Judgments nº T-336/15 of The General Court, March 22, 2017

• Resolution Date: March 22, 2017
• Issuing Organization: The General Court
• Decision Number: T-336/15

(EU trade mark - Revocation proceedings - EU word mark The Specials - Genuine use - Article 51(1)(a) of Regulation (EC) No 207/2009 - Consent of the proprietor of the trade mark - Article 15(2) of Regulation No 207/2009) In Case T-336/15,

Windrush Aka LLP, established in London (United Kingdom), represented by S. Malynicz QC and S. Britton, Solicitor,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carillo, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Jerry Dammers, residing in London, represented by C. Fehler, Solicitor, H. Cuddigan and B. Brandreth, Barristers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 18 March 2015 (Case R 1412/2014-1), relating to revocation proceedings between Windrush Aka and Mr Dammers,

THE GENERAL COURT (First Chamber),

composed of I. Pelikánová, President, V. Valančius (Rapporteur) and U. Öberg, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Court Registry on 25 June 2015,

having regard to the response of EUIPO lodged at the Court Registry on 20 November 2015,

having regard to the response of the intervener lodged at the Court Registry on 20 November 2015,

further to the hearing on 6 December 2016,

gives the following

Judgment

Background to the dispute

1 On 27 July 2005, the intervener, Mr Jerry Dammers, obtained the registration, under the number 3725082, of the EU word mark The Specials from the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2 The goods and services in respect of which the abovementioned EU trade mark was registered were in Classes 9, 16, 25 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded, for each of those classes, to the following description:

- Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus’;

- Class 16: ‘Packaging of CD’s, audiotapes and DVDs; photographs, printed matter and signboards being covers, booklets and labels for CD’s, audiotapes and DVDs; photographs, printed matter and signboards for the purpose of producing posters’;

- Class 25: ‘Clothing, footwear, headgear’;

- Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.

3 On 30 October 2012, the applicant, Windrush Aka LLP, filed an application for revocation of the abovementioned EU trade mark, on the basis of Article 51(1)(a) of Regulation No 207/2009, in respect of all of the goods and services referred to in paragraph 2 above, on the ground of lack of genuine use of that mark.

4 By decision of 17 March 2014 the Cancellation Division partially upheld the application for revocation. It revoked the contested mark in respect of the goods and services referred to in paragraph 2 above, with the exception of ‘compact discs [audio-video]’ and ‘electronic publications [downloadable]’ in Class 9, for which it maintained the validity of the registration of the contested mark.

5 On 19 May 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division in so far as that division had maintained the validity of the registration of the contested mark in respect of the goods referred to in paragraph 4 above.

6 By decision of 18 March 2015 (‘the contested decision’), the First Board of Appeal of EUIPO upheld the appeal in part. It annulled the decision of the Cancellation Division in so far as that division had maintained the validity of the registration of the contested mark in respect of ‘electronic publications [downloadable]’ in Class 9 and revoked that mark in respect of those goods. By contrast, it confirmed the validity of the contested mark in respect of ‘compact discs [audio-video]’ in Class 9, on the ground that that mark had been used by a third party with the intervener’s consent and had been put to genuine use in connection with those goods.

Forms of order sought

7 The applicant claims that the Court should:

- annul the contested decision;

- order EUIPO to pay the costs.

8 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

9 In support of its action, the applicant relies on a single plea in law alleging, in essence, infringement of Article 15(2) of Regulation No 207/2009 inasmuch as the Board of Appeal erred in finding that the intervener had, for the purposes of that provision, validly consented to the use of the contested mark by a third party.

10 It must be borne in mind that Article 51(1)(a) of Regulation No 207/2009 provides, in essence, that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

11 In that regard, under Article 15(2) of Regulation No 207/2009, use of the trade mark with the consent of the proprietor is to be deemed to constitute use by the proprietor.

12 It must be pointed out at the outset that, in the application, the applicant did not dispute the Board of Appeal’s assessment that the contested mark had been put to genuine use in relation to ‘compact discs [audio-video]’ in Class 9.

13 However, at the hearing, it maintained that the amount of the royalties paid to the...