By decision of May 27, 2013, the Cancellation Division of OHIM decided over the revocation of the Community trademark “Capri” (below displayed). In such decision the Office reasons about the extent of the proof of use needed to avoid revocation.
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Article 51(1)(a) of the EC Regulation no. 207/2009 provides that a Community trademark shall be revoked if, within a period of five years, (i) the trademark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and (ii) there are no proper reasons for non-use.
The Cancellation Division, in assessing the proof of use offered by the trademark owner, recalled the EU case law on the “partial use of the trademark”.
Based on this, the proprietor of a trademark would be exempt from the proof of use in relation to goods which, “although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner” (Judgement of the European Court of First Instance of 14 July 2005 in case T-126/03, 'Aladin').
In the case at stake, the trademark “Capri” was recorded for certain goods falling in class 3 (soaps, perfumery, essential oils, cosmetics, hair lotions, shampoo, toothpaste), class 18 (leather and imitations of leather, and goods made of these materials not included in other classes, skins and hides, bags, handbags, purses, wallets, trunks and traveling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery) and class 25 (clothing, underwear and outwear, shoes and leather goods).
The trademark proprietor, anyhow, succeeded in proving its genuine use of the trademark only for outwear (class 25). No evidence of the use of the trademark for goods in classes 3, 18 and for others falling in class 25 (underwear, shoes and leather goods) was provided.
The Cancellation Division therefore declared that the Capri trademark should be revoked in relation to all products for which the proof of use was not provided, stating that the legal principle of the partial use of the trademark can not be extended, as in this case, to products that belong to categories which, though inter-related (such as the case of goods in class 25), are still particularly precise and defined and capable of being viewed independently.