THE CASE
Cooperation Panda, Corporation, Tsarigradsko Shose Blvd 139, 1784 Sofia, Bulgaria (applicant), represented by IP Consulting Ltd.,(European trademark attorneys) filed a request for revocation of EUTM (European Union trademark) No 9 496 911 (figurative mark) before the EUIPO (European Union Intellectual Property Office).
The request is directed against all the goods covered by the EUTM (European Union trademark), namely: 9,10,16.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argued that the European Union trademark proprietor had not put its EUTM (European Union trademark) to genuine use for a continuous period of five years in relation to all the goods for which it was registered.
The European Union trademark proprietor submitted evidence of use. It stated that, until September 2017, the European Union trademark proprietor’s company name had been Karl Storz GmbH & Co. KG and that the evidence of use included documents dated before and after the relevant period to show the continuous use of the mark.
ASSESSMENT OF GENUINE USE – FACTORS
General considerations
The indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the trade mark for the relevant goods and/or services.
These requirements for proof of use are cumulative. This means that the European Union trademark proprietor is obliged not only to indicate but also to prove each of these requirements.
Time of use
The evidence must show genuine use of the contested EUTM (European Union trademark) within the relevant period.
Although part of the evidence is dated before or after the relevant period, there is sufficient evidence dated within the relevant period. Therefore, the evidence of use filed by the European Union trademark proprietor contains sufficient indications concerning the time of use.
Place of use
The evidence must show that the contested European Union trademark has been genuinely used in the EU.
The documents show that the p§lace of use is Germany.
Taking into account the territorial extent of Germany, the fact that the invoices were sent to clients located in different German cities, the Cancellation Division considers that use in Germany is sufficient to maintain or create a market share in the European Union.
Therefore, the evidence relates to the relevant territory.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
the evidence submitted by the European Union trademark proprietor is not particularly exhaustive and concerns only one Member State, the Cancellation Division considers that it does reach the minimum level necessary to establish genuine use of the contested trade mark. The volume of sales, in relation to the period of use, is not so low that it might be concluded the use is merely token, minimal or notional for the sole purpose of preserving the rights conferred by the mark.
Nature of use: use as a trade mark
Nature of use requires, inter alia, that the contested EUTM (European Union trademark) 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.
The documents clearly show that the contested EUTM (European Union trademark) has been used as a trade mark to identify the goods. The sign has been used in the invoices, in the leaflets and on the goods themselves to indicate their commercial origin.
Nature of use: use of the mark as registered
The contested mark is the figurative sign registered in black and
white.
The evidence shows that the sign has been used as 
Since the only difference between the signs relates to the blue colour of the background, the contrast of shades is respected and the distinctive verbal element ‘OFFICE1’ coincides. The evidence does show use of the sign in a form essentially the same as that registered.
Therefore, the evidence does show use of the sign in a form essentially the same as that registered.
Use in relation to the registered goods
The contested EUTM (European Union trademark) is registered for the goods in Classes 9, 10 and 16. However, the evidence submitted by the European Union trademark proprietor does not show genuine use of the trade mark for all the goods for which it is registered.
Conclusion
It follows from the above that the European Union trademark proprietor has not proven genuine use of the European Union trade mark for the following goods, for which it must, therefore, be revoked – Classes 9, 10, 16.
