CANCELLATION DIVISION
CANCELLATION No 10866 C (REVOCATION)
KID-Systeme GmbH, Lüneburger Schanze 30, 21614 Buxtehude, Germany
(applicant) represented by WÜRTENBERGERKUNZE, Maximiliansplatz 12b, 80333
Munich, Germany (professional representative).
a g a i n s t
Sky International AG,Stockerhof, Dreikönigstrasse 31a, 8002 Zurich, Switzerland
(EUTM proprietor) represented by CMS CAMERON MCKENNA NABARRO
OLSWANG LLP, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom
(profesional representative).
On 03/01/2018, 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 57 625 are revoked in their entirety as from 12/05/2015.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
REASONS
The applicant filed a request for revocation of European Union trade mark registration
No 57 265 ‘SKYPHONE’ (word mark) (the EUTM). The request is directed against all
the goods covered by the EUTM, namely:
Class 9: Electrical, electronic, electro-optical and optical installations, apparatus
and instruments; monitoring, radio, television, control, testing, signalling,
checking, radio-paging, radio-telephone, telecommunications and
teaching apparatus and instruments; apparatus and instruments for
recordal, broadcast, storage, reception, transmission, or reproduction of
audio or visual signals; cables and wires; waveguides, aerials;
apparatus and instruments all for processing, logging, storing,
transmission, or reception of data; computers; office machinery included
in class 9; encoding and decoding apparatus and instruments; magnetic
data carriers, recording discs, encoded programs for computers and for
data processing apparatus; computer programs; parts and fittings for all
the aforesaid goods included in class 9.
The applicant invoked Article 58(1)(a) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Decision on Cancellation No 10866 C page: 2 of 3
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.
ON THE CLOSURE OF THE ADVERSARIAL PART OF THE PROCEEDINGS
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
and 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 18/05/1998. The revocation request
was submitted on 12/05/2015. Therefore, the EUTM had been registered for more than
five years at the date of the filing of the request.
On 19/05/2015, the Cancellation Division duly notified the EUTM proprietor of the
application for revocation and gave it a time limit until 24/08/2015, subsequently
extended until 24/10/2015, 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.
On 03/11/2015, the Cancellation Division informed the parties that it intended to close
the revocation proceedings following the total surrender of the contested EUTMR. On
03/12/2015 the applicant requested that the proceedings continue until the rendering of
a final decision. The proceedings therefore continued.
On 14/07/2017, the Cancellation Division informed the parties that it intended to close
the revocation proceedings following the lack of renewal or the contested EUTMR. On
17/07/2017 the applicant requested that the proceedings shall not be closed without a
decision on the substance. The proceedings therefore continued.
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 from 12/05/2015.
Decision on Cancellation No 10866 C page: 3 of 3
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 María INFANTE SECO DE
HERRERA
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).