CANCELLATION DIVISION
CANCELLATION No 14 717 C (REVOCATION)
Fashion TV Brand Holdings C.V., Keizersgracht 62, 1015 CS Amsterdam, The
Netherlands (applicant)
a g a i n s t
Morodo Group Limited, 3 Charlbury Grove, Ealing, London W5 2DY, United Kingdom
(EUTM proprietor) represented by Cruickshank Intellectual Property Attorneys, 8A
Sandyford Business Centre Sandyford, Dublin 18, Ireland (professional representative)
On 06/11/2017, 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 6 911 432 are revoked in their entirety as from 29/03/2017.
3. The EUTM proprietor bears the costs, fixed at EUR 630.
REASONS
The applicant filed a request for revocation of European Union trade mark
No 6 911 432 ‘MORODO’ (word mark) (the EUTM). The request is directed against all
the services covered by the EUTM, namely:
Class 38: Telecommunications; telecommunications by means of mobile telephones;
local, long distance, call-back and International mobile telephone services;
mobile telephone services.
The applicant invoked Article 58(1)(a) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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.
Decision on Cancellation No 14 717 C page: 2 of 3
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 17/12/2008. The revocation request
was submitted on 29/03/2017. Therefore, the EUTM had been registered for more than
five years at the date of the filing of the request.
On 12/04/2017, 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 services 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 Article 19(1) EUTMDR, if the proprietor of the European Union trade mark
does not submit 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 services
for which it is registered nor any indications of proper reasons for non-use.
Pursuant to Article 62(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 29/03/2017.
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 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. In the present case the
applicant did not appoint a representative within the meaning of Article 120 EUTMR
and, therefore, did not incur representation costs.
Decision on Cancellation No 14 717 C page: 3 of 3
The Cancellation Division
Raphael MICHE Claudia SCHLIE José Antonio GARRIDO
OTAOLA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be submitted in writing at the Office within two months of the date of notification of
this decision. It must be submitted 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 submitted 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 Article 109(8) EUTMR, such a
request must be submitted within one month of the date of notification of this fixation of
costs and will be deemed to be submitted only when the review fee of EUR 100 has
been paid (Annex 1 A(33) EUTMR).