CANCELLATION No 13 775 C (REVOCATION)

Michael Gleissner, Amersfoortsestraatweg 33 B, 1401 CV Bussum, The Netherlands (applicant),

a g a i n s t

Oneworld Alliance LLC, 1209 Orange Street, Corporation Trust Center, Wilmington, New Castle County, Delaware 19801, United States of America (EUTM proprietor), represented by Maucher Jenkins, 26 Caxton Street, London SW1H 0RJ, United Kingdom (professional representative).

On 27/09/2017, 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 5 829 081 are revoked in their entirety as from 20/09/2016.

3.        The EUTM proprietor bears the costs, fixed at EUR 630. 

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 5 829 081 ‘oneworld businessflyer’ (word mark) (the EUTM). The request is directed against all the services covered by the EUTM, namely:

Class 35:        Loyalty scheme services; incentive scheme services; operation of frequent flier programmes (customer loyalty services).

Class 39:        Airline services; travel services; air transport services; travel agency services; travel booking, reservation or information services; vehicle rental services; vehicle parking services; courier services; cargo storage and handling services; aircraft chartering services; package holiday services (transport services); booking and reservation services for tours; travel booking and reservation services for holidays; advice, information and consultancy services relating to all the aforementioned services.

Class 43:        Catering services; hotel, restaurant, cafe or bar services; hotel and restaurant booking, reservation and information services; accomodation booking and reservation services for holidays; advice, information and consultancy services relating to all the aforementioned services.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that it could not ascertain any use by the EUTM proprietor from public sources in connection with all the services for which the EUTM is registered. Therefore, the EUTM proprietor’s rights as regards this mark should be revoked.

On 06/03/2017, in time, the EUTM proprietor submitted evidence of use which consists of a declaration of Anita Beier, who is Vice President of Information Technology and Chief Financial Officer of Oneworld Alliance LLC and five annexes (which will be detailed further in the decision).

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 03/03/2008. The revocation request was filed on 20/09/2016.  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 20/09/2011 to 19/09/2016 inclusive, for the following contested services:

Class 35:        Loyalty scheme services; incentive scheme services; operation of frequent flier programmes (customer loyalty services).

Class 39:        Airline services; travel services; air transport services; travel agency services; travel booking, reservation or information services; vehicle rental services; vehicle parking services; courier services; cargo storage and handling services; aircraft chartering services; package holiday services (transport services); booking and reservation services for tours; travel booking and reservation services for holidays; advice, information and consultancy services relating to all the aforementioned services.

Class 43:        Catering services; hotel, restaurant, cafe or bar services; hotel and restaurant booking, reservation and information services; accomodation booking and reservation services for holidays; advice, information and consultancy services relating to all the aforementioned services.

On 06/03/2017 the EUTM proprietor submitted evidence as proof of use.

The EUTM proprietor requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Cancellation Division accepts this request insofar it relates to part of the evidence (specifically the financial and other sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already available to the public, either on the website of the EUTM proprietor and/or in the mass media (including the internet).

The evidence to be taken into account consists of the declaration of Anita Beier, who is Vice President of Information Technology and Chief Financial Officer of Oneworld Alliance LLC and the following annexes:

1. Wayback Machine excerpt of the webpage www.oneworld.com/ow/air-travel-options/business-travel/businessflyer as it existed on October 11, 2011 that explains the ‘oneworld businessflyer’ program, including the geographic locations in which it is available, provides companies the ability to register with the ‘oneworld businessflyer’ program, and for companies to login to a program.
2. A flyer promoting the ‘oneworld businessflyer’ program that was, according to the EUTM proprietor, disseminated to travel agencies in Belgium in 2012.
3. Flyer promoting the ‘oneworld businessflyer’ program that was, according to the EUTM proprietor, disseminated to travel agencies in Germany and Switzerland, with an almost identical content as that of the exhibit 2.
4. A similar flyer (in Italian) promoting the ‘oneworld businessflyer’ program that was, according to the EUTM proprietor, disseminated to travel agencies in Italy in 2012.
5. The template for ‘oneworld businessflyer’ that was, according to the EUTM proprietor, sent in 2011 jointly by ‘oneworld’ and ‘Avexia’, a travel agency in France that focuses on handling the business travel needs of French companies and administrations, to businesses in France, in order to promote the various benefits of the ‘oneworld businessflyer’ program.

Assessment of genuine use – factors

The factors time, place, extent and nature of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the evidence must provide sufficient indications of all these factors to prove genuine use. The Cancellation Division finds it appropriate to first examine the extent of use of the contested EUTM.

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). Furthermore, the Court has held that ‘[u]se 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 therefore 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. The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and services and the structure of the relevant market (30/04/2008, T 131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

The declaration signed by the Vice President of Information Technology and Chief Financial Officer of the EUTM proprietor’s company gives information about the ‘oneworld’ company, which ‘was founded in 1999 by five of the world’s leading airlines’ and that today is an alliance of 14 of the world’s biggest airlines.

As far as this 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. As far as the probative value of this kind of evidence is concerned, 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.

Unfortunately the evidence accompanying this declaration does not provide any information as regards the extent of use of the EUTM. Exhibit 1 merely gives information about the existence in 2011 of the website www.oneworld.com. The particular information about ‘businessflyer’ as being ‘the latest ‘oneworld’ corporate travel product that can make a world of difference to your company’s travel budget’ is just basic information about the EUTM proprietor’s newest program available. The brochures at exhibits 2, 3 and 4 (in English, Italian and German) as well as the documents in English and French submitted as exhibits 5 present more in detail this programme and its benefits, which destinations are included in its offer, how can someone register for this programme details about the one world alliance etc.

The Cancellation Division cannot grasp from these documents any information about the extent of the EUTM’s use. The ‘businessflyer’ programme is addressed to small and medium sized businesses or companies whose travel volume is too low to qualify for a negotiated corporate contract. However, there is no information about the number of companies (or clients in general) who applied for, or registered as, clients of this programme, no information about the number of companies or clients to which such brochures were distributed, no data about the number of clients who actually accessed the website and the information it provides in relation to the ‘businessflyer’ programme.

In certain conditions, even circumstantial evidence, such as catalogues/brochures featuring the trade mark, despite not providing direct information on the quantity of goods actually sold or services provided, can be sufficient in itself to prove the extent of use in an overall assessment (see by analogy judgment of 08/07/2010, T 30/09, ‘Peerstorm’, EU:T:2010:298, § 42 et seq.).

In the present case, however, the Cancellation Division does not consider that such extraordinary circumstances pertain. When paper catalogues are involved some figures about their distribution throughout the relevant period can be of particular importance in assessing the extent of use of the mark. However, when undated (online or on paper) brochures are presented, they cannot show on their own the extent of use of a trade mark, not without some figures about how many people/companies accessed these brochures or information and whether or not this persisted throughout the relevant period.  

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 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).

The Cancellation Division considers that the declaration and its annexes are not sufficient to prove the extent of use of the EUTM. The information provided in the declaration about the ‘Oneworld company’ as being today an alliance of fourteen of the world’s biggest airlines is not sufficient to prove the genuine use of the trade mark ‘oneworld businessflyer’ for the services for which it obtained protection in the EU. Furthermore, the possible success, recognition or genuine use of the ‘oneworld Member Airlines’ trade marks (e.g.  Iberia, British Airways, Finnair) cannot be transferred to the programme ‘oneworld businessflyer’, nor can imply the latter’s genuine use as an EU trade mark.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the contested EUTM for any of the 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 20/09/2016.

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 representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and, therefore, did not incur representation costs.

The Cancellation Division

Pierluigi M.VILLANI

Ioana MOISESCU

Zuzanna STOJKOWICZ

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.