HÖCKER

MARKEN- & MEDIENRECHT

HÖCKER Rechtsanwälte - Friesenplatz 1 50672 Köln

EUIPO

Avenida de Europa, 4
03008 Alicante
Spanien

Via User Area

Revocation number: 000038560 C

Contested trade mark: W01004846 (ERASMUS)
Owner: The European Union

Our ref.: 1185/19 G10

Cologne, 12.10.2020

Dear Ms. Miehle,

Thank you for the extension of the time limit as granted in your notifi-
cation of 14 August 2020.

The owner of the trade mark “ERASMUS” (W01004846) — the Euro-
pean Union — did not manage to provide sufficient proof of genuine
use of the contested sign. Indeed, the owner did not deliver any indi-
cation of genuine use at all.

Due to the nature of the matter, the owner will not be able to proof
genuine use. The sign “ERASMUS’ is not even used as a trademark:

- The mark is not used in the course of trade.
- The mark is not used in the context of commercial activity with
a view to economic advantage.

The owner is not and must not be active in commerce. No products
are sold, and no services are offered. There is no objective to achieve
any economic advantage. The Erasmus Programme is essentially
perceived as a EU student exchange programme on a non-profit ba-
sis. Hence, the sign “ERASMUS’ is not “used” in accordance with the
essential function of a trademark.

Prof. Dr. Ralf Höcker, LL.M. (London)
Rechtsanwalt

Dr, Carsten Brennecke
Rechtsanwalt

Dr. Frauke Schmid-Petersen
Rechtsanwältin

Dr. Ruben Engel

Rechtsanwalt

Dr. Marcel Leeser
Rechtsanwalt

Dr. Johannes Gräbig
Rechtsanwalt

Dr. Christian Conrad
Rechtsanwalt

Dr. Lucas Brost
Rechtsanwalt

Dr, Jörn Claßen
Rechtsanwalt

Dr. Christoph Schmischke
Rechtsanwalt

Lea C. Endres
Rechtsanwältin

Christoph Jarno Burghoff
Rechtsanwalt

Daniel Wolsing, LL.M. (Barcelona)
Rechtsanwalt

Dr. Sarah Gronemeyer, LL.M.
Rechtsanwältin

Moritz Regenstein, LL.M. (Exeter)
Rechtsanwalt

Anna Lina Saage, LL.M.
Rechtsanwältin

Dr. Hans-Georg Maaßen
Rechtsanwalt
Of Counsel

HÖCKER Rechtsanwälte PartGmbB
Partnerschaftsregister AG Essen Nr. 1797

Friesenplatz 1

50672 Köln

T: +49 (0)221 933 19 10
F: +49 (0)221 933 19 110
contact@hoecker.eu
www.hoecker.eu

Volksbank Köln Bonn eG

IBAN: DEO2 3806 0186 4512 9690 17
BIC: GENODED1BRS

Ust-IdNr. DE 253829013

USt-Nr. 215/5070/2883

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The owner cites two decisions of the EUIPO regarding the use of the contested trade mark. But
both decisions do not concern the relevant question if the owner is able to proof genuine use. It
seems to be the first time that the trade mark is attacked due to a lack of genuine use.

l.
Grounds for revocation

Art. 58 para. 1 lit. a EUTMR stipulates that a trademark (following: EUTM) shall be revoked, if
the mark has not been put to genuine use within a continuous period of five years in the EU in

connection with the goods or services it seeks protection for, as long as there are no proper rea-
sons for non-use.

The relevant grace period has ended in early 2014.

Noting the extensive list of goods/services, it is obvious that the mark is not used for all goods
and services it seeks protection for.

Art. 18 EUTMR sets out details regarding the meaning of genuine use of a sign in commerce.

1. Place of use

A EUTM must be used in the territory of the European Union. However, the territorial borders of
the Member States are disregarded during the assessment of genuine use. Key is the use of the
sign in relevant markets in the EU.

If a sign is put to genuine use in the EU territorially spoken, is subject to a case by case exami-
nation.

2. Time of use

The relevant EUTM becomes susceptible to revocation if it has not been used within a continu-
ous period of five years. The actual period for which genuine use must be established can be
computed backwards from the filing of the application for revocation.

The application for revocation was filed on 30 September 2019. Hence, the relevant period is
from 30 September 2014 to 29 September 2019.

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The owner had to provide the Office with proof of genuine use within in this period. Evidence of
genuine use preceding this period cannot be considered. This “evidence” may merely constitute
conclusive indirect proof in relation to the relevant period.

 

3. Extent of use

For genuine use as set out in Art. 58 and Art. 18 EUTMR, the sign must be used as a trade-
mark.

a. General requirements

The essential function of a mark is to guarantee the identity of the origin of goods or services to
the consumer or end user by enabling the latter, without any possibility of confusion, to distin-
guish the product or service from others that have another origin. Genuine use means actual
use. Hence, mere token use is not considered genuine.

Assessing the use of a sign as a trademark, the perspective of the target public is indicative.
Therefore, classifying a sign as used as a trademark depends on how the consumer or end user
of the relevant goods or services perceives the mark when confronted with it.

There is "genuine use" of a trade mark where the mark is used in accordance with its essential
function, which is to guarantee the identity of the origin of the goods or services for which it is
registered, in order to create or preserve an outlet for those goods or services; genuine use does
not include token use for the sole purpose of preserving the rights conferred by the mark. When
assessing whether use of the trade mark is genuine, regard must be had to all the facts and cir-
cumstances relevant to establishing whether the commercial exploitation of the mark is real,
particularly whether such use is viewed as warranted in the economic sector concerned
to maintain or create a share in the market for the goods or services protected by the
mark, the nature of those goods or services, the characteristics of the market and the scale and
frequency of use ofthe mark.

ECJ jdmt 11. March 2003, C-40/01, para 43 - Ansul

So, the sign must be used in the course of trade. This is one part of the essential function
of a mark. The proprietor of the mark needs to have the objective to create and/or preserve an
outlet for the goods and services the mark seeks protection for.

The use of a mark constitutes use in the course of trade where it occurs in the context of
commercial activity with a view to economic advantage and not as a private matter.

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ECJ, jdmt., 23 March 2010 - C-236/08 to C-238/08 [Google France SARL e. a. v. Louis Vuitton
Malletier SA, e. a.], para. 50

The use of a sign for public sector activities does not constitute use in the course of trade if there
is no explicit connection to commercial activities adjacent to the private sector.

Ströbele/Hacker/Thiering, Markengesetz, 12 ed. 2018, $ 14 para. 65

Regarding the Galileo satellite programme by the EU Commission the ECJ decided in favour of
a rather strong connection to commercial activities to affirm genuine use of a sign. The Court
decided that the initiation of financial support for the research/development phase as well as es-
tablishing the satellite project and the creation of the appropriate framework for the subsequent
economic use are not sufficient to affirm use in the course of trade.

ECJ, dec. of 20 March 2007, C-325/06 P

A corresponding German “Galileo decision” by a Higher Regional Court in Germany (OLG Mün-
chen) did not find any commercial connection as well and stated the following:

“Claims according to Art. 9 esc. 1 lit. b EUTMR could only come into consideration if the
first defendant would use the signs as a trademark in the course of trade. Use in the
course of trade occurs if the use is made in connection with a commercial activity
aimed at an economic advantage (CJEU, jdmt. of 10 May 2006 - T- 279/03 para. 114 -
Galileo). The use of a denomination for a research project that has not yet led to
marketable goods or services is not used in the course of trade (cf. CJEU, jdmt. of
10 May 2006 - T- 27903 para. 117 - Galileo; OLG Hamburg, GRUR-RR 2007, 309 [310]
- INMAS; BGH GRUR 1991, 607 [608] - VISPER; Ströbele / Hacker, MarkenG, 11th ed,
sec. 14 para. 49). The Galileo satellite navigation project is still being established. The
first defendant, as well as the European Commission, does not offer marketable products
under the disputed signs. In any case, it has not yet used the symbols to achieve an
economic advantage.

Insofar as the plaintiffs refer to the use of the signs in the K 10 set of exhibits, the first de-
fendant is advertising the Galileo project and describes the Galileo control centre as the
centrepiece [“Herzstück”] of the Galileo project. However, goods or services are not
offered under the signs. The same applies to the use shown in exhibits K 12, K 14 or
K 23. Job offers or the possibility of tours during an open day do not represent of-
fers of market-ready products. In the presentation of the Gate-projects (exhibit K 14)
the first defendant also did not use the signs for marketable goods or services. The first

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defendant, like the European Commission, has only used the signs to denominate the
Galileo research project and thus not as a trademark in the course of trade.

L...]

The second defendant uses the disputed signs to inform the European Commission on
the Galileo satellite navigation project and to inform that it - the second defendant — op-
erates the Galileo control centre, from which the Galileo project satellites are operated
(cf. set of exhibits K 10 and K 28 with regard to the sign "Galileo Control Center" as well).
However, this does not imply that the disputed signs were used as trademarks.
From the perception of the relevant public the defendant does not use those signs
to distinguish its goods and services from the goods and services of other com-
panies (cf. Ströbele / Hacker, MarkenG, 11th ed. , sec. 14 para. 106). The Galileo control
centre is part of the Galileo research project. No market-ready products are currently
emerging from this project.”

OLG Munich, jdmt. of 19 November 2015, 29 U 1136/15 = GRUR-RS 2015, 20259 para. 26 f.
and 31
[emphasis added; German to English translation by the author]

Reviewing this decision, it is obvious, that a sign needs to be used “fo achieve an economic
advantage” for the sign to become a trademark. The contested sign cannot be used to strive for
an economic advantage due to the charitable nature of the programme. Moreover, the EU (=
owner) as such is not commercially active.

The Guidelines for Examination of EUTM, Part C, Section 6, 2.6.1 confirm the requirement of a
commercial connection as well. They state the following with regards to the extent of use:

“In this regard, it has to be evaluated whether, in view of ihe market situation in the par-
ticular industry or trade concerned, it can be deduced from the material submitted that
the owner has seriously tried to acquire a commercial position in the relevant market.
The trade mark has to be used for goods or services already marketed or about to
be marketed and for which preparations by the undertaking to secure customers
are under way, particularly in the form of advertising campaigns (11/03/2003, C-
40/01, Minimax, EU:C:2003:145, $ 37). This does not mean that the opponent has to re-
veal the total volume of sales or turnover figures.

Concerning the extent of use made of the earlier mark, account must be taken, in particu-
lar, ofthe commercial volume of all the acts of use on the one hand and the duration of
the period in which those acts of use occurred, as well as the frequency ofthose acts, on
the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, $ 35).”

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MARKEN- & MEDIENRECHT

[emphasis added]

b. Promoting and awarding scholarships is no genuine use

The owner is no commercial competitor. He is not active in any industry or trade. There is no ob-
jective to “acquire a commercial position”. Indeed, it is the other way around. The Erasmus pro-

gramme is a charitable programme or in other words: a non-commercial programme.

Hence, the sign is not used in the course of trade. The owner does not “sell” any goods or ser-
vices. It merely organizes educational scholarships which are financed by donations and EU
funds. There is no quid pro quo between the owner and the scholarship holders. The owner
does not need to acquire a commercial position in any market. Therefore, there are no competi-
tors against which, the owner would need to defend its sign.

The objective of the programme is purely political, educational and to promote the understanding
between nations.

The EU regulation No 1288/2013 confirms this point of view:

“The Programme should include a strong international dimension, particularly as regards
higher education, in order not only to enhance the quality of European higher educa-
tion in pursuit ofthe broader ET 2020 objectives and the attractiveness of the Union as a
study destination, but also to promote understanding between people and to contrib-
ute to the sustainable development of higher education in partner countries, as well
as their broader socio-economic development, inter alia by stimulating "brain circula-
tion" through mobility actions with partner-country nationals. To that end, funding should
be made available from the Development Cooperation Instrument (DCI), the European
Neighbourhood Instrument (ENI), the Instrument for Pre-accession Assistance (IPA) and
the Partnership Instrument for cooperation with third countries (Pl). Funds might also be
made available from the European Development Fund (EDF) in accordance with the pro-
cedures governing it. The provisions of this Regulation should apply to the use of those
funds, while ensuring conformity with the respective Regulations establishing those in-
struments and that fund.”

...]

The Programme is designed to have a positive and sustainable impact on education,
training, youth and sport policies and practices. That systemic impact should be
achieved through the various actions and activities envisaged in the Programme, which

(x

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aim at fostering changes at institutional level and which lead, where appropriate, to inno-
vation at system level. Individual projects for which financial support is sought from
the Programme are not required to have any systemic impact as such. It is the cu-
mulative result of those projects that should contribute to the attainment of systemic im-
pact.”

(recitals 8 and 29; emphasis added)
Art. 1 of the relevant regulation describes the “Scope of the Programme” as follows:

“1. This Regulation establishes a programme for Union action in the field of education,
training, youth and sport called 'Erasmus+' (the 'Programme').

2. The Programme shall be implemented for the period from 1 January 2014 to 31 De-
cember 2020.

3. The Programme shall cover the following fields, whilst respecting the structures and
specific needs of the various sectors in the Member States:

(a) education and training at all levels, in a lifelong learning perspective, including school
education (Comenius), higher education (Erasmus), international higher education
(Erasmus Mundus), vocational education and training (Leonardo da Vinci) and adult
learning (Grundtvig);

(b) youth (Youth in Action), particularly in the context of non-formal and informal learning;
(c) sport, in particular grassroots sport.

4. The Programme shall include an international dimension aimed at supporting the Un-
ion's external action, including its development objectives, through cooperation between
the Union and partner countries.”

(emphasis added)

The owner itself sets out a totally non-commercial undertaking. It even states that national part-
ners of Erasmus “are not required to have any systemic impact as such”.

The Erasmus programme does not aim to achieve any commercial benefit. It just spends mon-
ey to promote general political goals. There is no intention to maintain or create market shares
for any of the goods or services the contested sign is protected.

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Considering the perception of the relevant public — students i.e. — the scholarships are no ser-
vice in the sense of trademark laws. The relevant public — quite probably almost everybody for
this matter — views such scholarships as a non-commercial “gift” to students.

Finally, the relevant public would not be able to exclusively identify the source or origin of the
Erasmus scholarships. Potential scholarship holders do not have any direct contact with the
owner. They apply for an Erasmus programme at their home university. In general, a national
university will organize the specific scholarship vis-A-vis the applicant.

c. No intention to create a commercial outlet

Case law corresponds with the above findings. In “Omnicare Clinical Research” the ECJ stated
the following:

“It follows from the concept of genuine use that the protection that the mark confers and
the consequences of registering it in terms enforceability vis-a-vis third parties cannot
continue to operate if the mark loses its commercial raison d’ötre, which is to create
or preserve an outlet for the goods and services that bear the sign of which it is com-
posed, as distinct from the goods or services of other undertaking [...]

According to the Court of Justice, it is essential, in the light of the number of marks that
are registered and the conflicts that are likely to arise between them, to maintain the
rights conferred by a mark for a given class of goods or services only where that
mark_has been used on the market for goods or services belonging to that class
(Silberquelle, paragraph 53 above, paragraph 19).

The Court of Justice considers that that condition is not fulfilled where promotional
items are handed out as a reward for the purchase of other goods and to encour-
age the sale of the latter (Silberquelle, paragraph 53 above, paragraph 20).

In such a situation, those items are not distributed in any way with the aim of pene-
trating the market for goods in the same class. In those circumstances, affixing the
mark to those items does not contribute to creating an outlet for those items or to
distinguishing, in the interest of the customer, those items from the goods of other under-
takings (Silberquelle, paragraph 53 above, paragraph 21).”

ECJ, jdmt. of 9 September 2011, T-289/09, Rn. 60-63
[emphasis added]

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Regarding the owner and the Erasmus programme — as above-mentioned — there is no “com-
mercial raison d’ötre”. The owner neither plans to establish an outlet for any goods/services nor
does it aim to encourage the “sale” of any goods/services. The programme is free of charge and
there is no plan to establish any “sales-activities” in relation to the sign Erasmus.

The EC) continues as follows:

“Consequenily, it follows from the case-law of the Court of Justice that the fact that goods
and services may be offered free of charge does not prevent genuine use from being
shown.

However, in order to determine whether genuine use has been shown or not, it is
necessary to assess whether, by such use of the mark, the undertaking seeks to
create or maintain an outlet for those services in the European Union, as against
the services of other undertakings. That will not be the case if those services do not
enter into competition with services offered on the market by other undertakings, that is

to say if they are not - and are not intended to be - offered commercially.”

ECJ, jdmt. of 9 September 2011, T-289/09, Rn. 67-68
[emphasis added]

The ECJ states that genuine use may be affirmed when goods/services are offered free of
charge. Even though, the proprietor of a trademark needs to show, that there is intention
to offer goods/services commerecially. The owner did not even establish any such intent.

Additionally, the goods/services do not enter into competition with any other goods/services of-
fered on the market. First: free of charge scholarships cannot be sold. Logically it is impossible
to imagine a market of — de facto - state offered scholarships which are free of charge. Even if
one includes scholarship schemes on a wider scale, it is not possible to speak of a “commercial
market of free of charge scholarships”.

Moreover, there is no “enforceability vis-a-vis third parties”. The more scholarship schemes the
better. Given there would be a programme comparable to the Erasmus programme, the owner
could stop its programme all together. Indeed, this must be the aim of the owner as a tax funded
organization. The Erasmus programme must not be an end in itself.

Due to the lack of genuine use the mark must be revoked.

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ll.
Decisions quoted by the owner

The owner cites two cases: “*ERASMUS vs. HAPPY ERASMUS VALENCIA” and "ERASMUS vs.
ESAMSUNET”. However, they carry no weight in the proceeding before the examiner in this
case.

1. “ERASMUS vs. HAPPY ERASMUS VALENCIA”: Cancellation No 21 781 C
(16 March 2019)

The cited decision is not applicable in this case. The competent trademark examiner in the case
“ERASMUS vs. HAPPY ERASMUS VALENCIA” found that it was not necessary to assess “the
evidence provided by the applicant [the EU]” (page 8 of the decision).

Indeed, the citation of the owner is confusing, to say the least. It is quoted as follows:

“In support of its observations, the applicant (The European Union, represented by the
European Commission, owner of the ERASMUS mark) submitted evidence ofthe reputa-
tion of the earlier mark. [sic!]

The earlier mark is the word mark 'ERASMUS’. For part of the public, this word will not
be associated with any meaning. However, for another part of the public and as pointed
out by the applicant, 'ERASMUS’ will be seen as referring to the name of the Dutch hu-
manist who was the greatest scholar of the northern Renaissance (information extracted
from Oxford Dictionaries on 16/05/2019 at https://en.oxforddictionaries.com). |ERASMUS’
can also_be perceived as referring to the ‘Erasmus Programme’, a European Union stu-
dent exchange programme established in 1987, for which the applicant has a registered
trade mark. As the word ‘ERASMUS’ does not describe any of the essential characteris-
tics of the relevant services it is distinctive to an average degree.”

First of all, the paragraphs are in no way connected as it may seem with regards to the presenta-
tion by the owner. The first paragraph is on page 1 and the second paragraph is on page 6. Fur-

thermore, the owner omits one vital half-sentence at the end of paragraph one, namely:

“[...] submitted evidence of the reputation of the earlier mark, which will be listed and as-
sessed further in the decision if needed.” [emphasis added]

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