European Union Intellectual Property Office Avenida de Europa 4 03080 Alicante Spain February 24, 2021 Y/Ref.: O/Ref.: 2134869 – TCA2500319EU00 – BEGE – YAAB Dear Mrs. Miehle, Subject :       Revocation action 38560 C against IR No. 01004846 designating the EU for the trademark ERASMUS TM Proprietor reply We refer to your correspondence of October 19, 2020 in the above mentioned matter. 1 On behalf of our client, The European Union represented by the European Commission, we hereby submit our reply to the applicant’s observations. We are rebutting the arguments of the applicant namely that there is no genuine use of the contested international TM designating the European Union registration No. 01004846 (ERASMUS) in the course of trade, as well as providing counter arguments of the applicant’s attempt to disqualify the evidence of use submitted. 1. Assessment of genuine use - factors 1.1. 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 (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the TM proprietor is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (judgment of 17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 31).

The TM Proprietor will now clearly demonstrate that these requirements have been sufficiently met in relation of at least part of the goods and services for which the contested trade mark has been registered. 1.1. a. Nature of use Nature of use requires, inter alia, evidence that the contested TM is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers and evidence of the use of the sign for the goods and/or services for which it is registered. Contrary to what the applicant claims, the fact that goods or services are offered on a non-profit-making basis is not decisive (ECJ, 9 December 2008, Verein Radetzky-Orden/Bundesvereinigung Kameradschaft – Feldmarschall Radetzky, C-442/07, paragraph 16). In that decision the Grand Chamber of ECJ (CJEU) stated that “a trade mark is put to genuine use where a non-profit-making association uses the trade mark, in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association’s members wear badges featuring that trade mark when collecting and distributing donations.” This element has been clarified in a recent EUIPO Opposition decision (17/06/2020, Opposition n° B 2 788 308, UCO, EUTM 15 455 521), which was opposing two Universities. The TM Proprietor would like to raise 2 the Cancellation division’s attention to the following paragraphs (emphasis added): “ The applicant argues that the evidence does not show the use as trade marks in the course of trade and that there is no evidence of sales of the relevant goods and services. In that regard, the Opposition Division must draw the attention to the public nature of the Universidad de Córdoba and consider that the trade marks are protected for a non-profit company. Consequently, where the mark is protected for goods or services of not-for-profit enterprises, and the mark has been used, the fact that there is no profit motive behind the use is irrelevant: ‘The fact that a charitable association does not seek to make profit does not mean that its objective cannot be to create and, later, to preserve an outlet for its goods or services’ (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 17). This clearly also applies to academic institutions in the public sector. Therefore, as a non-profit company/organisation, the services offered are normally for free as only a small administration fee has to be paid. Goods and services offered free of charge may constitute genuine use when they are offered commercially, that is to say with the intention of creating or maintaining an outlet for those goods or services in the EU, as opposed to the goods or services of other undertakings, and therefore of competing with them (09/09/2011, T-289/09, Omnicare Clinical Research, EU:T:2011:452, § 67-68).

The proof filed, in particular all the press articles, the investment in advertising and all kind of publicity (posters, banners and brochures) with the ‘UCO’ sign on it, provide the Opposition Division with limited, yet sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The evidence contains certain indications, although circumstantial, regarding the quantitative aspects of use, such as the big amount of money invested in publicity campaigns. Furthermore, the evidence gives relevant indications regarding the qualitative aspects of use, such as all the press publications making use of the mark. There is no room for doubt that the opponent’s marks were used with a commercial goal to denote educational services provided at a substantial degree of frequency and duration.” Likewise, in its Decision of 22 April 2020 in case R 1642/2019-4 (Agència Per a la Qualitat del Sistema Universitari De Catalunya vs. Emory University), the Fourth board of Appeal stated that “In the case at hand, particular consideration must be had for the fact that the EUTM proprietor is a governmental organisation whose activities are carried out in the course of general interest and not with a commercial purpose. The characteristics of the market in question in the present case thus play a determining role for the assessment of the extent of use of the mark. The EUTM proprietor is a public entity whose mission is to assure the quality of higher education through compliance with international standards of quality and to safeguard the interests of society in the quality of higher education. In the course of that mission, the goods and services marketed under the trade mark ‘AQU Catalunya’ are usually provided free of charge. It is 3 therefore logical that no accounting documents or invoices are provided. According to the case-law law of the Court of Justice, affixing a mark on items that are given away, free of charge, to purchasers of other goods, cannot be considered genuine use. Such promotional items are handed out as a reward for the purchase of other goods and to encourage the sale of the latter and are not distributed in any way with the aim of penetrating the market for goods in the same class. Such use 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 undertakings (15/01/2009, C-495/07, Silberquelle, EU:C:2009:10, § 15, 19-21). This does however not imply that non-profit organisations who do not charge for their goods or services cannot use their signs consistent with the essential function of a trade mark. These organisations can nevertheless use their signs in such way that they serve to distinguish their goods and services from those of other entities or undertakings. The fact that goods or services are offered on a non-profit-making basis is indeed not decisive. In modern society, various types of non-profit organisations have sprung up which, at first sight, offer their goods or services for free but which, in reality, are financed through subsidies or receive payment in various forms. As long as the organisation in question uses its marks to identify and promote the goods or services for which they were registered, it is making actual use of them which constitutes ‘genuine use’. Thus, where non-profit organisations register as trade marks signs which they use to identify their goods or their services, they cannot be accused of not making actual use of those

marks when in fact they use them for those goods or services (09/12/2008, C-442/07, Verein Radetzky- Orden, EU:C:2008:696, § 16-21). In the present case, it is clear that the EUTM proprietor uses the contested EUTM to identity its goods and services, and that the particular goods and services in Classes 9, 16 and 41 (for which use was proven) that bear the contested EUTM are not distributed or provided by the EUTM proprietor free of charge because it wants to promote or encourage the sale of other goods or services. On the contrary, they are provided in the course of the core activities and functions of this public entity.” We are of the opinion that the considerations developed above for a University and a governmental organisation are similarly applicable to the use the TM proprietor has made of his “ERASMUS” mark. Indeed, the European Union is not a “classic” private commercial company/operator. Even if the TM proprietor is a public entity/operator, it is competing with other private (like the applicant’s company) or public operators and NGOs giving grants and providing the same products and services on its market and is using the ERASMUS trade mark in its relations with the public. Further, like charitable associations and non-profit-making associations, even if the owner is providing its goods or services on a non-profit-making basis, its objective was/is to create and to preserve an outlet for its goods or services, as against the goods or services of other undertakings/operators. Trade marks registered by a non-profit-making association may have a raison d'être, in that they protect the association 4 against the possible use in business of identical or similar signs by third persons. In the present case, the trade mark is used in accordance with its essential function. It offers a guarantee that all the products and services bearing the “ERASMUS” mark have been supplied under the control of a single proprietor or its licensees which are responsible for their quality. Furthermore, the use is not only made by the TM Proprietor but also by National Agencies, universities and other beneficiaries and operators of the ERASMUS programme. According to Article 18(2) EUTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor. The trade mark must be used either by the proprietor or by a third party acting with his consent. The latter may be a licensee (the licensing contract does not necessarily need to be registered), a distributor or any other person offering to the consumer/public the goods or service bearing the mark. We have provided delegation and grant agreements (annexes 41 and 42) showing use of the mark is made with the consent of its owner. 1.1.b. Place of use As the contested mark is an international TM designating the European Union, it must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR). Following Leno Merken, Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the European Union (19/12/2012, C-149/11, Onel / Omel, EU:C:2012:816, para. 44). In territorial terms and in view of the unitary character of the EUTM, the

appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor for establishing genuine use. As stated in the accompanying letter detailing the proof of use submitted by the TM Proprietor, the Annexes 2, 3, 4, 7 indicate that the sign “ERASMUS” is used in relation with goods and services throughout all the EU Member States. The applicant has not disputed this point. 1.1.c.  Time of use The proprietor must prove genuine use of the contested EUTM within the 5-years period preceding the date 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. The applicant did not dispute that the proof of use submitted by the EUTM Proprietor fell within the relevant period. 5 1.2. Extent of use – Commercial use is multifaceted As regards the extent of use, it is settled case-law that account must be taken, in particular, of 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 (e.g. 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). Furthermore, the Court has held that “use of the mark need not ... always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market' (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39). The assessment of genuine use entails therefore a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use. The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and services and the structure of the relevant market (30/04/2008, T-131/06, Sonia Sonia Rykiel, EU:T:2008:135, §53).

In other words, the extent of use is the demonstration of the conjunction and interdependence of the preceding criteria: duration and frequency of use, volume/quantity of use, market characteristics and territorial extent of use. This does not amount to demonstrate the commercial success of a trade mark but that the trade mark owner has seriously tried to acquire a commercial position in the relevant market. As stated above at the point 1.1.a. nature of use of our analysis, the market in which the TM Proprietor operates and the nature of the TM proprietor are particular. The EU is a public entity whose one objective is to achieve higher education within its Member States. To this end, through its ERASMUS programme, one of the activities of the European Union is to provide scholarships for student and teacher exchanges between schools in the Member States affiliated to the programme. While the Erasmus exchange programme is indeed the most famous in the European Union, this does not mean that it is the only one. Other private (such as the applicant's company) and public entities offer similar scholarship and exchange services. Therefore, contrary to the conclusion drawn by the applicant, the TM Proprietor offers its services in some form of commercial competition on the European market. Moreover, by the extent of its commercial use of the term ERASMUS, the EUTM Proprietor has created and maintained an outlet for its products and 6 services which is easily recognisable by the relevant European public. The commercial use of a trade mark is multifaceted. It cannot be reduced to the view that a trade mark must be used in relation with goods and services placed on the market for direct profit. This would be excessively restrictive. Through its ERASMUS programme, the European Union does not search immediate commercial profit. Nevertheless, in the long run, it is a policy that aims at the economic well-being of the entire European population. This image and this noble objective may be enviable by other undertakings which will “free ride” by taking an unfair advantage of the repute of the earlier “ERASMUS” mark of the European Union in order to benefit from its renown. It is in this hypothesis that trade mark law takes on its full importance and its essential function which is to ensure that the relevant public will be able to distinguish the goods and services originating from the TM Proprietor from those of other undertakings.

2.      Mark registered for broad category of goods/services 2.1.     Use for part of the goods and services The trade mark must be used for all the goods and services indicated in the registration certificate. If it is only used in relation to part of the goods or services for which it is registered it shall be deemed to be registered in respect only of that part of the goods or services (Article 42(2) last sentence of Regulation 2017/1001; Article 21 of the Harmonisation Directive). These provisions seek to prevent a trade mark which has been used in relation to part of the goods or services for which it is registered being afforded extensive protection merely because it has been registered for a wide range of goods or services. Thus, when those provisions are applied, it is necessary to take account of the breadth of the categories of goods or services for which the earlier mark was registered, in particular the extent to which the categories concerned are described in general terms for registration purposes, and to do this in the light of the goods or services in respect of which genuine use has, of necessity, actually been established (CFI, 17 October 2006, Armour Pharmaceutical/OHIM - Teva Pharmaceutical Industries, T-483/04, paragraph 26). The principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable. It must not, however, result in the proprietor of the earlier 7 trade mark being stripped of all protection for 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. It is not necessary for the opponent to file evidence of all the commercial variations of similar goods or services but merely of those goods or services that are sufficiently distinct to constitute coherent categories or subcategories (CFI, 17 October 2006, Armour Pharmaceutical/OHIM - Teva Pharmaceutical Industries, T-483/04, paragraph 46). The underlying reason is that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. It can be shown that the mark has been genuinely used in relation to only part of the initial broad specification. The goods and services for which the mark ERASMUS has not been validly used in the past 5 years have been surrendered on February 23, 2021 (copy of the request enclosed).

2.2.     Goods and services for which the use has been demonstrated The 43 annexes submitted by the TM Proprietor show that the mark is extensively (with a yearly budget close to 3 billion) used to identify and promote the ERASMUS products and services to the general public. The trade mark must be used on the market for the goods or services protected by that mark and not just used internally by the undertaking/entity concerned. The use of the trade mark ERASMUS by its owner and authorized users was not limited to internal events or communications. It was genuinely and publicly used on the market. ERASMUS is probably one of the most visible and well-known brand/trade mark and programme put in place by the European Union. Account must also be taken, in particular, of 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. With yearly budgets amounting to billions since 1987, we believe it is impossible to doubt about the quantitatively sufficient use of the mark ERASMUS in the European Union. The TM Proprietor is not denying the fact that the ERASMUS trade mark has been registered for a broad specification of goods and services. As noted above, in practice, it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Nevertheless, we have provided proof of the use of the sign for the categories of goods/services concerned and have surrendered the others. 8 The applicant stated that “The contested trade mark is protected for goods and services in classes 09, 16, 35, 36, 39, 41 and 43. For goods and services in classes 09, 16, 35, 39, and 43 the owner has not provided any evidence at all”. We may therefore conclude that the applicant acknowledges evidence of use were provided for services of classes 36 and 41. 2.2.a. Class 9 After denying TM Proprietor provided evidence of use for goods in class 9, applicant stated that “The provided documents (…) only refer to a mobile app. However, this app is/was obviously free of charge”. First, the applicant acknowledges that evidence of use have been provided for some of the designated goods. Second, should this assertion be considered valid and pertinent, apps/search engines like GOOGLE, which can be downloaded and/or used free of charge, would not be considered as a valid and genuine use of the trade mark GOOGLE for this type of goods/services. That would be strange for a trade mark which is continuously ranked in the TOP 5 Best Global Brands Report of Interbrand. Same reasoning would apply to many major free apps like Instagram, Facebook, … The European Union submitted several statistics, publications, promotional materials (annexes 5, 20, 22, 23, 24, 27, 28, 29, 30, 31, 32). We demonstrated the extensive and growing use of the mark ERASMUS in the digital world. Whether via the mobile application developed by the TM Proprietor, its official website,

the website of third parties, electronic newspapers, … . The Erasmus+ Online Linguistic Support website also allows programme participants to assess their skills and undergo language courses in the language they will use as part of an Erasmus+ mobility. This use can easily be linked to a category of the goods designated in class 9 by the contested TM: computer programs (downloadable software); computers (recorded computer programs); electronic publications (downloadable). 2.2.b. Class 16 Annexes 33h and 33i of the evidence submitted by the TM Proprietor show that the publication of physical copies is one of the means of the European Union to disseminate and communicate to the public its information concerning the Erasmus programme. This demonstrates, at the very least, the use of the sign in relation to the goods printed publications designated in class 16. 2.2.c.   Class 35 Annex 39 of the evidence submitted by the TM Proprietor shows that through the Erasmus+ Project Results Platform, the European Union provides services of data compilation and systematization in a database and compiling of statistics. Annex 34 shows that the European Union website makes available a wide variety 9 of resources including infographics, fact sheets, books and the Erasmus+ toolkit. This use can easily be linked to a category of the services designated in class 35 by the contested TM: data compilation and systematization in a database; computer file management; market studies; compiling of statistics. The TM Proprietor also manages and supervises the ERASMUS staff mobility programme. 2.2.d. Class 36 Annexes 1, 2, 3, 4 , 5, 6, 14, 15, 16, 41, 42 extensively show that, since the creation of the programme in 1987, the European Union provides grants for a wide range of actions including the opportunity for students, teachers and education staff to undertake work placements abroad and to attend training courses under the sign ERASMUS. The extent of use of the sign in relation with services in the financial category is significant. Indeed, this is the core of the ERASMUS programme, which is to, via financial sponsorships, provide a unique opportunity for teachers, headmasters, trainers and other staff of education institutions to participate in international training courses in different European countries. Further, it is an important item of expenditure that represents an important portion on the European Union's budget.

Therefore, it makes no doubts that the evidences submitted by the TM Proprietor demonstrate the use of the ‘ERASMUS’ trade mark for the services designated in class 36 : Charitable fund raising; financial sponsorship; financial information; information relating to financial affairs. 2.2.e.   Class 41 Annexes 2, 3, 5, 6, 12, 13, 14, 15, 36, 42 extensively show that within the overarching architecture of the Erasmus programme, higher education assumes a central role. Indeed, the Erasmus programme helps to improve and increase student and teacher mobility, as well as the transparency and compatibility of qualifications in higher education and higher vocational training in Europe. The main benefits of the programme are exemption from tuition fees of the host university, formal recognition of the part of the studies carried out abroad, as well as the maintenance of grants, loans and social security cover in the country of the sending university. In order to validate their period of study abroad, students must choose a study programme that is an integral part of the programme they are following at their home university. In addition, a study contract is signed before the student's departure which sets out the list of subjects that the student will have to follow, as well as the number of European Credit Transfer System - ECTS corresponding to the period of mobility. In order to validate the period of study abroad, the student will then have to obtain all the ECTS provided for in his or her study contract. 10 In order to achieve these ambitious objectives in the field of education, the European Union has released a significant budget, numerous educational events have been organised by the European Union or approved licensees such as the various universities participating in the programme, numerous texts and publications have been made public to support students and teachers benefiting from the programme. Further, the Erasmus+ Online Linguistic Support website also allows programme participants to assess their skills and undergo language courses in the language they will use as part of an Erasmus+ mobility. For these reasons, there is no doubt that the use of the Erasmus sign in relation to the services designated in class 41: Education; providing of training; entertainment; sporting and cultural activities; academies (education); organization of competitions (education or entertainment); providing online electronic publications (not downloadable); education information; information on studies; entertainment information; organization and conducting of colloquiums, conferences, congresses, seminars, symposiums; arranging and conducting training workshops; publication of books; vocational guidance (advice relating to education and training); publishing of texts (other than advertising); electronic publishing of books and periodicals online has been genuine and effective since the launch of the programme in 1987 and has continued to grow until the present day.