboard or paper; labels (not of textile); stationery, adhesives for stationery; stickers (items of stationery); pencils; pens; office requisites (other than furniture); bags [envelopes, pouches] of paper or plastics, for packaging.
Class 35: Advertising; business management; business management and organisation consultancy; business information; outdoor advertising; dissemination of advertising matter, direct mail advertising; advertising mail; business management assistance; business management consultancy; distribution of samples; organisation of exhibitions and trade fairs for commercial or advertising purposes; computerized file management; rental of advertising material, rental of advertising time on all means of communication, rental of advertising space; online advertising on a computer network; publication of publicity texts; advertising by mail order, radio and television advertising; sales promotion (for others); organisation of promotional activities to obtain customer loyalty; organisation of regional or national promotional campaigns; demonstration of goods; shop-window dressing; business management services relating to cards, not for financial purposes, for winning customer loyalty; retailing and collection (except transport) for others, of consumer goods, enabling customers to view and purchase these goods from retail shops or department stores, from a general merchandise catalogue or from a website, from the television or via any other form of electronic communications media, in the fields of clothing, health, hygiene, food, entertainment, household equipment, decoration, furnishing, culture and education and recreation, namely bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumes, cosmetics, perfumery, essential oils, make-up preparations, hair lotions, dentifrices, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, materials for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, hand tools and implements (hand-operated), cutlery, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, CD-ROMs, DVDs, audio cassettes and video cassettes, software (recorded programs), fire-extinguishing apparatus, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, apparatus for locomotion by land, air or water, fireworks, precious metals and their alloys, works of art, jewellery cases, candlesticks, vases, boxes, statues or figurines (statuettes), cigar or cigarette cases, cigarette holders, powder compacts, purses, household or kitchen utensils, tableware, jewellery, necklaces, rings, bracelets, precious stones, horological and chronometric instruments, watches, wristwatches, musical instruments, paper sheets, cardboard, babies’ napkin pants (disposable), towels, handkerchiefs, toilet paper, tissues for removing make-up, coffee filters, table linen, rubbish bags, cardboard articles, bags (envelopes, pouches) for packaging, printed matter, books, newspapers, periodicals, pens, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paintbrushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging (namely bags, films and sheets), printers’ type, printing blocks, leather and imitations of leather, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, briefcases, purses not of precious metal, handbags, rucksacks, wheeled bags, bags for climbers, bags for campers, traveling bags, beach bags, school bags, vanity cases (not fitted), collars and covers for animals, shopping bags and net bags for shopping, bags (envelopes, pouches) of leather for packaging , furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, namely works of art, cushions, armchairs, seats, boxes, stoppers, crates of wood, straws for drinking, dowels, not of metal, clothes hangers, baskets, fixed towel dispensers, ladders, figurines (statuettes), kennels for household pets, playpens, clothes hooks, table tops, umbrella stands, magazine racks, shelves, packaging containers, slatted indoor blinds, household or kitchen utensils and containers (not of precious metal or coated therewith), combs and sponges, brushes (except paintbrushes), brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, namely boxes of glass, candlesticks not of precious metal, flowerpot covers, not of paper, figurines (statuettes) of porcelain or glass, mosaics of glass, not for building, opaline glass, vases not of precious metal, tableware not of precious metal, glass (receptacles), flasks not of precious metal, soap dishes, napkin holders, not of precious metal, powder compacts not of precious metal, perfume vaporizers, perfume sprays, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (envelopes, pouches) of textile for packaging, bags for the transport and storage of goods in bulk, padding and stuffing materials (not of rubber or plastics), raw fibrous textile materials, yarns and threads for textile use, textiles and textile goods, namely bath linen, bed linen, household linen, table linen, face towels, canvas for tapestry or embroidery, curtains, blinds, wall hangings, non-woven textile fabrics, bed and table covers, clothing, footwear, headgear, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), games and playthings, gymnastic and sporting articles, except clothing, footwear and mats, decorations for Christmas trees (except lighting), meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, agricultural, horticultural and forestry products and grains, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers), wine, tobacco, smokers’ articles and matches; allowing customers to see and buy the aforementioned products in the retail stores or in the department stores, in a general catalogue or on an Internet site, on television or by any other form of electronic media of telecommunication.
Class 36: Insurance; real estate affairs; financing services, financial affairs, monetary affairs, banking; debt collection agencies; credit bureaux, exchanging money; financial analysis, hire-purchase financing, issue of tokens of value, surety services; financial consulting services; financial evaluation (banking, real estate); mutual funds, capital investment, electronic funds transfer, fund investments, financial sponsorship, banking and financial services via computer communications networks; portfolio management; lending against security; credit services; factoring; financing services; financial transactions; real-estate brokerage; rental of offices (real estate) and of business premises; management of apartment houses, business premises, conference centres and exhibition centres and adjoining premises; rent collection; real estate agencies (real estate brokerage and leasing of business premises and apartment houses); real-estate valuations; real estate appraisal; issuing of travellers’ cheques and letters of credit; charitable fund raising; credit card services; financial services provided to loyalty card holders; cards for financial purposes, for obtaining financial benefits in the form of reductions, the award of bonuses or points, on a prorata basis depending on purchases made.
Class 37: Building construction; repair; installation services.
Class 38: Telecommunications; news and information agencies; information about telecommunications; radio broadcasting, television broadcasting, communications by telegrams or by telephone; communications by and/or between computers and computer terminals; data transmission by teleprinter; transmission of messages and videograms; transmission of specialist technical information by data transmission; transmission of information, sound or images by computers connected in networks and via the Internet; providing access to a global computer network; satellite transmission; dissemination (transmission) of advertisements, including via the Internet; television broadcasting, radio broadcasting, cable television broadcasting, radio and television broadcasting; downloading of data (information, images, sound) via a global computer network, by computers linked in a network and by means of a computer site on communications networks.
Class 39: Transport; packaging and storage of goods; travel arrangement.
Class 41: Providing of training, educational services; entertainment services; information and consultancy relating to entertainment and recreation, in particular information and consultancy to transit passengers in airports, relating to education and recreation; providing gaming house facilities; amusement parks; leisure services; ticket agency services (entertainment); arranging and conducting of conferences, colloquiums, workshops (training), congresses and seminars; operating lotteries, organisation of competitions (education or entertainment); film and videotape production, radio broadcasting, radio and television entertainment; editing of video tapes, of radio and television programmes; organization of exhibitions for cultural and educational purposes; organization of sports competitions; organisation of shows (impresario services); publication of books and texts (not including publicity texts).
Class 43: Services for providing food and drink; temporary accommodation; cafés-restaurants, cafeterias, snack bars, self-service restaurants; bars; services of delicatessens; arrange housing (hotels, pensions); rental of temporary accommodation; reservation of temporary accommodation; canteens.
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The EUTM proprietor argues that, although it has not used the trade mark, there are legitimate reasons for non-use according to Article 51(1)(a) EUTMR. It first points out that both parties are competitors and companies specialised in shopping centres in Europe, and that the contested trade mark is part of a series of ‘Mall of …’ (with a specific country name) trade marks registered by the EUTM proprietor throughout Europe. It explains that all shopping centres bearing the trade mark ‘Mall of …’ must comply with some internal quality criteria (area, access, size, architectural features, number and quality of stores, leisure facilities, four-star classification).
Concerning the alleged reasons for non-use, the EUTM proprietor refers to Article 19(1) of the TRIPS Agreement to stress that circumstances arising independently of the will of the owner of the trade mark constitute an obstacle to the use of the trade mark, such as import restrictions or other government requirements for goods and services protected by the trade mark. It also refers to case-law which explains that only obstacles having a sufficiently direct relationship with a trade mark making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as proper reasons for non-use of that mark.
In the present case, the EUTM proprietor argues that, as part of its overall strategy, it intended to rename its Amstelveen shopping centre as ‘Mall of the Netherlands’, together with a major refurbishment and significant expansion of the shopping centre in order to meet the quality criteria for shopping centres named ‘Mall of …’. In view of the above, the EUTM proprietor explains that from 2009 it embarked on discussions with the Amstelveen municipality with a view to creating support for its ambitions (to be sure of political support and of the required zoning and planning permits). As the expansion plans included the demolition of several blocks of houses, the discussions with the municipality took several years and on 29/01/2013 the EUTM proprietor and the municipality entered into a letter of intent in which the parties set out the ambition of expanding and refurbishing the Amstelveen shopping centre. On 03/06/2013, the municipality publicly announced the plans to expand the Amstelveen shopping centre. The EUTM proprietor puts forward that this announcement created an uproar within the local community and resulted in large-scale protests against the expansion plans and against the demolition of houses. As a consequence, on 12/06/2013, the municipality withdrew its support for the expansion of the Amstelveen shopping centre and therefore the EUTM proprietor claims that it could not use its trade mark (against its will). It further explains that, since June 2013, negotiations were still ongoing with the municipality and in June 2015 the parties signed a memorandum of understanding to lay the groundwork for the EUTM proprietor’s ambitions for the future of the Amstelveen shopping centre. Negotiations and discussions are still pending regarding the refurbishment of the Amstelveen shopping centre, meaning that the reasons for non-use continue to exist.
The EUTM proprietor argues that using the trade mark in any way in relation to the Amstelveen shopping centre without the support of the municipality would have been destructive and would have jeopardised the process of rebranding the Amstelveen shopping centre as the ‘Mall of the Netherlands’. It puts forward that rebranding an existing shopping centre is a very complex operation that entails huge investments and innovations, and using a new name without actual and significant changes and careful planning and preparation would have seriously damaged the reputation of the EUTM proprietor and of its trade marks. In addition, the EUTM proprietor argues that, without refurbishment, the Amstelveen shopping centre does not meet the internal quality criteria of shopping centres named ‘Mall of ….’.
The EUTM proprietor further explains that, in the light of the ongoing changes in the retail sector, it could not wait any longer and decided to use the trade mark for another shopping centre, namely Leidsenhage shopping centre in Leidschendam. The EUTM proprietor argues that it could not use the trade mark for the Leidschendam shopping centre at an earlier stage for the same reasons as given above with regard to the Amstelveen shopping centre. In particular, it claims that the public in the Netherlands is highly sensitive to the word ‘Mall’, as it is negatively associated with large old-fashioned American shopping centres, presenting a risk for inner cities.
To summarise, the EUTM proprietor argues that the withdrawal of political support from the municipality can be considered an obstacle in the form of government requirements within the meaning of Article 19(1) of the TRIPS Agreement. The withdrawal of the municipality’s support meant that the required zoning and planning permits would not be granted, creating an obstacle to the genuine use of the trade mark. Furthermore, these obstacles have a sufficiently direct relationship with the trade mark for all the goods and services for which the contested trade mark is registered. Without the required permits, it was not possible to commence the refurbishment process and to start using the mark by renaming the existing shopping centres. These obstacles make the use of the mark impossible or, in any event, unreasonable. Indeed, the EUTM proprietor claims that all shopping centres bearing the mark ‘Mall of …’ have to meet requirements to ensure a similar quality of all ‘Mall of …’ shopping centres throughout Europe. Expecting the EUTM proprietor to suddenly deviate from these requirements just to prevent the loss of its trade mark would have been unreasonable. Finally, the EUTM proprietor argues that the obstacles have arisen independently of its will and that it could not have prevented this from happening.
The following documents are annexed to the observations, together with their translations into English:
- Exhibit 1: a letter dated 26/11/2015 issued by the EUTM proprietor and sent to the applicant, requesting the applicant to cease using the trade mark ‘Mall of the Netherlands’.
- Exhibits 2-5: an extract from Romarin concerning international trade mark registrations (figurative) ‘Mall of Austria’, ‘Mall of the Czech Republic’, Mall of Poland’ and ‘Mall of Slovakia’, all belonging to the EUTM proprietor.
- Exhibit 6: an extract from eSearch regarding EUTM No 6 749 832 ‘Mall of Scandinavia’ (figurative).
- Exhibit 7: press documentation for the trade mark ‘Mall of Scandinavia’.
- Exhibit 8: information on the opening of ‘Mall of Scandinavia’ in Stockholm.
- Exhibit 9: a press release dated 18/12/2014 concerning the development of ‘Mall of Europe’, expected to open in 2021 in Brussels.
- Exhibit 10: an internal Unibail-Rodamco strategy document dated 11/10/2010, setting out the plan to rename the Amstelveen shopping centre as ‘Mall of the Netherlands’.
- Exhibit 11: a document entitled ‘Ontwikkelvisie Stadshart Amstelveen’ (‘Development Vision for Amstelveen Stadshart’), dated May 2013, concerning the refurbishment plans of the Amstelveen shopping centre.
- Exhibit 12: a letter of intent dated 29/01/2013 between the EUTM proprietor and the Amstelveen municipality in which the parties set out their ambition to expand and refurbish the Amstelveen shopping centre. Article 2 of this letter states ‘The purpose of this Letter of Intent is to have Unibail-Rodamco draw up a Development Plan which the Mayor and Aldermen of the Municipality will then submit to the Municipality’s Council …. The Municipality’s council will be free to decide whether or not to grant that request. The development Plan must demonstrate to Unibail-Rodamco and the Municipality that Stadshart Amstelveen can be redeveloped and expanded in a way this is acceptable to the public and is feasible both financially and economically.’
- Exhibit 13: a letter dated 03/06/2013 entitled ‘Invitation to information evening on the expansion of Stadshart Amstelveen’, addressed to inhabitants of the area affected by the development plan. The letter says that the municipality council will make a final decision on the expansion during the council meeting of 03/07/2013.
- Exhibit 14: media clippings dated 03/06/2013 to 12/06/2013 concerning the protests against the expansion plan.
- Exhibit 15: a letter from the mayor and aldermen of the Municipality of Amstelveen to the members of the municipal council, dated 12/06/2013, informing them that the expansion of Stadshart is not a realistic option, given that a large group of residents is unwilling to negotiate an agreement. The letter says that ‘as the condition of making arrangements with the residents has proven impracticable, the proposal submitted by the Municipal Council is superseded and any decision-making in that respect will serve no purpose’.
- Exhibit 16: the memorandum of understanding between the municipality and the EUTM proprietor, dated June 2015 according to the EUTM proprietor, according to which the parties agree to cooperate in the further development of the Stadshart shopping centre in Amstelveen.
- Exhibit 17: a letter dated 26/01/2015 addressed to the Municipality of Leidschendam-Voorburg, concerning objections against the Leidsenhage shopping centre expansion (zoning plan).
- Exhibit 18: a press release dated 30/01/2015 addressing concerns about the Leidsenhage shopping centre expansion.
The applicant argues that the contested trade mark should be revoked, since the EUTM proprietor does not have proper reasons for non-use. The applicant considers that, based on the principles stated in the TRIPS Agreement and by reference to case-law, as an exception to the obligation of use, the concept of proper reasons for non-use is to be interpreted narrowly and the threshold for unreasonable use is high. It argues that the EUTM proprietor did not put forward any reasons or circumstances that have a sufficient direct relationship with the EUTM, making its use impossible or unreasonable. In addition, the circumstances did not arise independently of the EUTM proprietor’s will. In particular, it argues the following:
- It does not appear from the evidence that the withdrawal of the municipality’s support was a final decision and no final decision was taken regarding the granting of a zoning permit.
- The withdrawal of the municipality’s support merely barred the expansion and refurbishment of the Amstelveen shopping centre. There was no ban on the shopping centre itself. The EUTM proprietor could still have used its trade mark for either its Amstelveen shopping centre or any other shopping centre. The circumstances invoked by the EUTM proprietor do not qualify as bureaucratic obstacles or government requirements. Ongoing discussions to obtain support to expand or refurbish a shopping centre cannot qualify as valid reason for non-use.
- The alleged negative connotation of the word ‘Mall’ did not prevent the EUTM proprietor from using the contested trade mark. The public dissatisfaction concerned the expansion plans and the demolition of many houses, but not the use of the word ‘Mall’.
- A change of strategy to circumvent the withdrawal of the municipality’s support would not have made use of the trade mark unreasonable. Companies are expected to change their corporate strategies in good time to make sure they do not lose their trade marks. When in June 2013 the municipality withdrew its support, the EUTM proprietor still had ample time to reconsider its strategy (almost three years). It could have immediately redirected its attention to the Leidsenhage shopping centre which had been considered a viable candidate since October 2010. Moreover, the EUTM proprietor’s rigidity in adhering to the internal quality requirements are incomprehensible. The proprietor could have started using the trade mark before the expansion and refurbishment, since the Amstelveen shopping centre already satisfied the majority of the requirements without expansion or refurbishment. Furthermore, the proprietor was aware from the beginning that the issue was sensitive and that the permit might not be granted, since the municipality explicitly made its support conditional on public support and on finding a suitable arrangement with the inhabitants. This constitutes normal business risks.
- Internal requirements did not arise independently of the will of the EUTM proprietor. These requirements are vague and subjective and their fulfilment is entirely up to the proprietor’s discretion. The choice to refrain from using the trade mark was purely an internal commercial decision.
In its final observations, the EUTM proprietor argues that, on 07/06/2016, it announced that the new shopping centre in Leidschendam was to become the ‘Mall of the Netherlands’. It also states that on 04/11/2016 the applicant changed its statutory name to ‘Hoog Catharijne Mall of the Netherlands’. Regarding the alleged reasons for non-use, it argues the following:
- While it is true that the withdrawal of support was not a final decision and that the municipality has not taken a final decision regarding the granting of zoning and planning permits, without the required zoning and planning permits (national authorisation requirements), the EUTM proprietor could not start using the trade mark.
- While there was indeed no ban on the Amstelveen shopping centre, rebranding a shopping centre requires extensive preparations, costs and changes, and it is not commercially realistic to just change the name of an existing shopping centre without actual and significant changes to the centre itself. This could damage the reputation of the proprietor and of its trade marks, ‘Mall of ….’. Abandoning its pan-European corporate strategy and using the mark for a non-refurbished shopping centre merely for the sake of using it, would have had serious consequences for all existing and future ‘Mall of …’ shopping centres.
- The municipality withdrew its support in June 2013 and a maximum of seven months of the five-year period for genuine use remained. Within such a short period, it was not reasonably possible to change its pan-European corporate strategy and use the trade mark without causing serious damage to the reputation of the proprietor and its trade marks.
- The withdrawal of the municipality’s support does not constitute a commercial inconvenience that falls within the EUTM proprietor’s normal business risks, since it was not reasonably foreseeable. While there is always a risk that a permit will not be granted, the discussions with the municipality took several years longer than envisaged and unforeseen large-scale protests took place.
The following documents are annexed to the observations, together with their translations into English:
- Exhibit 19: a press release dated 07/06/2016 relating to the new name of Leidsenhage shopping centre, which will be called ‘Mall of the Netherlands’ in 2019 following its expansion and refurbishment.
- Exhibit 20: a press release dated December 2016 from PropertyNL magazine. It says that the trade mark ‘Mall of the Netherlands’ is registered by Unibail-Rodamco.
- Exhibit 21: an extract from the Register of the Dutch Chamber of Commerce, dated 29/12/2016, showing that the statutory name of the applicant is ‘Hoog Catharijne Mall of the Netherlands B.V’.
- Exhibit 22: a screenshot from the applicant’s website in relation to the expansion of the Hoog Catharijne Mall.
- Exhibit 23: extracts from Klepierre’s 2016 interim financial report.
- Exhibit 24: press releases and public comments regarding the announcement of the rebranding of Leidsenhage shopping centre as ‘Mall of the Netherlands’.
- Exhibit 25: a screenshot from www.mallofscandinavia.se.
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 the present case, the EUTM was registered on 21/01/2009. The revocation request was filed on 29/02/2016. 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 29/02/2011 to 28/02/2016 inclusive, for all the contested goods and services listed above.
The EUTM proprietor argues that it has not made external use of the contested trade mark and it invokes proper reasons for non-use. It submitted the documents listed above to support its observations.
Reasons for non-use
In accordance with Article 51(1)(a) EUTMR, the EUTM proprietor may either prove genuine use of the contested European Union trade mark or prove that there are justifiable reasons for non-use. These reasons cover circumstances arising independently of the EUTM proprietor’s will that prevent use of the contested European Union trade mark.
As an exception to the obligation of use, the concept of proper reasons for non-use is to be interpreted rather narrowly.
‘Bureaucratic obstacles’ as such, which arise independently of the will of the trade mark proprietor, are not sufficient, unless they have a direct relationship with the mark, so much so that the use of the trade mark depends on successful completion of the administrative action concerned. However, the criterion of a direct relationship does not necessarily imply that use of the trade mark is impossible; it might suffice that use is unreasonable. It must be assessed on a case-by-case basis whether a change in the undertaking’s strategy to circumvent the obstacle under consideration would make use of the mark unreasonable (14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, § 52-54).
In the present case, the EUTM proprietor claims to have proper reasons for non-use. These reasons lie in the fact that the withdrawal of the political support by the Amstelveen municipality and the consequent impossibility of obtaining the required zoning and planning permits rendered the use of the trade mark for a specific shopping centre in the Netherlands impossible or unreasonable.
However, as correctly stated by the applicant, there is no evidence that the withdrawal of the support by the municipality was a final decision and that the zoning and planning permits would not have been granted. Exhibit 15 is merely a letter from the mayor and aldermen of the Municipality of Amstelveen to the members of the municipal council informing them that the expansion of Stadshart is not a realistic option, given that a large group of residents is unwilling to negotiate an agreement. In fact, there are still ongoing discussions between the parties. Furthermore, the abovementioned letter is dated 12/06/2013 and the revocation was filed on 29/02/2016. During these almost two years and eight months (and not just seven months as the EUTM proprietor indicates), the EUTM proprietor had ample time to reconsider its strategy and start using the trade mark. However, according to the evidence on file, the EUTMR proprietor not only did not use the trade mark but did not even initiate preparations for launching the mark in the market for the goods and services for which the mark is registered. The reasons that the EUTM proprietor puts forward to justify the lack of use do not depend on external circumstances but depend only on its own decisions. Those reasons did not make the use of the mark unreasonable and not even impossible.
According to the EUTM proprietor, a large refurbishment and expansion of the shopping centre was necessary to meet the internal requirements related to the area, the access, the size, the architectural features, the number and quality of stores, the leisure facilities and the four-star classification. The EUTM proprietor claims that using the trade mark for a non-refurbished shopping centre would have serious consequences for all existing and future ‘Mall of …’ shopping centres and would damage its reputation and the reputation of all the ‘Mall of …’ trade marks. However, companies can be expected to change their corporate strategies in good time to make sure that they do not lose their trade marks.
In the present case, the EUTM proprietor had reasonable alternatives for using its trade mark. It could have redirected its attention to the Leidsenhage shopping centre or renamed its Amstelveen shopping centre. The decision not to use the trade mark before expanding and refurbishing the existing shopping centres is solely the EUTM proprietor’s decision and it is not an obstacle that arose independently of its will. Even though the zoning and planning permits were necessary for the expansion and the refurbishment of the shopping centre, they do not constitute an absolute obstacle for using the trade mark, but can only be interpreted as self-imposed obstacles to using it in the precise location and according to the commercial policy chosen by the proprietor. The quality criteria that shopping centres must meet in order to be called ‘Mall of ….’ are internal criteria issued by the EUTM proprietor and whether or not these criteria are fulfilled is entirely up to the proprietor’s discretion. The reasons adduced are not linked to any compelling laws or regulations but strictly to the EUTM proprietor’s decision not to deviate from its internal rules.
The circumstances invoked by the EUTM proprietor cannot be qualified as government requirements. The choice to refrain from using the trade mark is the EUTM proprietor’s own commercial decision. The Cancellation Division considers that there is no evidence that a change in the EUTM proprietor’s strategy to circumvent the withdrawal of the municipal support would have made use of the contested trade mark unreasonable.
Furthermore, the evidence does not show that the EUTM proprietor was in any way prevented from using its trade mark according to its own policies in any other place (apart from Amstelveen) within the territory for which it is registered (the European Union).
It follows from the above that the difficulties encountered by the EUTM proprietor in carrying out its commercial plans are not considered to constitute proper reasons for non-use within the meaning of Article 51(1)(a) EUTMR, since these difficulties constitute a natural part of running a business.
It follows from the above that the EUTM proprietor has not succeeded in establishing proper reasons for non-use of the contested EUTM for any of the goods and services 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 29/02/2016.
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
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.