CANCELLATION No 14 161 C (REVOCATION)
Moschillo, S.R.L., Via Vasto 22, 83100 Avellino, Italy (applicant), represented by Lexico SRL, Via Cacciatori delle Alpi 28, 06121 Perugia, Italy (professional representative)
a g a i n s t
Fashioneast S.A.R.L., 51, Allée Scheffer, 2520 Luxemburg, Luxemburg (EUTM proprietor), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative).
On 16/06/2017, the Cancellation Division takes the following
1. The application for revocation is upheld.
2. The EUTM proprietor’s rights in respect of European Union trade mark No 4 225 447 are revoked in their entirety as from 09/12/2016.
3. The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed a request for revocation of European Union trade mark No 4 225 447 (figurative) (the EUTM). The request is directed against all the goods covered by the EUTM, namely:
Class 3: Non-medicated toilet preparations; soaps; shampoos; talcum powder; preparations for use in the bath or shower; bubble baths; bath foam; bath salts; bath oil; shower gel; preparations for the hair; hair lotions; hair gel; hair wax; preparations for cleaning the teeth; toothpastes; perfumes; eau de cologne; after-shave lotions; after-shave balms; shaving soap; shaving preparations; antiperspirants; deodorants for personal use; essential oils; toiletries; skin care preparations; cosmetics; cotton wool for cosmetic purposes; make-up removing preparations; mouth washes; nail care preparations; nail varnishes and polishes; nail varnish removing preparations; depilatories; emery paper; pumice stone; beauty masks; perfuming sachets; scented wood; shoe creams and polishes.
Class 9: Sunglasses; spectacles; eyewear; frames for spectacles and sunglasses; lenses; spectacle and sunglass cases and pouches; chains, cords and straps for sunglasses and spectacles; parts and fittings for all the aforesaid goods.
Class 14: Precious metals and their alloys and goods made in precious metals or coated therewith, not included in other classes; jewellery; precious stones; horological and chronometric instruments; watches and clocks; watch straps; chains and bands for watches.
Class 18: Leather and imitations of leather and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; articles of luggage; bags; cases; attaché cases; briefcases; suitcases; trunks; valises; handbags; shoulder bags; satchels; gym bags; tote bags; shopping bags; holdalls; bags for clothing; shoe bags; beach bags; bags for strapping to the body; hip bags; pouches; purses, wallets, billfolds; card cases; pass cases; key fobs, key cases, luggage tags, and coasters, all of leather or imitation leather; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
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 18/01/2006. The revocation request was filed on 09/12/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request.
On 20/12/2016, 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 for which it is registered. On the request of the EUTM proprietor the time limit was extended. It expired on 20/05/2017.
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 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 09/12/2016.
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.
The Cancellation Division
María INFANTE SECO DE HERRERA
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.
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).