Revocation for non-use of Baccarat’s EUTM: When proving genuine use is crystal clear

It is not uncommon for well-established companies with a business firmly rooted in a given product category to desire expansion. For example, several companies that are primarily engaged in the production of apparel have extended their product lines to encompass home furnishings (and vice versa) (e.g. here or here). This Kat was surprised to find a recent decision issued by the EUIPO Cancellation Division concerning the French house Baccarat, renowned for its crystal creations. This case concerned an application for revocation against one of Baccarat's EUTMs designating footwear and textiles.

A crystal Kat

Facts

On 29 January, Baccarat registered the EU figurative mark 4807582, designating various goods in classes 24, 25 and 26, notably “Textiles, furnishing fabrics, cotton fabrics, wool, silk, linen”, “Clothing, clothing for children, footwear and boots, headgear” and “Ornaments for clothing and footwear”. On 14 August 2023, Lidia Bersani filed an application for revocation based on article 58(1)(a) EUTMR.

Analysis

The Cancellation Division first recalled that, under Article 58(1)(a) EUTMR, ‘the rights of the proprietor of the EUTM will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union for the goods or services for which it is registered, and there are no proper reasons for non-use’. Relying on a combined reading of Articles 19(1) and 10(3) EUTMDR, the Division underlined that ‘the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered’.

Baccarat's EUTM

That said, the Division proceeded by analysing the evidence of use for each category of goods designated by the EUTM. It should be remembered, as the Division recalled, that such burden of proof lies with the EUTM proprietor [IPKat here].

Period of use

In the present case, the EUTM was registered on 24 January 2007. The revocation request was filed on 14 August 2023. Therefore, the Cancellation Division held that Baccarat had to prove genuine use of the contested EUTM between 14 August 2018 and 13 August 2023.

Assessment of use

As the Division recalled, ‘genuine use of a trade mark must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned’. Furthermore, the evidence must show that the contested EUTM has been used in the European Union [IPKat on genuine use here and here].

Extent of use

The Cancellation Division underlined that several factors have to be taken into account, such as ‘the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use’. This is in line with T‑334/01, Hipoviton, § 35.

In the present case, the Cancellation Division found that evidence submitted by Baccarat only related to scarves and footwear. No proof of use was provided for the remaining goods in Classes 24, 25 and 26. The assessment was therefore limited to scarves and footwear.

Regarding scarves in Class 25, Baccarat submitted several pieces of evidence, which however failed at proving any genuine use. As regards a table containing sales figures in the EU between 2018 and 2023, they were not breakdown precisely for the relevant period. The total number of articles sold was also too low, in particular having regard to the size and characteristics of the relevant market and the nature of the goods (i.e., between 129 and 205 units). Baccarat also submitted two invoices for a total of two articles and one internal purchase order for three articles. Those amount to sporadic sales for the Division. The remaining evidence consisted of third parties’ websites offering for sale ‘BACCARAT’ scarves. On this point, the Division held that ‘the mere fact that a product appears on a website does not show that the product was actually ‘sold’’, as understood in T 583/19, Frigidaire, § 51-52.

Regarding shoes in Class 25, the Cancellation Division held that ‘no information has been provided concerning the extent of use as no sales figures, invoices, purchase orders or other accounting documents has been submitted’. Even though evidence showed that a capsule collection of 15 pairs of shoes made with a crystal heel was released, such quantity of goods was deemed clearly insufficient.

In the end, Baccarat failed at proving genuine use of its contested EUTM. The Cancellation Division upheld Lidia Bersani’s application for revocation.

Thoughts

The decision itself is relatively straightforward, and the solution is not unexpected. Nevertheless, it is still a matter of some interest. Demonstrating genuine use of a trade mark is a challenging endeavour, as Bacccarat saw. The primary obstacle is largely a matter of rigour. In this regard, it is crucial to adhere to the insights gleaned from case law (e.g., C‑40/01, Minimax). Meticulous selection of evidence is of paramount importance, as the Office will rely exclusively on what is presented.

Overall, the trade mark holder is required to ensure that the indications and evidence to be produced in order to prove use must relate to the place, time, extent and nature of the use made of the earlier trade mark for the goods and services in question. These criteria are cumulative in nature. It is incumbent upon the proprietor to ensure that each piece of evidence meets the aforementioned criteria, which was not the case here for Baccarat

Furthermore, this decision indicates that in the luxury goods sector, sales figures that are too low could be classified as minimal and such as merely aimed at artificially preserving a trade mark. That said, it would be premature to draw any hasty conclusions from this statement alone. Indeed, it is possible to compensate for this weakness by combining evidence with other forms of evidence (Baccarat failed here). The Office does not require commercial success, which would have the effect of limiting the number of valid demonstrations; minimal use could be sufficient. There is therefore no quantitative threshold for use. The only requirement is that the proof of use serves a real commercial purpose. A good indication of acceptable evidence can be found in the EUIPO guidelines, which provide several illustrative examples of insufficient or sufficient use.