CARTIER mark cancelled by EUIPO
- Applicant claimed that Cartier’s EU trademark had not been subject to genuine use for at least five years
- Cartier did not submit proof or observations in reply to the application
- EUIPO Cancellation Division therefore revoked its rights to the mark in their entirety
Following a request for revocation filed by Czech company el nino parfum, sro on April 11 2017, Cartier International AG’s EU Trademark 2433415 has been cancelled in its entirety by the EU Intellectual Property Office (EUIPO) Cancellation Division on October 30 2017.
Cartier’s trademark was registered on March 30 2004 for a variety of goods and services in Class 16 (eg, books and newspapers) and services in Classes 35 (eg, advertising and data research), 36 (direct electronic payment transactions using credit cards), 38 (eg, telecommunications and direct connections for the exchange of information between computer users), 39 (distribution and delivery of goods ordered by electronic means), 41 (eg, publication of texts, books and journals, as well as organisation of fashion shows) and 42 (eg, computer data recovery services and computer hardware consultancy services).
The applicant claimed that the EU trademark had not been subject to genuine use within the European Union in connection with these goods and services for a continuous period of at least five years before the date of the application. Several case law citations were included in the application, such as Kremezin (Case T-487/08) which highlighted that the rationale behind Article 18 of the EU Trademark Regulation was “to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from active functioning of the mark on the market”. Further, La Mer (Case C-259/02) established several factors with which to assess whether the use of a given trademark was sufficient to preserve or create market share for certain goods or services, on a case-by-case basis. Accordingly, under Article 58(1)(a) of the EU Trademark Regulation, the applicant requested that the EUIPO revoke Cartier’s rights as proprietor of the EU trademark.
The application was admitted and on April 24 2017 Cartier was asked to submit proof of genuine use of the EU trademark or otherwise submit any observations in reply to the application within three months, failing which the trademark would be revoked (under Article 19(1)). This burden of proof was shifted onto Cartier as it would be unreasonable, if not impossible, for the applicant to prove non-use of the trademark.
However, Cartier did not submit proof or observations in reply to the application within the time limit, and therefore its rights over the trademark were revoked in their entirety and declared as not having any effect as from the date the revocation request was filed.
It is uncertain as to why Cartier abstained from responding to this request, thereby allowing the trademark to fall – in any case, the revocation might have less of an impact on Cartier than it first appeared.
The status, reputation and notoriety of Cartier trademarks may allow it to claim that CARTIER is a well-known mark within the European Union. This which would then allow Cartier to oppose the registration or use of any later identical or similar marks related to any goods and/or services, so long as Cartier can show that the later marks could possibly take unfair advantage of, or be detrimental to, the distinctive character and repute of the CARTIER mark.
Therefore, regardless of having lost proprietorship of the EU trademark, Cartier may still be able to maintain exclusivity over the use of the CARTIER mark within the European Union for a variety of goods and services, including those covered by the mark.
Martim Taborda Barata, PLMJ, Lisbon
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