CANCELLATION DIVISION
CANCELLATION No 15 602 C (REVOCATION)
Performix LLC, 221 South Cherokee Street, Denver, Colorado 80223, United States of
America (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
D.B.W., 23 rue Jean Jaurès, 1836 Luxembourg, Luxembourg (EUTM proprietor),
represented by Dennemeyer & Associates, 55 rue des Bruyères, 1274, Howald,
Luxembourg (professional representative).
On 11/01/2018, 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 9 380 213 are revoked in their entirety as from 25/08/2017.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The applicant filed a request for revocation of European Union trade mark
No 9 380 213 ‘PERFORM-X’ (word mark) (the EUTM). The request is directed against
all the goods covered by the EUTM, namely:
Class 3: Perfumery, essential oils, cosmetics, hair lotions; dentifrices; creams,
lotions, masks, serums, massage oils, bath oils; hair dyes; cleansing wipes
for the face and body; self-tanning wipes.
Class 5: Pharmaceutical and veterinary preparations; dietetic substances adapted
for medical use; food for babies; plasters, materials for dressings; material
for stopping teeth, dental wax; foodstuffs included in this class, namely
food supplements and dietetic foodstuffs for diets, for medical purposes;
food and dietetic supplements for cosmetic purposes; food supplements in
Decision on Cancellation No 15 602 C page: 2 of 3
the form of beverages and dietetic beverages, not adapted for medical use,
based on goods included in this class, namely beers, mineral and aerated
waters, non-alcoholic drinks and preparations for making beverages
(except coffee, tea or cocoa-based beverages and milk beverages).
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit
drinks and fruit juices; syrups and other preparations for making
beverages; fruit drinks and fruit juices, syrups.
The applicant invoked Article 58(1)(a) EUTMR.
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.
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 29/03/2011. The revocation request
was submitted on 25/08/2017. Therefore, the EUTM had been registered for more than
five years at the date of the filing of the request.
On 29/08/2017, 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 goods 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 goods 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 25/08/2017.
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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.
The Cancellation Division
Claudia SCHLIE Cindy BAREL 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).