of the First Board of Appeal
of 12 January 2017
In Case R 301/2016-1
FMTM Distribution Ltd
3A and 3B Isle of Man Freeport
Ballasalla IM9 2AP
Isle of Man
Cancellation Applicant / Appellant
represented by INGENIAS, Av. Diagonal, 421,2º, 08008 Barcelona, Spain
EUTM Proprietor / Respondent
represented by WINTERSTEIN RECHTSANWÄLTE, Darmstädter Landstr. 110, 60598 Frankfurt am Main, Germany
APPEAL relating to Cancellation Proceedings No 9 436 C (European Union trade mark registration No 3 060 481)
THE FIRST BOARD OF APPEAL
composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and Ph. von Kapff (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
- On 13 May 2005, Carlos Fernandes (‘the EUTM proprietor’) was granted the registration for the word mark
as an EU trade mark (‘EUTM’) for the following goods:
Class 14 – Jewellery, precious stones; precious metals and their alloys and goods in precious metals or coated therewith, included in this class; horological and chronometric instruments.
- The EUTM was subsequently renewed.
- On 6 June 2014, FMTM Distribution Ltd (‘the cancellation applicant’) applied for the revocation of the EUTM with respect to all its goods in Class 14 on the grounds of Article 51(1)(a) EUTMR, i.e. based on the alleged lack of genuine use of the EUTM during a continuous period of five years.
- On 27 September 2014, the EUTM proprietor submitted the following documents to prove the contested EUTM’s genuine use:
- Item 1: Pictures of watches and jewellery items bearing the mark ‘Vegas’;
- Item 2: Copies of five ‘Vegas’ product catalogues in English and German, issued by Vegas Cosmetics GmbH and Vegastrade Lda, featuring watches, jewellery and other items;
- Item 3: Invoices to clients in Germany and other countries, issued by Vegas Cosmetics GmbH;
- Item 4: Copies of four declarations attesting to the purchase of goods signed by clients in Germany;
- Item 5: Copies of three ‘Vegas’ product catalogues in Portuguese, issued by Vegastrade Lda featuring watches, jewellery and other items;
- Item 6: Invoices in Portuguese to clients in Portugal and Luxembourg issued by Vegas Cosmetics GmbH;
- Item 7: Copies of six declarations attesting to the purchase of goods signed by clients in Portugal.
- The cancellation applicant observed thereto that the evidence submitted was insufficient to demonstrate genuine use of the contested EUTM and that the relationship between the EUTM proprietor and the companies appearing on the documents had not been proven. The EUTM proprietor replied that the use had taken place with his consent and that he owned the companies appearing on the documents. To prove this, he submitted copies from the Commercial Registry of Darmstadt, Germany, and of the business registration.
- By decision of 10 December 2015 (‘the contested decision’), the Cancellation Division partially rejected the application for revocation with respect to the following goods for which it considered that genuine use had been proven:
Class 14 – Jewellery; watches.
The EUTM was declared as revoked with respect to its remaining goods.
- The contested decision was reasoned by the Cancellation Division as follows:
- The documents filed by the EUTM proprietor show genuine use of the contested EUTM for jewellery and watches, nevertheless not for its remaining goods, for which the EUTM is revoked.
- The EUTM was used with the EUTM proprietor’s consent, which is equivalent to use by the EUTM proprietor himself.
- The evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use. It shows use of the mark mainly in Germany and Portugal, which is sufficient to confirm that it relates to the relevant territory.
- Further, the invoices show a continuity and frequency of use that is sufficient to prove that the EUTM proprietor has seriously tried to maintain or create a commercial position in the relevant market. There is sufficient information concerning the commercial volume, the duration and the frequency of use.
- As a whole, the documents show the use of the sign as a trade mark and its link to the EUTM proprietor. The slight stylisation of the mark does not alter the distinctive character; it is therefore considered to be used as registered.
- On 10 February 2016, the cancellation applicant filed a notice of appeal against the part of the contested decision which rejected the application for revocation with respect to the goods ‘jewellery; watches’ in Class 14. The corresponding statement of grounds was received on 11 April 2016.
- On 10 June 2016, the EUTM proprietor filed observations in reply.
Submissions and arguments of the parties
- The cancellation applicant requests that the part of the contested decision rejecting the application for revocation be set aside and that the contested EUTM be also revoked with respect to ‘jewellery; watches’ in Class 14. Its arguments may be summarised as follows:
- The evidence submitted is insufficient to prove genuine use of the trade mark. Specifically, the undated images (Item 1) do not reveal real use on the market. Further, there is no proof that the catalogues (Items 2 and 5) actually reached consumers. Moreover, they are undated and issued by companies different to the EUTM proprietor. Finally, they only show ‘bijouterie’ and not ‘jewellery’.
- Most of the invoices (Items 3 and 6) are illegible. Very few refer to watches and then only in minor quantities. The sales volume of watches in the EU is therefore only symbolic.
- There is no information regarding the written statements (Items 4 and 7) that would confirm their probative value.
- To conclude, the evidence is not solid and objective and does not show the use of the mark by the EUTM proprietor. The EUTM should therefore also be revoked for ‘jewellery; watches’ in Class 14.
- In his observations in reply, the EUTM proprietor requests that the appeal be dismissed firstly, as inadmissible, because the cancellation applicant did not request the amendment or annulment of the contested decision and failed to explicitly state the reason why the contested decision is erroneous. Alternatively, the EUTM proprietor requests that the appeal be dismissed as unfounded, since the evidence submitted to prove genuine use of the contested EUTM was correctly assessed by the Cancellation Division.
- The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR.
- It clearly emerges from the statement of grounds that the cancellation applicant requests the annulment of the part of the contested decision rejecting the application for revocation. The cancellation applicant has also exposed the reasons for this request (see above paragraph 10). The appeal is therefore, contrary to what is argued by the EUTM proprietor, admissible.
- However, the appeal is unfounded for the reasons explained below.
On the scope of review by the Board
- The part of the contested decision that revoked the EUTM for
Class 14 – Precious stones; precious metals and their alloys and goods in precious metals or coated therewith, included in this class; horological and chronometric instruments, except for watches.
has not been appealed or otherwise challenged by the EUTM proprietor and is, thus, final.
- Only the cancellation applicant has appealed the contested decision insofar it rejected the application for revocation in respect of the following goods (‘the goods at issue’):
Class 14 – Jewellery; watches.
- It is therefore to this extent that the Board will review the contested decision.
Article 51(1)(a) EUTMR
- Pursuant to Article 51(1)(a) EUTMR, an EUTM shall be declared 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 in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
- There is genuine use of a trade mark 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 was registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (11/03/2003, C40/01, Minimax, EU:C:2003:145, § 43).
- In this case, the Cancellation Division declared that genuine use of the contested EUTM ‘Vegas’ had been proven with respect to the goods at issue, i.e. ‘jewellery; watches’.
- The documents filed by the EUTM proprietor to prove the genuine use of the mark, as listed above in paragraph 4, are in detail as follows:
- Item 1: Undated pictures of rings and wristwatches bearing the mark ‘Vegas’;
- Item 2: Copies of five ‘Vegas’ product catalogues issued by Vegas Cosmetics GmbH and Vegastrade Lda, two in English and three in German, featuring wristwatches, jewellery (necklaces, bracelets, rings, earrings, pendants, colliers, pearl necklaces, cuff links), jewellery boxes and other items. The images include product codes, short product descriptions and in some cases, the price. One catalogue is dated 2012 and three bear handwritten indications (‘Current catalogue’, ‘Catalogue 2011 EN’, ‘Catalogue 2011 DE’). The last catalogue includes a ‘Vegas’ price list (‘Berater – Einkaufspreisliste’) in German dated 2008, with a list of products (watches, various jewellery items), their product code and prices in euros. The codes coincide with items in the catalogues;
- Item 3: Approximately 80 invoices in German, dated between May 2007 and June 2013 (several samples per year) for the sale of jewellery (necklaces, earrings, pendants, bracelets, rings), filled jewellery cases, watches and other items. The invoices are issued by Vegas Cosmetics GmbH, mostly for clients in Germany, but also in Austria, Belgium, the Netherlands, Luxembourg and other countries;
- Item 4: Copies of four declarations in English, signed by German customers and attesting to the purchase, between 2007 and 2012, of jewellery and horological instruments bearing the trade mark ‘Vegas’ from Vegas Cosmetics GmbH. Each statement is accompanied by copies of ‘Vegas’ product catalogues highlighting the relevant products, extracts of invoices and price lists dated in 2007, 2008 and 2011;
- Item 5: Copies of three ‘Vegas’ product catalogues in Portuguese, featuring watches, jewellery (necklaces, bracelets, rings, earrings, pendants, colliers, pearl necklaces, cuff links), jewellery boxes and other items. The catalogues are issued by Vegastrade Lda and show product codes, short product descriptions and in some cases, the price in euros. One catalogue is dated 2012, while the other two show handwritten indications of the year (‘Catalogue 2008 PT’ and ‘Catalogue 2011 PT’);
- Item 6: Copies of nine invoices in Portuguese to clients based in Portugal and Luxembourg, dated between January 2009 and January 2010, for the sale of jewellery (rings, bracelets, earrings, necklaces), watches and other items. The invoices are issued by Vegas Cosmetics GmbH;
- Item 7: Copies of six declarations in English, signed by Portuguese customers and attesting to the purchase, between June 2007 and June 2012, of jewellery and horological instruments bearing the trade mark ‘Vegas’ from Vegastrade Lda. Each document states that the products have been ordered from the catalogue and mentions examples of such goods, identified by product code, product description and relevant catalogue.
- According to Rule 22(3) CTMIR, evidence of use must concern the place, time, extent and nature of use of the earlier trade mark. An overall assessment must be made of the documents submitted. Following settled case-law, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (13/02/2015, T-287/13, HUSKY, EU:T:2015:99, § 66).
On the place of use
- The contested mark is a EUTM, so the European Union is the relevant territory.
- The invoices are addressed to the EUTM proprietor’s customers in Germany, Portugal, Austria, Belgium, the Netherlands and Luxembourg, the purchase declarations are signed by German and Portuguese clients, and the catalogues filed are in German, English and Portuguese, showing prices in euros.
- Taking into account all of the evidence, the Board concludes that it is sufficient to establish that the contested EUTM has been put to ‘genuine use in the Union’ within the meaning of Article 51(1)(a) EUTMR.
On the time of use
- The contested EUTM had been registered for more than five years at the date of filing the request for revocation on 6 June 2014. The relevant period for assessing the contested EUTM’s genuine use is thus between 6 June 2009 and 5 June 2014 inclusive.
- The frequency and regularity of use during the relevant period is demonstrated by the invoices (which are dated between 2007 and 2013), as well as the clients’ confirmations attesting to the purchase of ‘Vegas’ items from 2007 to 2012. The documents also include a catalogue dated 2012 and price lists of 2008 and 2011. The documents fall within the relevant period of time and those dated before also serve to strengthen the verification of the mark’s regular and frequent use in time. The evidence is therefore sufficient to consider that the requirement with regard to the time of use is met.
- This conclusion is not offset by the cancellation applicant’s arguments that several documents (images and some of the catalogues) are undated and must therefore be ignored. They fulfil the purpose of showing how the mark at issue was displayed on the goods, as well as the range of goods in respect of which it was used, and therefore must be taken into account in the evidence’s overall evaluation (13/02/2015, T-287/13, HUSKY, EU:T:2015:99, § 67-68).
On the extent of use
- The documents submitted show that the EUTM has been used on the relevant market, as they include sufficient information regarding the sales, their regularity and frequency.
- The invoices dated from 2007 to 2013 show sales of jewellery under the ‘Vegas’ mark to an amount of approx. EUR 55 000 and of watches to an amount of approx. EUR 2 000. In reply to the cancellation applicant’s objection that these amounts are not sufficient it must be noted, firstly, that these items belong to the lower price range of jewellery and watches (e.g. watches are priced at approx. EUR 70; the prices of rings range from EUR 14 to 80, etc.). Further, the invoices are frequently addressed to natural persons and reflect the sale of single watches or jewellery items together with cosmetic products, which justifies the reduced quantity of sold items, reflected on each one of them.
- As correctly stated by the Cancellation Division, the volume of sales is also compensated by the regularity and frequency of the transactions. The invoices show examples of sales from 2007 to 2013 – the fact that their numbering is spaced out confirms that they were submitted merely by way of illustration. They therefore do not represent the total amount of actual sales of goods bearing the mark, but show a coherent and chronological insight to the sales (27/02/2015, T41/12, L’Wren Scott, EU:T:2015:125, § 41-42). The time span of seven years covered by the invoices shows a consistency of the sales by the EUTM proprietor. Further, the fact that the invoices were issued to different persons, shows that mark was used publicly and externally (27/09/2007, T418/03, La Mer, EU:T:2007:299, § 87).
- Taking into account the period and frequency of use, the commercial volume shown with the evidence submitted cannot be considered as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark (11/03/2003, C40/01, Minimax, EU:C:2003:145, § 35-36). In this connection it must also be recalled that, as confirmed by the case’law, the requirement of genuine use does not seek 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 (30/01/2015, T-278/13, Now, EU:T:2015:57, § 45).
- The above considerations allow the Board to conclude that the overall appreciation of the evidence, in particular, the invoices (showing regular sales of the EUTM proprietor’s products), together with the customers’ declarations and catalogues, is sufficient to show that the use of the contested mark serves a real commercial purpose (11/05/2006, C416/04 P, Vitafruit, EU:C:2006:310, § 72; 27/02/2015, T41/12, L’Wren Scott, EU:T:2015:125, § 40).
On the nature of use
- The contested EUTM is the word mark ‘Vegas’. The images of the jewellery items and watches submitted by the EUTM proprietor and the trade mark appearing on the catalogues shows the use of this sign in slightly stylized characters in script format. On the catalogues, the mark is sometimes accompanied by the expression ‘Art of Design’, mostly as follows:
- Genuine use can result from the use in a form differing in elements which do not alter the distinctive character of the mark in the form it was registered (Article 15(1)(a) EUTMR). In particular, the use of word marks in a graphic form in terms of colours and/or font, does not in principle have any significant impact on their distinctiveness (21/11/2013, T524/12, RECARO, EU:T:2013:604, § 42). Neither does the addition of descriptive or weak word elements affect the distinctive character of the dominant verbal element (23/09/2015, T426/13, AINHOA, EU:T:2015:669, § 31).
- In this case, the stylized representation of the mark ‘Vegas’ on the watches and jewellery items does not alter the distinctive character of the EUTM in the form it was registered. It is thus in compliance with Article 15(1)(a) EUTMR, which allows its proprietor in the commercial exploitation of the sign to make variations which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (21/06/2012, T514/10, Fruit, EU:T:2012:316, § 28).
- In view of the documents analysed, the Board concludes that, as found in the contested decision, the contested EUTM has been effectively used for ‘jewellery’ and for ‘watches’. The cancellation applicant’s argument that the evidence only shows ‘bijouterie’ is not further explained or reasoned. The term ‘bijouterie’ is defined in the Collins online dictionary (https://www.collinsdictionary.com/dictionary/english/bijouterie) as ‘jewellery esteemed for the delicacy of the work rather than the value of the materials’ or ‘a collection of such jewellery’. It is therefore clear that ‘bijouterie’ is included in the definition of ‘jewellery’, which according to the same dictionary, is understood as ‘objects that are worn for personal adornment, such as bracelets, rings, necklaces, etc, considered collectively’. The cancellation applicant’s argument must therefore be dismissed.
- Further, the cancellation applicant’s argument that the use was not carried out by the EUTM proprietor must also be rejected. The EUTM proprietor in this case is a natural person who has shown that he is the managing director of the two firms appearing on the catalogues and invoices. He appears in the extract of the Commercial Registry of Darmstadt, Germany, relating to the company Vegas Cosmetics GmbH and in the copy of the business registration of the same company, which indicates ‘Vegastrade’ as the previous business name. Moreover, it is noted that the EUTM proprietor’s address coincides with that of both companies. It may therefore be concluded that the use of the contested EUTM as shown on the submitted documents can be deemed to constitute use by the EUTM proprietor, in accordance with Article 15(2) EUTMR.
- In light of all the above, it follows that the appeal must be dismissed.
- Since the cancellation applicant is the losing party within the meaning of Article 85(1) EUTMR, it must bear the EUTM proprietor’s representation costs in the appeal proceedings of the amount of EUR 550, as specified in Rule 94(7)(d) CTMIR.
On those grounds,
- Dismisses the appeal;
- Orders the cancellation applicant to reimburse EUR 550 to the EUTM proprietor.
Th. M. Margellos
Ph. von Kapff
12/01/2017, R 301/2016-1, Vegas