CANCELLATION No 12214 C (INVALIDITY)
Manufacture des Montres Vulcain S.A., Chemin des Tourelles 4, 2400 Le Locle, Switzerland (applicant), represented by Kurz Pfitzer Wolf & Partner Rechtsanwälte mbB, Königstr. 40, 70173 Stuttgart, Germany (professional representative)
a g a i n s t
Sheva Lanzarote SL, C/ Guincho 11, 35560 Tinajo, Spain (EUTM proprietor), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).
On 16/06/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is partially upheld.
2. European Union trade mark No 10 861 797 is declared invalid for some of the contested goods and services, namely:
Class 9: Clocks (time recording devices); Time clocks (time recording devices); Punch clocks.
Class 14: Horological and chronometric instruments; Watch hands; Casings for clocks and watches; Presentation boxes for horological articles; Watch straps, of metal, leather or plastic; Parts for clockworks; Digital clocks.
Class 35: Retailing, in shops or via the Internet, and wholesaling, of watches.
3. The European Union trade mark remains registered for all the remaining goods and services, namely:
Class 9: Egg timers (sand glasses); Automatic time switches.
Class 35: Retailing, in shops or via the Internet, and wholesaling, of clocks and parts, fittings and accessories therefor and parts, fittings and accessories for watches, import and export, business representation and sole agencies relating to watches and clocks and parts, fittings and accessories therefor.
4. Each party bears its own costs.
The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 10 861 797. The application is based on international trade mark registration No 769 708 designating the European Union. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The case for the applicant
The applicant bases its case on the fact that the marks at issue are similar on all levels and the goods and services are either highly similar or identical. The applicant mentions the concept of ‘volcano’ which is conveyed by both marks, adding weight to the likelihood that consumers will confuse the marks. Furthermore, the applicant claims that the earlier mark has a particularly high degree of distinctiveness owing to the fact that ‘VULCAIN’ is a trade mark which has been used for watches since 1858 and is known for its ‘presidents’ watch series’ worn by several US presidents. Evidence is filed to support these assertions.
The applicant also files evidence of use of the earlier mark in response to a request for proof of use made by the EUTM proprietor. This evidence will be listed and analysed below.
The case for the EUTM proprietor
The EUTM proprietor refutes the applicant’s claims that the signs are similar, stating that more emphasis needs to be placed on the figurative elements contained in the marks. Furthermore, the proprietor adds that the earlier mark ‘VULCAIN’ is meaningless, while the contested mark is the word for ‘volcano’ in Spanish. Therefore, the signs are conceptually dissimilar.
The EUTM proprietor requests that the applicant prove use of its earlier mark.
PROOF OF USE
According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.
The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.
The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.
The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.
The application for a declaration of invalidity was filed on 10/12/2015. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 10/12/2010 to 09/12/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the application is based, namely:
Class 14: Watches and watch parts; all other articles used for indicating time, and parts of said articles.
According to Rule 40(6) EUTMIR in conjunction with Rule 22(3) EUTMIR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.
On 01/12/2016, the applicant was given three months to submit proof of use.
On 06/03/2017, the applicant submitted evidence as proof of use, within the time limit.
As the applicant requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
- Screenshots of the products offered by the applicant on its website http://www.vulcain-watches.ch/de/collection/all, dated in February 2017. Further screenshots from the website of the applicant with examples of distributors in Europe.
- Invoices: a selection of invoices is filed covering the years 2012-2016 for the sales of watches in Germany, Belgium, France, the Czech Republic, and Italy. Monetary amounts cannot be mentioned for reasons of confidentiality. They are, however, very considerable. The following sign appears in the header of all the invoices:
Products mentioned in the itemisation of the invoices are, inter alia, ‘Aviator Dual Time’, ‘President’s Watch’, ‘Nautical Heritage’.
- Tables of turnover: for the years 2013-2015 for the sale of watches in the Euro zone, corresponding to Germany, Austria, Belgium, Spain, France, Italy, Lithuania, the Czech Republic, Romania and the United Kingdom. Exact quantities cannot be given for reasons of confidentiality. However, although the amount of watches sold is not especially high, in monetary terms the sales are very considerable. This is due to the fact that the unit price of one of the applicant’s watches is high since the watches are luxury items.
- A selection of approximately 14 advertisements appearing in various magazines published between 2012 and 2016. The publications are mainly French and German. Some examples of these advertisements are as follows: