NATWEST | Decision 0011545 – Trademarkers Legal Blog

CANCELLATION No 11 545 C (REVOCATION)

Yoyo.Email Limited, 38 Market Square, Toddington, Dunstable, Bedfordshire LU5 6BS, United Kingdom (applicant), represented by CSY St Albans, 45 Grosvenor Road, St. Albans, Hertfordshire AL1 3AW, United Kingdom (professional representative)

a g a i n s t

National Westminster Bank plc, 135 Bishopsgate, EC2M 3UR London, United Kingdom (EUTM proprietor), represented by Lincoln IP Limited, 9 Victoria Street, Aberdeen, Aberdeenshire AB10 1XB, United Kingdom (professional representative).

On 10/07/2017, the Cancellation Division takes the following

DECISION

1. The application for revocation is partially upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark No 4 319 067 are revoked as from 18/08/2015 for part of the contested goods and services, namely:

Class 9: Magnetically encoded cards for carrying data; multifunction cards for financial services; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and web sites); computer software and telecommunications apparatus (including modems) to enable connection to databases, computer networks and the Internet; computer software to enable searching of data; parts and fittings for all of the aforesaid goods; hand-held devices for payment and value exchange services and for other personal information services; aTM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; aTM machines, point of sale card readers, remote access devices; data carriers; computer hardware and software for the provision of banking services, financial services, bank account management services, monetary transfer services, payment services, financial analysis and financial reports, financial management services, and information services relating to banking and finance; computer software to enable the searching of data relating to the aforegoing; publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format, or provided by CD-ROM or diskette.

Class 16: Paper, paper articles and advertising materials; printed matter (except magazines and periodicals), stationery, newspapers and cheque books; printed publications (except magazines and periodicals), newsletters, pamphlets, leaflets; plastic cards (other than encoded or magnetic); plastic covered cards bearing printed matter.

Class 35: Accounting services; book-keeping; payroll preparations; business appraisals, enquiries, investigations, research and business management advice; business management consulting; advertising and promotion services and information services relating thereto; business and commercial information services, all provided on-line from a computer database, computer network, global computer network or the Internet; compilation of advertisements for use as web pages on the Internet; business management services; business advisory services; compilation of directories for publishing on global computer networks or the Internet; compilation of advertisements for use on or as web pages or web sites on global computer networks or the Internet; provision of space on web sites for advertising goods and services; business administration services for the processing of sales made on the Internet; business planning; market analysis and research; data collection, storage and processing; personnel (payroll) services; advisory, consultancy and information services relating to all of the aforesaid services.

Class 38: Data transmission and transfer services; telecommunication services provided in relation to the Internet; telecommunication of information (including web pages and web sites), computer programs and any other data; electronic mail services; provision of telecommunications access and links to computer databases, computer networks and the Internet; advisory, consultancy and information services relating to all of the aforesaid services.

Class 41: Education and entertainment services; electronic publications provided on-line (not downloadable); electronic publications provided on-line (not downloadable); organisation of sporting events and competitions; arranging and conducting of seminars, congresses, conventions, conferences and exhibitions; education and training related to banking, financial, insurance, economic and investment services; publication of advertising material, printed matter, periodicals, newsletters, magazines, pamphlets, leaflets and other text relating to banking, financial, insurance, economic and investment on-line (not downloadable); advisory, consultancy and information services relating to all of the aforesaid services.

Class 42: Legal services; computer rental; design, drawing and commissioned writing, all for the compilation of web pages and web sites on the Internet; information provided on-line from a computer database or from the Internet; advisory, consultancy and information services relating to all of the aforesaid services; company registration services; legal services (business); design and development of computer hardware and software.

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

Class 16: Periodicals; magazines.

Class 35: Share registration services; advisory, consultancy and information services relating to all of the aforesaid services.

Class 36: Financial services; banking services; monetary transfer; payment services; automated banking services; home banking; internet banking; savings services; bill payment services; payment and credit services; credit card, debit card, charge card, cash card and bank card services; cash management; safe deposit services; bankers' clearing services; account debiting services; personnel (payroll) services; escrow services; cheque encashment services; credit brokerage; automatic cash dispensing services, automatic teller machine services; insurance services; financing of loans; loans (financial) against security; financial investment services; capital investment services; trustee services; financial management services; brokers and agents (for bonds and other securities); financial consultation services; investment advice; financial guarantees (surety services); financial analysis and providing reports; financial information services; financial research services; financing services (securing funds for others); financial advisory services; services for the provision and purchase of financial and/or credit information; administration of financial affairs; computerised financial services; advice and enquiries regarding credit; financial services for the provision of credit; acceptance of deposits; discount of bills (notes); domestic remittance, liability guarantee, acceptance of bills, lending securities, acquisition and transfer of monetary claims; trustee services; trusteeship of money; futures contracts; securities, monetary claims, personal property, land, land fixture surface rights and land leasing rights; money exchange, foreign exchange transactions, currency exchange services, travellers cheque services; letter of credit-related business, securities trading, index fixtures, securities options, overseas market securities futures, underwriting securities, selling securities, handling subscriptions and offerings of securities, providing stock market information, life insurance brokerage, life insurance underwriting, agencies for non-life insurance, claim adjustment for non-life insurance, non-life insurance underwriting, insurance actuarial services; mortgage services; information relating to the financial, banking, insurance, economic and investment services provided on-line( not downloadabla) ; advisory, consultancy and information services relating to all of the aforesaid services.

4. Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 4 319 067 ‘NATWEST’ (word mark) (the EUTM). The request is directed against some of the goods and services covered by the EUTM, namely

Class 16: Paper, paper articles and advertising materials; printed matter, stationery, newspapers, periodicals and cheque books; printed publications, newsletters, magazines, pamphlets, leaflets; plastic cards (other than encoded or magnetic); plastic covered cards bearing printed matter.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that, while the EUTM proprietor has used the contested mark on a very large scale in connection with banking, financial and insurance services, the EUTM has not been put to genuine use in connection with the contested goods and services. The applicant claims that the EUTM proprietor has used some of the contested goods or carried out some of the contested activities in the course of banking services but has only done so to complement its main services and not on their own right. The applicant explains that it has an interest in limiting the goods and services for which the EUTM is registered because the EUTM proprietor had alleged infringement of its EUTM in proceedings before the English High Court. Since the EUTM proprietor had not specified the goods or services to which the applicant’s goods or services would be allegedly similar or identical and it would therefore not be clear what goods or services may be challenged by counterclaim in those proceedings, the applicant considered it more appropriate to apply for revocation before the EUIPO.

The EUTM proprietor submits evidence of use, described in detail further below in this decision.

The applicant files observations on the EUTM proprietor’s proof of use and questions every single piece of evidence submitted. Furthermore, the applicant analyses in detail the evidence of use in relation to the contested goods and services, referring to evidence to support some of its arguments, and requests the Office to cancel the registration for the contested goods and services and to award in its favour the costs in the present proceedings.

The EUTM proprietor files observations in response to the applicant’s arguments and addresses the objections raised by the applicant. The EUTM proprietor maintains that the revocation application should be refused for all the contested goods and services.

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 18/04/2006. The revocation request was filed on 18/08/2015. 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 18/08/2010 to 17/08/2015 inclusive, for the contested goods and services reproduced at the beginning of this decision.

On 15/02/2016, the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

Statutory Declaration signed on 05/02/2016 by Mr Mark Stevens, Assistant Secretary at National Westminster Bank plc, and certified by a Public Notary. Mr Stevens emphasises that the revocation applicant has acknowledged and has not challenged the use of the EUTM for banking, financial and insurance services in Class 36 and, consequently, the submitted evidence should be considered in the light of that acknowledgment. Mr Stevens explains that the EUTM proprietor commenced trading on 01/01/1970 and developed a wide range of new services; it was a founder member of the joint credit card company which launched the Access credit card (now part of MasterCard). Mr Steven explains that the EUTM proprietor started using the abbreviated term ‘NATWEST’ along the full name of the bank in 1991 and the bank was officially renamed as ‘NATWEST’ in 1995. The bank was acquired in 2000 by The Royal Bank of Scotland and would be now part of one of the world’s largest financial services group. The Statutory Declaration contains information on the services developed by the EUTM proprietor, branches and representations in Europe, investments in advertising campaigns, the range of bank cards issued by the EUTM proprietor. Mr Stevens gives data on the number of NATWEST branded ATM machines in the UK (approximately 3,700 machines in the period January 2013 – January 2015), the total number of NATWEST branded, LINK ATM compatible cash, debit and bank cards in circulation in the UK (more than 13 million cards in the period January 2013 – January 2015), the number of transactions made at NATWEST branded ATM machines and with NATWEST branded cards (it is indicated that this data is provided by LINK – the UK cash machine network and is to demonstrate the time and extent of use of the EUTM on bank cards and ATM machines). According to Mr Stevens the EUTM is extensively used on cheque books (the total annual volume of cheque books for 2013 being almost 6 million). The Statutory Declaration further provides information on the exhibits thereto (Exhibit MS1 – Exhibit MS13).

Exhibit MS1: Wikipedia extracts (dated 02/02/2016) about the EUTM proprietor, including on the history, structure, services, etc.

Exhibit MS2: Excerpts from the websites www.natwest.com (undated) and www.rbs.com (with copyright note from 2015) with information on the history of the EUTM proprietor and key facts and figures.

Exhibit MS3: Copies of advertisement templates, designated as NatWest 2009 – 2015, M&CSAATCHI, for press and outdoor ad campaigns, held, according to the EUTM proprietor, in the UK between 2009 and 2015 promoting different banking services and financial products such as mortgages, emergency cash from the EUTM proprietor’s ATMs, current accounts, mobile banking services through mobile applications (including Apple Pay at NatWest), etc., all bearing the sign . The Statutory Declaration provides information on the EUTM proprietor’s investment in the advertising campaigns (the lowest amount per campaign exceeding GBP 2 million) and on the time, place and media of the campaigns, however, the evidence bears no indications as to distribution period, quantity, frequency or territory. According to the EUTM proprietor, the evidence in Exhibit MS3 shows the time, place, nature and extent of use of the EUTM on printed matter and advertising materials.

Exhibit MS4: A power point presentation dated 16/06/2015 and entitled ‘Commercial cards redesign’ on the NatWest proposed structure of redesign in relation to a wide range of Business banking cards, that is, for business customers with an annual turnover of GBP 2 million (with card images and card descriptions, such as NatWest Business Visa Debit, NatWest Business One), including also information on and images of the NatWest existing cards, as well as 2015 forecasts in the range between 54 and 81,778. According to the Statutory Declaration, these designs were approved and the cards issued to customers in 2015. On all cards and on the power point presentation the sign can be seen, however, from the evidence no conclusions can be drawn as to whether, when and how this presentation was used.

Exhibit MS5: Authorisation to manufacture proof sent by the EUTM proprietor to Giesecke & Devrient GB Ltd (dated 31/05/2012 and 28/08/2013; not signed) to produce NatWest MasterCards and Visa debit cards, with indication on the top of each page ‘Giesecke & Devrient’. The EUTM proprietor explains that ‘Giesecke & Devrient’ is a global technology leader in banknotes and bank card production. According to the Statutory Declaration, the proofs were used to check text, type fonts, symbols and the layout of credit cards, which were then manufactured and sent to customers.

Exhibit MS6: A document with card images of various cards (NatWest Visa Debit card, Savings/ATM card, etc.) and information on the card volumes as of 31/12/2014 (in the range between 6.7 k to 1.5 m cards issued). The document is not signed and it is not clear whether, when and how it was used or what are the sources of information presented therein. According to the EUTM proprietor, the document is evidencing the nature of use of NATWEST on debit and credit cards and the volume of cards issued, as well as the extent of use on these goods.

Exhibit MS7: A document entitled ‘Our new credit, debit and savings card designs’ (dated July 2014) with card images of various cards. It is indicated that the new card designs will be rolled out from July 2014 and that the document is for internal use only. According to the EUTM proprietor, the document is evidencing the nature and time of use of NATWEST on debit and credit cards.

Exhibit MS8: Printouts from the forum of www.moneysavingexpert.com from a discussion entitled ‘Natwest new look cheque book??’ with information and comments (dated in July 2015) on NatWest cards and cheques. In one of the comments it is mentioned that ‘All RBS cheques are printed by a certain company’. According to the EUTM proprietor this shows the nature, time and place of use of the EUTM on a range of credit and debit bank cards.

Exhibit MS9: Information in relation to LINK – the UK’s cash machine network from the website www.link.co.uk dated 19/01/2016 (according to the Statutory Declaration, around 65,500 cash machines in the UK connect to LINK and LINK operating rules state that each LINK ATM must bear the name of the acquirer or operator member that is responsible for the ATM’s operation); examples of ATM machines operated by the EUTM proprietor (branded with , photos dated within the relevant period or not dated); printouts of three articles (published on www.thisismoney.co.uk, www.thesun.co.uk and express.co.uk, one dated within the relevant period and two undated), reporting on problems due to fraudsters using mobile banking services to steal money, on a crash of the EUTM proprietor’s bank system and on the NatWest cashback bank account. The EUTM proprietor explains in the Statutory Declaration that it operates ATM machines and the NATWEST brand is therefore widely used and known in relation to cash withdrawal services which require the use of bank cards, debit cards, credit cards and cash cards. According to the Statutory Declaration, the number of ATM machines operated under the NATWEST brand varies constantly. The EUTM proprietor states that this exhibit shows the nature, time and place of use of NATWEST on ATM machines.

Exhibit MS10: Printout of an article published on 22/05/2015 on www.dailymail.co.uk with information on two cheques sent by Ed Balls and refused by the bank and a printout of an article on a donation to Comic Relief, in both printouts depictions of NatWest cheques can be seen. According to the EUTM proprietor this shows the nature, time and place of use of the EUTM on cheque books.

Exhibit MS11: Printouts taken from the website www.alamy.com with images of NatWest cheque book and cards (dated in 2013).

Exhibit MS12: The front cover of the EUTM proprietor’s customer magazine ‘SENSE’ (editions New Year 2011, Autumn 2011, New Year 2012, Winter 2008, Spring 2010); a printout from the website www.businesscoaching.co.uk with a publication dated 15/11/2010 mentioning a coaching organised further to a request by ‘Business Sense magazine (the magazine for all NatWest and RBS business customers)’ and copy of the article in the said magazine on the coaching. On the cover of each edition the sign can be seen. The EUTM proprietor indicates that these are examples of publications produced and issued by the EUTM proprietor during the relevant period and according to the EUTM proprietor this exhibit shows the nature and time of use of the EUTM on printed matter.

Exhibit MS13: Samples of letters with ‘NatWest’ letterheads (dated within the relevant period). According to the EUTM proprietor this shows the use of the EUTM on stationery, namely headed paper.

Preliminary remarks

The applicant argues that the declaration filed by the EUTM proprietor cannot in itself prove genuine use. The Cancellation Division points out that, as far as the Statutory Declaration is concerned, Rule 22(4) EUTMIR (applicable to cancellation proceedings by virtue of Rule 40(6) EUTMIR) expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up.

The EUTM proprietor emphasises that the Statutory Declaration was sworn and declared as fact before a Public Notary and should, therefore, be given additional value. However, neither the EUTMR nor the EUTMIR supports the conclusion that the evidential value of items of evidence of use of the mark, including affirmations, must be assessed in the light of the national law of a Member State (judgments of 28/03/2012, T-214/08, Outburst, EU:T:2012:161, § 33; 09/12/2014, T-278/12 PROFLEX, EU:T:2014:1045, § 53). The probative value of a statement depends first and foremost on the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the document appears sound and reliable (judgment of 07/06/2005, T-303/03, Salvita, EU:T:2005:200, § 42). In general, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Assessment of genuine use – factors

The Cancellation Division finds it useful to establish upfront that it is not disputed between the parties and, furthermore, the whole body of evidence bears witness to the fact that the EUTM proprietor has a significant presence on the market for the non-contested services in Class 36 (falling in the categories of banking, financial and insurance services).

However, the contested goods and services, for which the EUTM is registered, are listed in the ‘Reasons’ section of the present decision. The Cancellation Division considers it relevant to point out that use must be proven for the goods and services as actually registered, not for those similar or comparable to them, and also not for goods and services rendered in connection with the registered ones.

These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the EUTM proprietor is obliged not only to indicate but also to prove each of these requirements.

In particular, the evidence must show genuine use of the European Union trade mark within the relevant period and in the European Union (see Article 15(1) EUTMR and Article 51(1)(a) EUTMR).

With a view to the above, the Cancellation Division is convinced that the evidence submitted is sufficient to prove the time of use and the place of use of the contested EUTM.

While indeed, as noted by the applicant, some pieces of evidence are not dated or dated outside the relevant period, most of the evidence is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.

Furthermore, in the present case, it is clear from the evidence submitted that the company has an established presence in the European market (in particular, in the United Kingdom). The information contained in Exhibit MS9 (in relation to LINK, the UK’s cash machine network), the advertisements, website printouts and press articles and blogs refer to the relevant territory. Therefore, the evidence relates to the relevant territory.

Use in relation to the registered goods and services and extent of use

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.

The evidence submitted as well as the arguments put forward by the EUTM proprietor concern predominantly contested goods in Class 9, in particular, various bank cards, cheque books, software and electronic publications, ATM machines, and the goods in Class 16:

Use in relation to goods in Class 9 and to cheque books in Class 16, as follows:

Class 9: Magnetically encoded cards for carrying data; multifunction cards for financial services; charge cards, cash cards, bank cards, cheque cards, credit cards, debit cards; parts and fittings for all of the aforesaid goods; aTM (Automated Teller Machine) cards, access cards, identification cards, integrated chip cards and pre-paid cards and supporting systems related thereto; aTM machines, point of sale card readers, remote access devices; data carriers.

Class 16: Cheque books.

The Cancellation Division is of the view that there is no doubt that the EUTM proprietor has been issuing a wide range of bank cards (credit cards, debit cards, cash cards, etc.) within the relevant period as part of its financial services (for example, of its credit card, debit card, charge card, cash card and bank card services for which the EUTM is protected in Class 36). However, as argued by the applicant and supported by relevant decisions of the Boards of Appeal (such as decision of 7/05/2012, R 1662/2011-5 and R 1919/2011-5, ‘CITIBANK’, as well as decision of 17/05/2013, R 84/2013-5, ‘ПЪРВА ИНВЕСТИЦИОННА БАНКА’), the fact that the EUTM proprietor provides to its clients the possibility of obtaining banking cards bearing its trade mark does not amount to use of the contested EUTM for the various cards listed in the specification in Class 9, which are different types of data carriers, used in the process of or closely related to the EUTM proprietor’s non-contested services in Class 36.

On the other hand, there is no evidence showing that the proprietor has produced or offered the production of data carriers of any types (or parts and fittings for such), only that it offered credit and other bank card services to its clients. There is also no evidence that the proprietor has offered magnetic cards to customers for purposes independent from its banking services offered.

Although banking cards are issued by banks to their clients as part of the financial services offered, the cards are not physically made or produced by banks. Rather, they are ordered by the bank to specialized card manufacturers (which then also apply the respective brand on the cards; however, contrary to the EUTM proprietor´s arguments, this does not amount to use of the contested EUTM under the authorisation of the EUTM proprietor). This conclusion is supported not only by the case-law quoted above but is also in line with the Office’s Guidelines (Guidelines for Examination of European Union trade marks, European Union Intellectual Property Office (EUIPO), Part C Opposition, Section 2 Double Identity and Likelihood of Confusion, Chapter 2 Comparison of Goods and Services, Annex II, paragraph 8.3.) establishing that ‘[t]he customers are aware of the fact that financial institutions are not responsible for the technological aspects of issuing magnetic or chip cards’.

Furthermore, this finding is confirmed by the evidence on file, namely by the EUTM proprietor’s submissions that the cards are manufactured by ‘Giesecke & Devrient’ (Exhibit MS5) as well as by the evidence submitted by the applicant (Exhibit O1 – Copy of the EUTM proprietor’s terms and conditions for Personal & Private Current Account, containing explicit provisions that the card remains the bank’s property and Exhibit O2 – printout from the website of the International Card Manufacturers Association, showing a list of companies whose primary business is manufacturing but may also do personalization, wherein the EUTM proprietor is not mentioned but its supplier ‘Giesecke & Devrient’ is, and the document is referring to the ‘card industry’).

The EUTM proprietor disputes the applicant’s arguments and evidence and argues that if this line of reasoning was to be accepted, software providers could never make genuine use of a trade mark on software as in many cases the ownership is not actually ‘sold’. The Cancellation Division finds, however, that due to the specific and different nature of software and bank cards and in the absence of a concrete factual or legal situation allowing drawing of an analogy to software, this argument of the EUTM proprietor has no impact on the outcome.

Furthermore, the EUTM proprietor draws an analogy to ‘the use of well-known marks, such as HARLEY DAVIDSON USA …. on clothing in class 25’ and that the relevant public would not necessarily expect a well-known clothing brand such as GAP to manufacture their own goods in-house. The Cancellation Division points out that the above arguments of the EUTM proprietor are not in the context of particular cancellation actions or case-law concerning genuine use of the trade marks referred to by the EUTM proprietor on any goods to be taken into account in the present case. Furthermore, the Cancellation Division is of the view that no analogy can be drawn between the rather abstract examples of the EUTM proprietor and the present case, since the goods and services or even the industries in question are not comparable; the EUTM proprietor refers to a case where a well-known company may or may not manufacture in-house the goods that are subsequently sold by that company with a view to creating and maintaining a market share in the clothing market, unlike in the present case where the EUTM proprietor is a client of the manufacturer of bank cards (of the card industry, in general) and is a provider of the services of issuing bank cards, covered by the non-contested services in Class 36.

Consequently, the EUTM proprietor has failed to prove that the contested EUTM was genuinely used for the contested goods in Class 9 falling in the category of bank cards and data carriers.

Along the same line of reasoning, which finds further confirmation in the evidence submitted by the EUTM proprietor (Exhibit MS8 with excerpts from blogs where users indicated that ‘All RBS cheques are printed by a certain company’), as well as in the evidence submitted by the applicant (Exhibits O1 – Copy of the EUTM proprietor’s terms and conditions for Personal & Private Current Account, containing explicit provisions on the return of unused cheques to the bank on closure of the account and O3 – List of accredited cheque printers and certified bank giro credit printers as of January 2016, wherein neither the EUTM proprietor nor any bank is mentioned), the Cancellation Division finds that although the EUTM proprietor is providing cheque-related financial services to its clients (such as cheque encashment services in Class 36), it has failed to prove that the contested EUTM was genuinely used for cheque books in Class 16.

The above reasoning is also applicable as concerns the claimed use of the contested EUTM in relation to ATM machines. The Cancellation Division points out that while it is not disputed and it is clear that the EUTM was placed on ATM machines, from the evidence submitted by the EUTM proprietor it is evident that this is a requirement of LINK with a view to identifying ‘the acquirer or operator member that is responsible for the ATM’s operation’ (see Exhibit MS9). Furthermore, as explained in the Statutory Declaration, the EUTM proprietor operates ATM machines and the NATWEST brand is therefore used in relation to cash withdrawal services. Consequently, the Cancellation Division finds that although the EUTM proprietor is providing its clients automatic cash dispensing services and automatic teller machine services (for which protection is granted in Class 36), it has failed to prove that the contested EUTM was genuinely used for ATM machines in Class 9.

For the sake of completeness, the Cancellation Division points out that the EUTM proprietor has neither provided arguments not any evidence in relation to use of the contested EUTM for point of sale card readers, remote access devices.

Use in relation to the remaining contested goods in Class 9 falling in the category of hardware, software and electronic publications, as follows:

Class 9: Computer software and publications in electronic form supplied on-line from databases or from facilities provided on the Internet (including web pages and web sites); computer software and telecommunications apparatus (including modems) to enable connection to databases, computer networks and the Internet; computer software to enable searching of data; parts and fittings for all of the aforesaid goods; hand-held devices for payment and value exchange services and for other personal information services; computer hardware and software for the provision of banking services, financial services, bank account management services, monetary transfer services, payment services, financial analysis and financial reports, financial management services, and information services relating to banking and finance; computer software to enable the searching of data relating to the aforegoing; publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in electronic form supplied on-line from databases or from facilities provided on the Internet (including web sites); publications, newsletters, magazines, periodicals, pamphlets and leaflets, all in digital or electronic format, or provided by CD-ROM or diskette.

The EUTM proprietor explains that it is common knowledge that banking and credit card facilities are almost always offered digitally; by way of example, it is mentioned that ‘most credit card services provide mobile phone software in the form of “apps”’. It is, furthermore, claimed that it would be very unusual in today’s market for a credit card or a bank account to be offered without an associated digital or online presence and, therefore, the EUTM proprietor’s software goods in Class 9 would be of the kind that the general public would reasonably assume a bank provides, such goods being not only intrinsically linked to but also necessary to provide a credit card service which is fit for purpose.

The EUTM proprietor seeks to rely on the advertisements in Exhibit MS3 in conjunction with the figures in the Statutory Declaration as evidence that the EUTM was used on mobile apps. Moreover, the EUTM proprietor states that the Statutory Declaration provides examples of ‘electronic and physical publications’ and refers again to the evidence in Exhibit MS3.

The evidence in relation to use of the EUTM for software comprises the advertisement templates in Exhibit MS3 where indeed some of the materials relate to mobile banking services through mobile applications (including Apple Pay at NatWest) and to the figures in the Statutory Declaration on investments in the advertisements, distribution period, etc. Furthermore, the Cancellation Division takes note of the applicant´s arguments that, in relation to electronic publications, no evidence of the supply of any electronic publication to third parties to create and maintain a share in the market for electronic publications has been submitted and that providing of electronic publications to customers to advertise one´s own services does not constitute the creation or maintenance of a share in the market for electronic publications.

In any event, regardless of whether the EUTM proprietor’s use of the contested EUTM is considered to be to be with a view to creating or maintaining a market share for the above goods in Class 9, the EUTM proprietor did not provide sufficient evidence which would allow any safe conclusions to be drawn as to the extent to which they were distributed amongst its clients or to third parties. The evidence is limited to the advertisement templates in Exhibit MS3, however, this piece of evidence bears no indications as to distribution period, quantity, frequency or territory. The impressive figures in the Statutory Declaration on the use of the EUTM for the goods in question in Class 9 are not corroborated by any objective evidence or evidence originating from independent sources (for example, statements of the advertising agencies responsible for the distribution of the publications, number of downloads of /access to the software or to electronic publications, reports on the circulations, financial reports or data, etc.). The Class 9 goods in question cannot be related to any other piece of evidence submitted by the EUTM proprietor which bears witness to a certain extent of use.

Therefore, it may be likely that the EUTM proprietor has used a number of the Class 9 goods at stake with the contested EUTM on them and it may be even reasonable to assume that a bank could provide such goods. However, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (27/09/2007, T-418/03, La Mer, EU:T:2007:299, § 59). In the absence of any solid and objective evidence concerning the extent of use, one of the indispensable conditions for genuine use has not been shown by the EUTM proprietor.

Use in relation to goods in Class 16 (except for cheque books), as follows:

Class 16: Paper, paper articles and advertising materials; printed matter, stationery, newspapers, periodicals; printed publications, newsletters, magazines, pamphlets, leaflets; plastic cards (other than encoded or magnetic); plastic covered cards bearing printed matter.

The EUTM proprietor has provided various pieces of evidence with a view to establishing use of the contested EUTM for advertising materials; printed matter and stationery in Class 16 (such as Exhibits MS3, MS12 – MS13).

However, according to the evidence submitted, the EUTM proprietor never offered advertising materials and stationery to third parties with a view to establishing and maintaining a commercial outlet. The submitted letter templates depicting the contested EUTM may be used by the EUTM proprietor in the course of running its own business but do not prove that the EUTM proprietor provides the said contested goods to third parties. The fact that the EUTM appears on stationery or advertising materials does not constitute use for goods in Class 16 but rather constitutes use in advertising for the services in Class 36 that are not contested. Using of stationery or advertising materials by an establishment does not amount to use of the EUTM for such goods and does not correspond to offering those goods to other clients but rather shows that the EUTM proprietor is a client of other advertising establishments instead.

The EUTM proprietor neither claimed nor submitted any evidence or arguments for use of the EUTM in relation to paper, paper articles, newspapers, newsletters, pamphlets, leaflets; plastic cards (other than encoded or magnetic); plastic covered cards bearing printed matter.

On the other hand, the evidence demonstrates use of the sign for the magazine ‘Senses’ which also falls under the category periodicals in the EUTM proprietor’s specification in Class 16. It appears from the evidence that the magazine is offered exclusively to the EUTM proprietor’s customers and the covers of the magazine ‘Senses’ indicate subjects such as interiors, money, health, cars, sport.

The Cancellation Division takes note of the applicant’s argument that the magazines are for the EUTM proprietor’s customers only and are not magazines that customers actively subscribe to or choose to obtain. According to the applicant (backed with reference to the Office’s Guidelines), the use of the EUTM on the proprietor’s magazine is mere use to promote the banking services and therefore cannot be considered sufficient evidence of use for goods as magazines, printed matter, etc.

From the evidence submitted it is not clear whether the magazines are sent for free to the EUTM proprietor’s business customers. However, goods and services offered free of charge may also constitute genuine use when they are offered commercially, that is, with the intention of creating or maintaining an outlet for those goods or services in the EU, as opposed to the goods or services of other undertakings, and therefore of competing with them (09/09/2011, T290/09, Omnicare, EU:T:2011:453, § 67-68).

Furthermore, even if it cannot be ruled out that the ultimate goal of these magazines is to encourage the relevant public to purchase the EUTM proprietor’s financial and banking services in Class 36, they are none the less in competition with other similar goods on the market, in particular when they are supplied by undertakings competing with the EUTM proprietor on the relevant market, which may also provide those goods free of charge (09/09/2011, T-289/09, Omnicare Clinical Research, EU:T:2011:452, § 70). In this competition, the efforts of the EUTM proprietor issuing a magazine providing, along with financial information, health information, business-related advice, stories, clearly shows that the intention of the EUTM proprietor is to create and maintain an outlet for these magazines. It is therefore considered that the above periodicals, even if being offered free of charge, are nevertheless offered commercially and not for mere promotional purposes.

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

The Court has held that „use of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market‟ (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In this respect, the Cancellation Division finds is useful to recall that the Court clarified that it is impossible to determine a priori, and in the abstract, what territorial scope should be chosen in order to determine whether the use of the mark is genuine or not; a de minimis rule cannot be laid down (19/12/2012, C-149/11, Onel / Omel, EU:C:2012:816, § 55).

In the present case, the evidence submitted by the EUTM proprietor in order to prove genuine use of the EUTM relates mainly to the UK. However, the evidence submitted indicates that use was not concentrated into a small geographical area considering the fact that the EUTM proprietor is established in the UK and the periodicals were distributed to the EUTM proprietor’s clients. Bearing this in mind, and taking into account the size and importance of the UK market within the European Union, it can be concluded that the territorial extent of use was sufficiently shown.

As for the quantitative extent and the frequency of use, it can be discerned that the magazines had several issues in the period 2008 – 2012. Moreover, according to the information in Exhibit MS12 (printout of a publication dated 15/11/2010 from a third-party website), the magazine is for all NatWest and RBS business customer.

The Cancellation Division concurs with the applicant’s claim that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the said goods for which the EUTM is registered because, for example, no supporting evidence for circulation figures during the relevant period was provided.

The applicant’s argument is based, however, on an individual assessment of each item of evidence regarding all the relevant factors. When assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Furthermore, the Court has found that, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, while not providing direct information on turnover, can also be sufficient for proving extent of use in an overall assessment (08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

It should furthermore be noted that as the Cancellation Division does not assess commercial success, even minimal use can be sufficient to be deemed “genuine”, as long as it is viewed as warranted in the economic sector concerned to maintain or acquire a share in the market.

In the present case, the Cancellation Division considers the evidence in its totality (namely the several issues of the periodicals covering a substantial part of the relevant period, the reference to the magazine in third-party websites, the regularity of the issues and, indeed, the fact that these are customer magazines of an undertaking with significant market presence in the market for services in Class 36, as evident from various pieces of evidence) as sufficient to establish genuine use of the EUTM in terms of extent for magazines which fall in the category of periodicals. The Cancellation Division finds that the category of periodicals concerned is not sufficiently broad for several subcategories to be identified within it. Consequently, the evidence shows also use of the category of periodicals for which the mark was registered.

These goods fall within the categories of printed publications and printed matter. However, in the present case the EUTM proprietor did not show sufficient use of the EUTM for any other items within the above categories which altogether could justify use for the whole categories of printed publications and printed matter.

According to Article 51(2) EUTMR, where there are grounds for revocation for only some of the goods or services for which the contested mark is registered, the proprietor’s rights will be revoked for those goods and services only.

Therefore, the Cancellation Division does not accept the use of the contested EUTM for periodicals to justify use also for the broad categories of printed publications and printed matter as listed in the specification of the EUTM.

Use in relation to the remaining contested services in Classes 35, 38, 41 and 42:

In the present case, the EUTM proprietor did neither claim nor submit any evidence for use of the EUTM in relation to the following services:

Nature of use: use as a trade mark

Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

In the present case the evidence of use, and in particular the magazines in Exhibit MS12, clearly show the use of the sign as a trade mark.

Nature of use: use of the mark as registered

‘Nature of use’ in the context of Rule 22(3) EUTMIR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1)(a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the form in which the contested trade mark is used contains differences which affect its distinctive character or whether, despite the differences, the mark used and the contested EUTM have the same distinctive character.

In the present case, while some of the evidence in relation to magazines and periodicals shows use of the trade mark as registered, in most of the documents in Exhibit MS12 it appears with the addition of a figurative element, namely . The Cancellation Division considers that in this case the added element does not alter the distinctive character of the EUTM as registered given that the additional figurative element is rather decorative and plays only a secondary role in comparison to the word element.

Consequently, the evidence shows the use of the sign as registered within the meaning of Article 15 EUTMR.

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 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).

In the present case, the Cancellation Division considers that taking into account the evidence in its entirety, although this evidence is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory. The contested sign was used as a trade mark for a part of the contested goods, namely for magazines and periodicals in Class 16.

However, there is not sufficient evidence of use of the EUTM within the relevant period for any of the other goods and services at issue.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for the following goods and services, for which it must, therefore, be revoked:

The EUTM proprietor has proven genuine use for the remaining contested goods, namely periodicals and magazines in Class 16; therefore, the application is not successful in this respect.

The EUTM remains on the register also for all the uncontested services, namely for share registration services; advisory, consultancy and information services relating to all of the aforesaid services in Class 35 and for the uncontested services in Class 36 (falling in the categories banking, financial and insurance services).

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, i.e. as of 18/08/2015.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Vanessa PAGE

Denitza STOYANOVA-VALCHANOVA

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.

Leave Comment Cancel reply