CANCELLATION No 11 925 C (REVOCATION)
Sofiero Kafferosteri AB, Järnvägsgatan 11, 252 24 Helsingborg, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 115 31 Stockholm, Sweden (professional representative)
a g a i n s t
Kopparbergs Bryggeri AB, 714 82 Kopparberg, Sweden (EUTM proprietor), represented by Advokatfirman Lindahl KB, Studentgatan 6, 211 38 Malmö, Sweden (professional representative).
On 10/04/2017, 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 3 633 153 are revoked as from 14/10/2015 for all the contested goods, namely:
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
3. The European Union trade mark remains registered for all the uncontested goods, namely:
Class 32: Beers.
4. 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 3 633 153 ‘SOFIERO’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
The applicant invoked Article 51(1)(a) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the use of the EUTM is limited to beers in Class 32 only, and that it has not been put to genuine use in the European Union in connection with the other goods for which the EUTM is registered. The applicant claims that, consequently, the EUTM should be deemed to have lost the rights/effects conferred upon it from the date of the application for revocation.
On 29/03/2016, the EUTM proprietor submitted evidence of use (listed below in the grounds for the decision) and requested that the Office reject the application for revocation. The EUTM proprietor argues that the evidence complies with the requirements regarding time, place, nature and extent of use and that the evidence demonstrates that the mark has been used for the goods for which it is registered, in particular cider. Furthermore, the EUTM proprietor explains, in relation to the evidence submitted, that Systembolaget is a monopoly chain of liquor stores owned and run by the Swedish government.
In its observations dated 03/06/2016, the applicant comments on the proof of use submitted and claims that the EUTM proprietor has failed to prove genuine use of the EUTM, as a trade mark, for the contested goods. The applicant states that the evidence does not show precisely which goods have been sold and whether or not any of these goods are labelled with the EUTM. In particular, the applicant points out that the EUTM has been used not in the form as it was registered but together with other distinctive elements and that the EUTM appears only as a company name in the evidence and not as a trade mark. Furthermore, the applicant notes that the EUTM proprietor has not attempted to submit evidence relating to the goods registered in Class 32 and that the trade mark should, therefore, be revoked for the contested goods in Class 32. Moreover, the applicant states that, even if the evidence is found to show use in relation to cider, such use shall not constitute use in relation to the broader concept of alcoholic beverages in Class 33; instead, in such a case, the registered mark should be revoked for all goods except ‘cider (alcoholic)’ in Class 33. Finally, the applicant requests that the EUTM be revoked and that the fees and costs of the proceedings be borne by the EUTM proprietor.
On 17/10/2016, the EUTM proprietor submitted observations in reply, claiming that the evidence demonstrates not only the time and place of use but also the extent and nature of use. The EUTM proprietor points out that the lists of sales of cider and mixed beverages submitted do not include sales of beer but show substantial sales of goods other than beer under the EUTM. Furthermore, the EUTM proprietor states that the evidence demonstrates that the trade mark has been used in the form in which it was registered or, at very least, in a manner comparable to the trade mark as registered and that the EUTM has been used as a trade mark. Finally, the EUTM proprietor argues that the EUTM has clearly been used in relation to goods in the category ‘cider and mixed beverages’, which constitutes use in relation to ‘alcoholic beverages (not beer)’.
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 ‘SOFIERO’ was registered on 29/09/2005. The revocation request was filed on 14/10/2015. 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 14/10/2010 to 13/10/2015 inclusive, for the following contested goods:
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
On 29/03/2016, the EUTM proprietor submitted evidence as proof of use.
The evidence to be taken into account is the following:
Items 1-6 Lists of sales to the Swedish liquor store Systembolaget by the 50 largest suppliers, showing sales of all the goods distributed and, in particular, ‘cider and mixed beverages’. The lists show sales of millions of litres of goods of KopparbergsSofiero Bryggeri during 2011-2015, including ‘cider and mixed beverages’.
Item 7 A printout from Systembolaget’s website, dated 22/05/2013, containing a picture of a can, which, according to the accompanying description, contains cider; the can displays numerous verbal and figurative elements, none of which is the registered trade mark. The accompanying information also contains the name of the producer and the distributor of the cider, namely ‘KopparbergsSofiero Bryggeri’.
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 nature of use of the contested EUTM.
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, which is the essential function of a trade mark. The evidence must therefore establish a clear link between the use of the mark and the relevant goods.
The purpose of a company or trade name, on the other hand, is not to distinguish goods or services. The purpose of a company name is to identify a company, while the purpose of a trade name is to identify a business. Accordingly, use of a company or trade name cannot be considered as being ‘in relation to goods or services’ within the meaning of Article 5(1) of the Directive.
The use of a sign as business or trade name cannot be regarded as trade mark use unless the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55, 56).
The evidence submitted as items 1-6 does not give any indication of the use of the sign as a trade mark. It is clear that, whenever the verbal element ‘Sofiero’ appears, it appears as part of the company name ‘KopparbergsSofiero brewery’.
It is also evident that the cider manufactured by ‘KopparbergsSofiero brewery’ is branded with the sign ‘Kopparbergs’, which immediately catches the attention of the consumer due to its considerable size in the middle of the can and its average degree of distinctiveness in relation to the goods. The EUTM does not appear on the can at all. Even if the name of the manufacturer, ‘KopparbergsSofiero brewery’, appears somewhere on the can, there is absolutely no reason to believe that the relevant consumer would refer to the product using the verbal element ‘Sofiero’ or perceive it in any way other than simply as part of the name of the company.
Overall assessment
The evidence of the nature of use does not demonstrate use of the EUTM as a trade mark. It only demonstrates use of the name of the company in a way that does not suggest that the consumer will eventually perceive it also as a trade mark. Such use of the sign ‘Sofiero’ will not make it possible for the relevant public to distinguish between these goods and the goods of different providers. Bearing in mind the market reality and the usual perception of the relevant consumer of the labels of alcoholic beverages, the goods manufactured by the EUTM proprietor and for which evidence has been submitted will be perceived as branded with the sign ‘Kopparbergs’ and certainly not with the sign ‘Sofiero’.
Conclusion
Taking all of the above into consideration and recalling that the requirements for proof of use are cumulative, the Cancellation Division concludes that the evidence submitted by the EUTM proprietor is insufficient to prove that the contested trade mark was genuinely used. At the same time, the EUTM proprietor did not submit any proper reasons for non-use of the EUTM.
As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested goods, namely:
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
The EUTM remains on the register for all the uncontested goods.
According to Article 55(1) EUTMR, the revocation will take effect from the date of the application for revocation, i.e. as of 14/10/2015.
COSTS
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
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.
The Cancellation Division
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Ana MUÑIZ RODRIGUEZ
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Plamen IVANOV
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Judit NÉMETH
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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.