CANCELLATION No 12 194 C (REVOCATION)

Brake Parts Inc. LLC., 4400 Prime Parkway, McHenry Illinois 60050, United States of America (applicant), represented by Brabners LLP, Horton House, Exchange Flags, Liverpool, Merseyside L2 3YL, United Kingdom (professional representative)

a g a i n s t

Reliant Parts World Limited, Unit C – Orbital Way, Cannock, Staffordshire WS11 8XW, United Kingdom (EUTM proprietor), represented by Novagraaf UK, Suite 8b Lowry House 17 Marble Street, Manchester M2 3AW, United Kingdom (professional representative).

On 05/07/2017, 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 3 079 902 are revoked as from 08/12/2015 for part of the contested goods, namely:

Class 7:        Dynamos and electric alternators; starters (motor); heat exchangers (being parts of machines); parts and fittings for all the aforesaid goods; and clutches, other than for land vehicles; carburettors, other than land vehicles; fans for cooling engine radiators and fan belts for use therewith, other than for land vehicles; air cleaners, fuel pumps, water pumps, other than for land vehicles; filters and ignition apparatus, all for use with internal combustion engines, other than for land vehicles; parts and fittings and accessories for internal combustion engines, other than for land vehicles; parts and fittings for all the aforesaid goods, other than for land vehicles.

Class 9:        Speedometers, tachometers, combined battery condition indicators and volt meters, and ammeters, solenoids, all for incorporation in or for use with motor vehicles; batteries.

Class 12:        Motor land vehicles; motor, cars, buses; parts and fittings for all the aforesaid goods (other than parts and fittings for cars and motor land vehicles).

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

Class 7:        Clutches for land vehicles; carburettors for land vehicles; fans for cooling engine radiators and fan belts for use therewith, all for land vehicles; air cleaners, fuel pumps, water pumps, all for land vehicles; filters and ignition apparatus, all for use with internal combustion engines, all for land vehicles; parts and fittings and accessories for internal combustion engines for land vehicles; parts and fittings for all the aforesaid goods.

Class 9:        Oil pressure gauges, temperature gauges, fuel gauges, thermostats, electric switches, all for incorporation in or for use with motor vehicles.

Class 12:        Parts and fittings for motor land vehicles; parts and fittings for cars.

4.        Each party bears its own costs.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 3 079 902 ‘RELIANT’ (word mark) (the EUTM). The request is directed against all the goods covered by the EUTM, namely

Class 7:        Dynamos and electric alternators; starters (motor) and clutches; carburettors; fans for cooling engine radiators and fan belts for use therewith; air cleaners, fuel pumps, water pumps; filters and ignition apparatus, all for use with internal combustion engines; heat exchangers (being parts of machines); parts and fittings and accessories for internal combustion engines; parts and fittings for all the aforesaid goods.

Class 9:        Speedometers, tachometers, oil pressure gauges, temperature gauges, fuel gauges, combined battery condition indicators and volt meters, and ammeters, thermostats, solenoids and electric switches, all for incorporation in or for use with motor vehicles; batteries.

Class 12:        Motor land vehicles and parts and fittings therefor; motor, cars, buses; parts and fittings for all the aforesaid goods.

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

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant filed a request for revocation on 08/12/2015 claiming that the EUTM proprietor has not put its European Union trade mark registration to genuine use for a continuous period of five years. The applicant submitted that the proprietor at best only supplies spare part for ‘Reliant’ vehicles and, if that would be the case, the specification should be limited accordingly.

The EUTM proprietor provided observations and evidence of use (listed below) on 04/07/2016, thus within the time limit granted after a request for extension. The EUTM proprietor argues that it made genuine use of the mark in the territory of the EU for the relevant goods and during the relevant period. The request by the applicant for a restriction of the specification by the inclusion of ‘all the aforesaid in relation to Reliant motor vehicles’ is arbitrary and not a valid subcategory. The revocation is unfounded and has to be refused in its entirety or, in the alternative, at the very least in connection with all the goods in Classes 7 and 9 and for part of the goods in Class 12. The EUTM proprietor provided a list and a description of the evidence consisting of a witness statement supported by Exhibits 1 – 8.

The applicant replied that the documents are not sufficient to prove that the use of the subject mark constitutes genuine use. The applicant analyses the pieces of evidence filed in detail and argues that the mark ‘Reliant’ is not being used as a trade mark indicator of origin, but descriptively as an indication of a characteristic or nature of the goods (namely that the parts and spare parts are for ‘Reliant’ vehicles). In addition, the evidence submitted does not demonstrate significant sales values and is confined to nine member states, omitting the majority of 19 EU member states. Accordingly there is no evidence of genuine use or sufficient or substantial use throughout the EU. The majority of evidence does not show use of the mark on its own but as part of a composite mark, such as Reliant Partsworld, Reliant Robin, Reliant Rialto, Reliant Regal, Reliant Fox and Reliant Kitten or as part of the logo. The applicant also claims that there is limited use of the mark on the products themselves and that there is no breakdown of the evidence to show the extent of use on any product. In relation to the website printouts at Exhibits 3, 4, 5 and 6 of the Witness Statement of Stewart Halstead, there is no evidence as to the number and frequency of connections to the websites and webpages and a number of the documents provided by the proprietor are outside the relevant period. From the evidence provided, the mark ‘Reliant’ is used to refer to the brand of cars rather than the spare parts. The applicant further submits that it is the ‘RELIANT’ characteristic which gives substantial value to the goods, accordingly, the current use being made of the ‘RELIANT’ mark is not valid trade mark use. The challenged EUTM should be revoked in its entirety.

The EUTM proprietor, in its response, refutes the arguments of the applicant. It argues that ‘Reliant Parts’ is the sole producer in the world of original spare parts for the ‘Reliant’ marque range of motor vehicles and that ‘Reliant’ is being used as a badge of origin for motor vehicle spare parts. When considering the level of use of the ‘Reliant’ trade mark during the relevant period, it is important to take into account the fact that the production of the ‘RELIANT’ motor vehicles ceased in 2002. While there were a large number of vehicles produced up to that date (around 1 to 2 million), as each year passes there is naturally some reduction in the numbers of those vehicles that still exist and therefore for which ‘Reliant Parts’ can supply genuine spare parts. The sales figures provided by the proprietor for both the UK and for several other EU countries outside the UK are significant when considered in relation to the market conditions for the proprietor’s goods. The evidence submitted by the proprietor shows use of the mark ‘RELIANT’ both on its own and in conjunction with other words that still constitutes use of the mark as registered. Contrary to the applicant’s assertion, the quantity of invoices provided is more than sufficient to illustrate the place, time, extent and nature of use particularly when assessed in combination with other documentation and information.

On 27/01/2017, the Cancellation Division notified the parties that the adversarial part of the proceedings was closed and that a decision would be taken in due course.

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 04/02/2005. The revocation request was filed on 08/12/2015.  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 08/12/2010 to 07/12/2015 inclusive, for the following contested goods:

Class 7:        Dynamos and electric alternators; starters (motor) and clutches; carburettors; fans for cooling engine radiators and fan belts for use therewith; air cleaners, fuel pumps, water pumps; filters and ignition apparatus, all for use with internal combustion engines; heat exchangers (being parts of machines); parts and fittings and accessories for internal combustion engines; parts and fittings for all the aforesaid goods.

Class 9:        Speedometers, tachometers, oil pressure gauges, temperature gauges, fuel gauges, combined battery condition indicators and volt meters, and ammeters, thermostats, solenoids and electric switches, all for incorporation in or for use with motor vehicles; batteries.

Class 12:        Motor land vehicles and parts and fittings therefor; motor, cars, buses; parts and fittings for all the aforesaid goods.

On 04/07/2016 the EUTM proprietor submitted evidence as proof of use.

The evidence consists of the following:

– Witness Statement dated 04/07/2016 by Mr. Stewart Halsted, managing director of the EUTM proprietor company for approximately 21 years. According to the statement, the company is the sole producer of original equipment manufacturer (OEM)
parts and spare parts (‘motor vehicle parts’) for the 'Reliant' marque range of
motor vehicles, such as the ‘Reliant Robin’, the ‘Reliant Rialto’, the
‘Reliant Regal’, etc., as a result of it (Reliant Parts) having acquired the original tooling, jigs and fixtures for the production of those motor vehicle parts when they bought the motor vehicle parts subsidiary ‘Reliant Parts World’ and the rights to the ‘Reliant’ marque, including the intellectual property rights, from the British Car
Manufacturing Company ‘Reliant Cars Limited’ upon the cessation of automobile
production by that company in 2002.

The witness statement makes reference and provides explanation in relation to the below listed annexes (Exhibits 1 to 8). Furthermore, Mr. Halsted mentions that its company ‘Reliant Parts’ manufactures and sells a complete range of ‘Reliant’ branded OEM motor vehicle parts, including brake parts, cooling parts, electrical parts, engine parts, exhaust parts, fuel system parts, gearbox parts, vehicle lights, suspension parts, vehicle trim and back axle parts. Furthermore, it is mentioned that the proprietor sells its range of ‘Reliant’ branded OEM motor vehicle parts primarily through an online shop on its web site www.reliantpartsworld.co.uk, which also displays a contact number for telephone sales. Mr. Halsted also provided approximate annual sales figures (turnover by sales value and turnover by number of items) for each of the years in the period 2006 – 2015 as regards the United Kingdom, 2009 – 2015 as regards Austria, 2011 – 2015 as regards the Netherlands, 2012 – 2015 as regards Poland, France, Spain, Belgium, Hungary and Germany. The exhibits enclosed to the Witness Statement are the following:

• Exhibit 1: (7 pages) A print-out of the Wikipedia entry for ‘Reliant’ which sets out the history of ‘Reliant Motor Company’ in its various forms. It is mentioned, inter alia, that for the period 1970s to the 1990s, ‘Reliant Motor Company’ was UK’s biggest British-owned car manufacturer and ‘Reliant Motor Company LTD’ is now a dormant company and the only part that still exists is ‘Reliant Parts World’, which produces spares for ‘Reliant’ vehicles.

• Exhibit 2: (4 pages) Extract from the book entitled ‘The Reliant Motor Company’ by Elvis Payne (published by Crecy Publishing Ltd in 2016), which is a definitive history of the ‘Reliant Motor Company’. More particularly, page 145 thereof refers to the acquisition of ‘Reliant Parts World’ subsidiary from the ‘Reliant Motor Company’ (Reliant Cars Limited).

• Exhibit 3: (2 pages) A print-out of a screenshot of the web site
  www.reliantpartsworld.co.uk, as it is currently showing information in relation to the business activities of ‘Reliant Parts’, namely an economically active
  supplier of OEM motor vehicle parts to owners and repairers of the ‘Reliant’
  marque range of motor vehicles.

• Exhibit 4: (29 pages) A print-out taken from the proprietor’s web site, www.reliantpartsworld.co.uk, displaying ‘Reliant’ motor vehicle parts, including pictures, prices, product reference numbers, etc. The goods shown are, for example, brake parts (handbrake cable, handbrake shoe set, brake cylinders, brake pipe and spring), cooling parts (water pumps, heater control valves, thermostats, radiators, radiator caps, radiator hoses, water pump fans, water pump gaskets, fan belts), electrical parts (oil pressure switches, indicator lights and lenses, distributor caps, high tension leads, flasher relay units, indicator lights and lenses, distributor caps, relay unit equipment, indicator stalks,  condensors, rotor arms, brake light switches, fuel tank switches, replacement fuse boxes, temperature sender units), engine parts (oil filters, rear crank oil seals, gaskets and gasket sets, air filters, flywheel tab washers, big end bearings, cylinder head studs and stud washers, inlet valves, exhaust valves, valve spring sets, main bearings, tappets), ignition kits and coils, exhaust parts (exhaust downpipe gaskets, exhaust straps, exhaust valves), fuel system parts (fuel pumps, choke cables, throttle cables, carburettors, fuel inlet valves, fuel filters), gearbox parts (gearbox engine mounts, clutch cables, speedo cables, clutch release bearings, clutch kits), vehicle lights (rear lights, headlights), suspension parts (shock absorbers, wheel bearings, wheel bearing kits, king pin sets, anti-rollbar bushes, radius arm bush sets), vehicle trim (seat slide channels) and back axle parts (pinion oil seals, axle oil seals, wheel bearings).

• Exhibit 5: (13 pages) A set of archived pages from the proprietor’s web site, www.reliantpartsworld.co.uk, from the years 2004 to 2015 taken from the ‘WayBackMachine’ showing archived snapshots of the website in the years. As explained by the proprietor, the purpose is to demonstrate that the web site has been operational in various evolving forms during the whole of that period with respect to the sale of ‘Reliant’ branded OEM motor vehicle parts.

• Exhibit 6: Part 1 (17 pages) and Part 2 (18 pages): A print-out from the ‘eBay’ shop of ‘Reliant Parts World’ displaying a range of ‘Reliant’ OEM motor vehicle parts (314 results) available for purchase.  

• Exhibit 7: Part 1, 2 and 3 (36 pages, 27 pages and 23 pages). A selection of invoices to customers in the United Kingdom, Austria, Germany, the Netherlands and several other European Union countries (Belgium, France, Ireland, Denmark, Sweden and Finland). The invoices are dated throughout the relevant period 2010 – 2015, directed to different customers and itemise various quantities and types of goods (brake parts, engine parts, lights and lamps, exhaust parts, cooling parts, gearbox parts, electrical parts, axle parts, suspension parts, etc.). Some of the invoices include the brand ‘Reliant’ in the product description and each of the invoices has a product code and a product description. The product codes correspond to the product codes on the web site and the ‘eBay’ shop (Exhibits 4, 5 and 6). For example, product code 17923 ‘Brake Cylinder Rear’ is shown on invoice dated 08/02/2013 to a customer in France at page 170 of the evidence.

• Exhibit 8: (10 pages) Photographs of goods showing examples of the use by the proprietor of the trade mark ‘Reliant’ such as on plastic packaging and cartons containing the goods as well as an advertisement in a car magazine dated 2015.

Assessment of genuine use – factors

As a preliminary remark, the Cancellation Division notes that an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for all the relevant goods. Furthermore, there is no limit on the methods and means of proving genuine use of a mark (15/09/2011, T-427/09, Centrotherm, EU:T:2011:480, § 43 and 46).

Furthermore, the applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods for which the EUTM is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, 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.

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period.

The majority of the evidence is dated within the relevant period. While there are some pieces of evidence that are undated or dated outside the relevant period (for example, several invoices referring to dates earlier in 2010, i.e. earlier than the beginning of the relevant period 08/12/2010), the large majority and sufficient amount of the documents fall within the relevant period of time or contain conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. The Cancellation Division, therefore, considers that the requirements in this respect have been met and there are sufficient indications concerning the time of use.

Place of use

The evidence must show that the contested European Union trade mark has been genuinely used in the European Union (see Article 15(1) EUTMR and Article 51(1)(a) EUTMR).

The applicant argues that the evidence is confined to nine member states, omitting the majority of 19 EU member states, accordingly there is no evidence of genuine use or sufficient or substantial use throughout the EU.

The Cancellation Division notes that the documents show that the place of use is many different countries in the European Union throughout the relevant period. This can be inferred from the addresses in the invoices as well as the sales figures provided in the witness statement. Therefore, the evidence relates to the relevant territory.

While it indeed seems that the trade mark was used to a greater extent in the United Kingdom than the remaining countries such as Austria, Germany, the Netherlands, France, etc., there is no obligation on the part of the EUTM proprietor to show either significant use or use in each and every member state of the EU.

In territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of a market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use. As the Court indicated in ‘Leno Merken’ (judgment of 19/12/2012, C-149/11, Leno, EU:C:2012:816), 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 (paragraph 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (paragraph 58).

As mentioned above, the evidence refers to a number of EU member states and, taking into account the characteristics of the specific market as well as the regular use throughout the relevant period, it is considered that the evidence of use filed by the EUTM proprietor contains more than sufficient indications concerning place of use.

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 EUTM was used as a trade mark. The evidence filed by the EUTM proprietor undoubtedly shows a link between the goods in question and the use of the mark and that the EUTM was used in accordance with its essential function, which is to guarantee the identity of the origin of the goods for which it is registered.

As regards the applicant’s argument that the mark ‘Reliant’ is not being used as a trade mark indicator of origin, but descriptively as an indication of a characteristic or nature of the goods (namely that the parts and spare parts are for ‘Reliant’ vehicles), it must be noted that the sign ‘Reliant’ is doubtlessly used by the proprietor in order to identify its goods. This is clear from all the pieces of evidence where the goods are identified and offered on the market under this sign. The fact that the term ‘Reliant’ is/was used in relation to cars does not prevent it from being used as a trade mark for other goods as well. Therefore, this argument of the applicant must be set aside.

The applicant also claims that there is limited use of the mark on the products themselves. In this regard, the Cancellation Division points out that there is no requirement that the sign should actually be used on the goods in question. In the present case, it is sufficient that the mark is used in relation to the goods. Furthermore, the mark appears on the goods packaging, which also proves use in relation to the goods.

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 sign used and the contested EUTM have the same distinctive character. First, the distinctive character of the contested EUTM must be clarified. Then, it must be considered whether or not the mark as used alters this distinctive character.

The registered European Union trade mark is the word mark ‘Reliant’. This element has no directly descriptive or otherwise weak meaning for the public in the relevant territory and, therefore, intrinsically, it has normal distinctive capacity to identify and distinguish the goods at issue from those of other undertakings.

The evidence (such as the printouts from the proprietor’s web site, the ‘eBay’ shop and photographs of goods packaging and cartons) shows different uses of the sign, such as Reliant Robin, Reliant Kitten, Reliant Rialto, Reliant Robin/Rialto, Reliant Rocker, Reliant Regal, Reliant Fox, , etc. Although there are some instances where the sign appears alone, most of the evidence shows the sign together with other additional words or, rarely, as part of a logo. In this regard, it is noted that it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group.

As mentioned above, the evidence shows instances of use of the distinctive word element ‘Reliant’, written in a standard typeface together with additional verbal elements. The additional wordings ‘Fox’, ‘Rialto’, ‘Kitten’, ‘Regal’, etc. do not alter the distinctive character of the sign ‘Reliant’, which is obviously the house mark. The various additions, because of their position, are likely to be seen as designating a separate line/sub-brand/model of goods and/or use of independent marks. As regards the use within the bird logo, the bird appears as a background to the word element ‘Reliant’ and could be seen as simultaneous use of two signs or less important than the verbal identifier. The applicant also mentions use as ‘Reliant Partsworld’ but it must be noted that this sign is rather shown in the evidence as identification of the company name and business of the proprietor and not in relation to specific goods.

The Cancellation Division considers that neither the additions of the mentioned other words or as part of a logo affect the distinctive character of the denomination ‘Reliant’.

Therefore, although the use of the contested mark varies and is used in a form which is different from the registered one, this does not affect its distinctive character, as the variations and additional elements are either less distinctive or are used as autonomous signs.

Consequently, considered as a whole, the evidence gives indications of the use of the mark as registered within the meaning of Article 15(1)(a) EUTMR.

Extent of use

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.

The Cancellation Division is of the opinion that for part of the goods for which the EUTM is registered, the evidence (especially the invoices, print-outs from online shop and proprietor’s web site and sales figures for several countries), gives sufficient information regarding the extent of use of the mark.

The applicant claims that there is no breakdown of the evidence to show the extent of use on any product. In relation to the website printouts, there is no evidence as to the number and frequency of connections to the websites and webpages. As regards the lack of breakdown of the figures in relation to each good, it must be noted that the Cancellation Division does not find it necessary taking into account the nature, price and variety of the goods. Furthermore, the EUTM proprietor provided sufficient number of invoices directed to various customers in many countries covering the whole period and itemising the sale of a large variety of goods, each identified by a product number/code corresponding to the ones in the online shops. As regards the lack of statistics as to the visits to the websites, it is also not decisive in the present case in view of the sales figures (per country, year, number of items sold and revenue) and the direct sales documents presented in the form of invoices.  

Therefore, taking into account the various indications such as the length of the period during which the mark was used (uninterruptedly throughout the whole period 2010 – 2015), the frequency of use, the territorial scope and geographical dimension of use, the characteristics of the particular market and price of the goods, the Cancellation Division concludes that for part of the goods for which the EUTM is registered, the evidence gives sufficient information regarding the extent of use of the mark.

Consequently, taking into account the evidence in its entirety and based on an overall assessment, the Cancellation Division considers that the evidence gives sufficient information regarding the extent of use of the mark.

Use in relation to the registered goods

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 request for revocation is directed against all the goods in Classes 7, 9 and 12 for which the contested EUTM is registered. However, the evidence filed by the EUTM proprietor does not show genuine use of the trade mark for all the contested goods for which it is registered.

According to Article 51(2) EUTMR, where there are grounds for revocation in respect of 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.

Furthermore, according to case-law, when applying the abovementioned provision the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or subcategories.

[Furthermore,] allowing an earlier trade mark to be deemed to be registered only in relation to the part of the goods or services in respect of which genuine use has been established … must be reconciled with the legitimate interest of the proprietor in being able in the future to extend his range of goods or services, within the confines of the terms describing the goods or services for which the trade mark was registered, by using the protection which registration of the trade mark confers on him.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288)

Contested goods in Class 7

The EUTM is registered for the following goods in this Class: Dynamos and electric alternators; starters (motor) and clutches; carburettors; fans for cooling engine radiators and fan belts for use therewith; air cleaners, fuel pumps, water pumps; filters and ignition apparatus, all for use with internal combustion engines; heat exchangers (being parts of machines); parts and fittings and accessories for internal combustion engines; parts and fittings for all the aforesaid goods.

The evidence shows that the mark is used in relation to the following individually mentioned goods clutches; carburettors; fans for cooling engine radiators and fan belts for use therewith; air cleaners, fuel pumps, water pumps; filters and ignition apparatus, all for use with internal combustion engines. In addition, the evidence shows use for a number of different engine parts. Therefore, it is considered that the EUTM proprietor proved use for parts and fittings and accessories for internal combustion engines as well as for the category parts and fittings for all the aforesaid goods.  However, as this class includes goods, parts of motors and engines of all kinds and the evidence shows that the EUTM proprietor only used the goods in relation to land vehicles, it is considered that use for the goods mentioned in this paragraph has been demonstrated only in relation to land vehicles.  

Furthermore, the EUTM proprietor did not submit any evidence of use or any proper reasons for non-use of the contested mark in relation to dynamos and electric alternators; starters (motor); heat exchangers (being parts of machines); parts and fittings for all the aforesaid goods.

Contested goods in Class 9

The EUTM is registered for the following goods in this Class: Speedometers, tachometers, oil pressure gauges, temperature gauges, fuel gauges, combined battery condition indicators and volt meters, and ammeters, thermostats, solenoids and electric switches, all for incorporation in or for use with motor vehicles; batteries.

The evidence shows that the mark is used in relation to the following individually mentioned goods oil pressure gauges, temperature gauges, fuel gauges, thermostats, electric switches, all for incorporation in or for use with motor vehicles.

The EUTM proprietor did not submit any evidence of use or proper reasons  for non-use of the contested mark in relation to speedometers, tachometers, combined battery condition indicators and volt meters, and ammeters, solenoids, all for incorporation in or for use with motor vehicles; batteries.

Contested goods in Class 12

The EUTM is registered for the following goods in this Class: Motor land vehicles and parts and fittings therefor; motor, cars, buses; parts and fittings for all the aforesaid goods.

In the present case, the evidence shows that the mark is used for a broad range of parts and fittings for land vehicles. Therefore, applying the principles established in the ‘Aladin’ case previously quoted, in view of the use shown in relation to various goods, it is considered that the evidence shows use of the mark for the following categories of goods: parts and fittings for motor land vehicles; parts and fittings for cars. 

No evidence of use or any proper reasons for non-use of the contested EUTM were provided by the proprietor in relation to the remaining goods.

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 genuine use of the contested mark has been sufficiently demonstrated for the relevant factors time, place, extent and nature of use for some the contested goods in Classes 7, 9 and 12 for which the mark is currently registered, namely:

Class 7: Clutches for land vehicles; carburettors for land vehicles; fans for cooling engine radiators and fan belts for use therewith, all for land vehicles; air cleaners, fuel pumps, water pumps, all for land vehicles; filters and ignition apparatus, all for use with internal combustion engines, all for land vehicles; parts and fittings and accessories for internal combustion engines for land vehicles; parts and fittings for all the aforesaid goods.

Class 9: Oil pressure gauges, temperature gauges, fuel gauges, thermostats, electric switches, all for incorporation in or for use with motor vehicles.

Class 12: Parts and fittings for motor land vehicles; parts and fittings for cars.

Therefore, the EU trade mark registration remains registered for the abovementioned goods and the application for revocation is not successful in this respect.

However, the evidence submitted is insufficient to prove genuine use of the contested EUTM in relation to the remaining contested goods, for which it must, therefore, be revoked.  

Conclusion

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

Class 7: Dynamos and electric alternators; starters (motor); heat exchangers (being parts of machines); parts and fittings for all the aforesaid goods; and clutches, other than for land vehicles; carburettors, other than land vehicles; fans for cooling engine radiators and fan belts for use therewith, other than for land vehicles; air cleaners, fuel pumps, water pumps, other than for land vehicles; filters and ignition apparatus, all for use with internal combustion engines, other than for land vehicles; parts and fittings and accessories for internal combustion engines, other than for land vehicles; parts and fittings for all the aforesaid goods, other than for land vehicles.

Class 9: Speedometers, tachometers, combined battery condition indicators and volt meters, and ammeters, solenoids, all for incorporation in or for use with motor vehicles; batteries.

Class 12: Motor land vehicles; motor, cars, buses; parts and fittings for all the aforesaid goods (other than parts and fittings for cars and motor land vehicles).

The EUTM proprietor has proven genuine use for the remaining contested goods; therefore, the application is not successful in this respect.

According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 08/12/2015.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Gueorgui IVANOV

Liliya YORDANOVA

Pierluigi M. VILLANI

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.