CANCELLATION No 13964 C (REVOCATION)

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

a g a i n s t

heliatek GmbH, Treidlerstr. 3, 01139 Dresden, Germany, (EUTM proprietor), represented by Ines Weber, heliatek GmbH, Treidlerstrasse 3, 01139 Dresden, (employee representative).

On 23/03/2017, 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 9 332 231 are revoked in their entirety as from 28/10/2016.

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 9 332 231 ‘ONERGO’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 1        Chemicals used in industry and science; chemicals used in industry, namely compounds with semiconductor properties, being components for displays and organic solar cells; chemical substances for inorganic and organic semiconductors, light-emission and photovoltaic systems, and displays and visualisation equipment; conductive and partially-conductive, doped and undoped organic polymers; organic semi-conducting materials; inorganic elements and compounds being pure crystals; doped and undoped, polycrystalline and monocrystalline inorganic semiconductor materials; substrates coated with semi-conducting material in the form of discs (wafers), plates, rods, tubes, granulates and powders; substrates coated with semiconductor material in the form of foreign bodies (included in class 1).

Class 9        Doped and undoped, polycrystalline and monocrystalline inorganic semiconductor materials; substrates coated with semi-conducting material in the form of shaped bodies (included in class 9);solar wafers, solar cells and solar modules, electronic and electrotechnical components for solar power systems (included in class 9), namely solar cells, solar modules, charge regulators, batteries, inverters for photovoltaic applications; electrotechnical and electronic installations, apparatus and equipment for power and water supplying based on photovoltaic components or in combination with other conventional, regenerative energy carriers (included in class 9);electric generators using solar cells and solar modules and components therefor (included in class 9);apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, optical apparatus and instruments, sensor systems; organic photovoltaic solar cells for electricity generation; semiconductors and compound semiconductors (organic and inorganic);scientific, surveying, electric, electromechanical and electro-optical, photographic, cinematographic, optical, weighing, measuring, control, evaluation, signalling, checking (supervision), life-saving and teaching apparatus and instruments (included in class 9), in particular for the manufacture and processing of inorganic and organic semiconductors, active and passive electric, electro-optical and electromechanical circuits and devices, light-emission components, detectors and solar cells, and raw materials therefor, in any combination and in conjuction with integrated systems; apparatus and instruments for conducting, switching, transforming, accumulating, regulating, displaying and controlling electricity and light, all in particular for the manufacture, research, development and processing of inorganic and organic semiconductors and solar cells, and raw materials therefor.

Class 42        Services in the field of science and technology and research and development related thereto; design and development of computer programs for the control, regulating and/or monitoring of thermal and/or photovoltaic solar installations; scientific and industrial research in the field of photovoltaics and solar collectors; technical development of components, equipment and systems for photovoltaics; technical development of components, equipment and systems for solar collector installations and systems; scientific and technological services, technical development and scientific technological research and design relating thereto, in particular in the field of inorganic and organic semiconductors, combination applications and photovoltaic systems, components therefor, integration, applications and usage thereof, and production, surveying, transport and manufacturing processes therefor; industrial analysis and research, in particular in the field of inorganic and organic semiconductors and photovoltaic systems; engineering, physics, chemistry and industrial design, in particular in the field of inorganic and organic semiconductors and photovoltaic systems; research and development, and coordination and organisation thereof, in the field of physics, chemistry, process engineering, automation and electrical engineering, and mechanical engineering, in particular in the field of semiconductors and photovoltaic systems; scientific and construction drafting, technical project planning, in particular in the field of inorganic and organic semiconductors and photovoltaic systems; materials testing, quality control, in particular in the field of inorganic and organic semiconductors and photovoltaic systems; research and development (for others), in particular in the field of inorganic and organic semiconductors and photovoltaic systems; engineering, in particular in the field of inorganic and organic semiconductors and photovoltaic systems.

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

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 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 04/02/2011 The revocation request was filed on 28/10/2016.  Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.

On 18/11/2016 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 goods and 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 Rule 40(5) EUTMIR, if the proprietor of the European Union trade mark does not provide 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 goods and services for which it is registered nor any indications of proper reasons for non-use.

Pursuant to Article 55(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 2810/2016.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the 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 93 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Agueda MAS PASTOR

Isabel ARRANZ ESTAUN

Jose 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 of the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 has been paid (Annex 1 A(33) EUTMR).