CANCELLATION No 11 354 C (REVOCATION)

American Franchise Marketing Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (applicant)

a g a i n s t

Group C Sarl, 15 allée James Watt, 33700 Mérignac, France (EUTM proprietor).

On 26/09/2017, the Cancellation Division takes the following

DECISION

The revocation proceedings are closed.

REASONS

The applicant filed a request for revocation of European Union trade mark No 4 652 111  (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9:        Electronic organisers, whistle alarms, alarms, aerials, acoustic alarms, anti-theft warning apparatus, fire alarms, video tapes, video cameras, smart cards or cards with microprocessors, bar code readers, detectors, smoke alarms, transmitters (telecommunications), sound recording apparatus, magnetic cards, radiotelephony sets, recorded computer programs, radar, radio apparatus, radio-paging apparatus, radiotelephony sets, receivers (audio, video), sirens, bells (alarm apparatus), electric monitoring apparatus, portable telephones, telephone apparatus, telephone transmitters, data processing equipment, theft prevention installations, electric.

Class 37:        Construction, installation and repair of electric apparatus, installation and repair of fire alarm devices, installation, maintenance and repair of computers, building construction supervision (management), installation and repair of telephones, installation and repair of anti-theft alarm devices.

Class 45:        Detective agencies, night guards, guards, security consultancy, monitoring of burglar alarms.

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

ON THE CLOSURE OF THE ADVERSARIAL PART OF THE PROCEEDINGS

According to Article 46 EUTMR, EU trade marks shall be registered for a period of 10 years from the filing of the application. Registration may be renewed in accordance with Article 47 EUTMR for further periods of 10 years.

Pursuant to Article 47(1) and (3) EUTMR, registration of the EU trade mark shall be renewed at the request of the proprietor of the EU trade mark or any person expressly authorised by him, provided that the fees have been paid.

Where a request for renewal is not submitted or is submitted after the expiry of the period provided for in paragraph 3, or where the fees are not paid or are paid only after the period in question has expired, or where the deficiencies referred to in paragraph 7 are not remedied within that period, the Office shall determine that the registration has expired and shall notify the proprietor of the EU trade mark accordingly. Where the determination has become final, the Office shall cancel the mark from the register. The cancellation shall take effect from the day following the date on which the existing registration expired.

On 06/08/2015, the applicant filed an application for revocation of the European Union trade mark. However, on 18/01/2016, the Office suspended the proceedings because the contested mark expired on 26/09/2015 and informed the parties that the suspension would last until the period for renewal of the contested mark had ended.

On 26/04/2016, the Office informed the EUTM proprietor that the contested mark had expired and was cancelled from the Registry with effect from 26/09/2015.

On 19/09/2016, the Cancellation Division informed the parties of the expiry of the contested EUTM and of its intention to close the present proceedings without a decision on the substance and invited the applicant to submit its observations by 24/10/2016. The applicant did not submit any observations within that time limit.

On 21/12/2016, the Cancellation Division closed the proceedings and issued a decision on costs in which it stated that the EUTM proprietor had to bear the fees and costs incurred by the applicant. The Cancellation Division also informed the applicant that, according to Rule 54(2) EUTMIR, it may require a formal decision on this matter by 26/02/2017.

On 27/02/2017, the applicant informed the Cancellation Division that it required a formal decision regarding the closure of the revocation action.

Following the expiry of the contested EUTM and its cancellation from the EUTM register effective as from 26/09/2015, the Cancellation proceedings are closed without a decision on the substance. Regarding the costs, the Cancellation Division refers to its decision issued on 21/12/2016.

The Cancellation Division

Milda CERNIAUSKAITE

Cindy BAREL

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.