Cancellation No C 38 560 (Revocation)

Prüfung der Marke "Erasmus" durch die EUIPO

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CANCELLATION DIVISION CANCELLATION No C 38 560 (REVOCATION) Desiderius-Erasmus-Stiftung, Unter den Linden 21, 10117 Berlin, Germany (applicant), represented by Höcker Rechtsanwälte, Friesenplatz 1, 50672 Cologne, Germany (professional representative) against The European Union, represented by the European Commission, Rue de la Loi, 200 SDME 10/51, 1049 Brussels, Belgium (IR holder), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative). On 07/12/2021, the Cancellation Division takes the following DECISION 1.    The application for revocation is partially upheld. 2.    International trade mark registration No 1 004 846 is revoked for the European Union as from 30/09/2019 for some of the contested goods and services, namely: Class 9:    Computers (recorded computer programs); all these goods being linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 35: Computer file management; market studies; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 36: Charitable fund raising; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 41: Academies (education); all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. 3.    The international registration remains valid in the European Union for all the remaining goods and services, namely: Class 9:    Computer programs (downloadable software); electronic publications (downloadable); all these goods being linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 16: Printed publications; all these goods being linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments.
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Decision on Cancellation No C 38 560                                             page: 2 of 34 Class 35: Data compilation and systematization in a database; compiling of statistics; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 36: Financial sponsorship; financial information; information relating to financial affairs; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 41: Education; providing of training; entertainment; sporting and cultural activities; 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; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. 4.    Each party bears its own costs. REASONS On 30/09/2019, the applicant filed a request for revocation of international registration designating the European Union No 1 004 846 ‘ERASMUS’ (word mark) (the IR). The request is directed against all the goods and services covered by the IR which, after a partial surrender registered by the Office, are the following: Class 9:     Computer programs (downloadable software); computers (recorded computer programs); electronic publications (downloadable); all these goods being linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 16: Printed publications; all these goods being linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 35: Data compilation and systematization in a database; computer file management; market studies; compiling of statistics; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. Class 36: Charitable fund raising; financial sponsorship; financial information; information relating to financial affairs; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments.
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Decision on Cancellation No C 38 560                                            page: 3 of 34 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; all these services linked to European activities of higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments. The applicant invoked Article 58(1)(a) EUTMR. SUMMARY OF THE PARTIES’ ARGUMENTS The applicant merely ticked the box in its application for a declaration of revocation to indicate that the contested IR has not been put to genuine use for a period of five years. The holder submitted evidence of use and stated that these materials show that the mark is extensively used (with a budget close to EUR 3 billion) to identify and promote the ‘ERASMUS’ products and services to the general public. Use is not only made by the holder of the mark but also by National Agencies, universities and other beneficiaries and operators of the ‘ERASMUS’ program. The holder refers to some previous decisions of the Office’s Cancellation and Opposition Divisions. In its decision in the ‘HAPPY ERASMUS VALENCIA’ case (16/05/2019, 21 781 C,                            ), the Cancellation Division stated that ‘the applicant submitted evidence of use and of the reputation of the earlier mark’ (i.e. ‘Erasmus’), while in its decision in the ‘ERASMUSNET’ case (24/03/2017, B 2 617 291,                         ), the Opposition Division stated that ‘Erasmus can also be perceived as referring to the “Erasmus Programme”, a European Union student exchange programme established in 1987 for which the applicant has a registered trade mark’. The holder drew attention to one of the particularities of the IR, namely that although the holder is a public entity/operator and not a ‘classic’ private commercial company/operator, it competes with other private and public operators and non-governmental organisations (NGOs) giving grants and providing the same products and services on the market. Furthermore, like charitable and non-profit associations, although the holder is providing its goods or services on a non-profit basis, its objective was/is to create and to preserve an outlet for its goods or services, as against the services of other undertakings/operators. Trade marks registered by a non-profit association may have as their raison d’être the protection of the association against the possible use in business of identical or similar signs by third parties. In the present case, the holder claims that the contested IR is used in accordance with its essential function, namely that it guarantees that all the products and services bearing it are supplied under the control of a single proprietor that is responsible for their quality.
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Decision on Cancellation No C 38 560                                           page: 4 of 34 The applicant argued that the holder, as a de facto state organisation, cannot be active in trade and that it does not use the sign ‘Erasmus’ as a trade mark. The objective of the Erasmus programme is not to achieve any form of commercial advantage for the EU or any other party. This educational programme was established to broaden understanding between nations and to help students financially to study abroad. The underlying motive is to improve the education of students all over Europe. Overall, the programme is a policy instrument and not a commercial undertaking. Moreover, the programme is free of charge. Indeed, the holder spends money to fund students’ educational trips. The Erasmus Programme is essentially perceived as an EU student exchange programme on a non-profit basis, and therefore the term is not used in accordance with the essential function of a mark. There are no comparable scholarship programmes in the EU. Therefore, there is no market in which the holder would need to prevail over competitors. Moreover, the applicant argued that even if one considered the Erasmus programme a commercial service, the holder had failed to prove genuine use. The holder did not provide any evidence for use of the vast majority of the protected goods/services. It did not even argue in favour of genuine use of most of the goods/services. In relation to services in Classes 36 and 41, the documents may refer to educational services. However, they fail to establish whether any services were actually provided under the sign. ‘Erasmus+’ appears to be an umbrella term. Moreover, the holder did not prove that any services were offered in the course of trade. Some of the documents show impressive levels of spending, but no income or any commercial benefit whatsoever. The applicant referred to case-law to support its arguments: 20/03/2007, C-325/06 P, Galileo      EU:C:2007:176      (hereinafter    the     ‘Galileo     case’);    23/03/2010, C-236/08 - C-238/08, Google-Louis Vuitton, EU:C:2010:159 (hereinafter ‘the Google cases’); and a corresponding German decision regarding ‘Galileo’ by a Higher Regional Court in Germany (OLG Munich). The applicant insisted that promoting and awarding scholarships does not constitute genuine use and that the Erasmus programme is a charitable programme, or in other words a non-commercial programme. Furthermore, it individually assessed every exhibit submitted by the holder (which will be detailed below when listing the evidence). The applicant claims that: (a) the documents only contain evidence that an ‘Erasmus+’ programme exists, not of any actual use of the contested sign in the course of trade; (b) the evidence does not prove actual use, but merely that use in some way was intended; (c) the documents do not show that the contested sign was used to offer specific goods/services to the relevant public; (d) the financial figures in the documents cannot be considered as evidence of actual use; (e) most of the figures relate to spending and not to commercial benefit; (f) the figures are not linked to ‘sold’ goods/services, and most of the documents fail to establish a link between the denomination ‘Erasmus’ and the EU as its origin; (g) some of the documents have a purely promotional value, if any; (h) some of the documents only show internal use; and (i) some of the documents are not sufficient to show a link between goods/services supposedly on offer and their origin. The holder replied that the fact that goods or services are offered on a non-profit basis is not decisive and quoted the judgment in the ‘Radetzky’ case (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 16. In that judgment, the Grand Chamber of the 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
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Decision on Cancellation No C 38 560                                           page: 5 of 34 where the association’s members wear badges featuring that trade mark when collecting and distributing donations. Furthermore, the holder referred to the Office’s decision in the ‘UCO’ case (17/06/2020, B 2 788 308,                        ), a case involving two universities, and the Board of Appeal’s decision in the ‘AQU CATALUNYA’ case (22/04/2020, R 1642/2019-4, ‘AQU CATALUNYA’) involving a governmental organisation. Indeed, the holder reiterated, although the European Union is a public entity/operator and not a ‘classic’ private commercial company/operator, it competes with other private companies (like the applicant’s company) and public operators and NGOs giving grants and providing the same products and services on its market, and it uses the ‘ERASMUS’ trade mark in its relations with the public. Furthermore, although like charitable associations and non-profit-making associations the holder provides its goods and services on a non-profit basis, its objective is to create and 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 association may have as their raison d’être the protection of the association against the possible use in business of identical or similar signs by third parties. The holder 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 holder has created and maintained an outlet for its products and services that 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 to goods and services placed on the market for direct profit. This would be excessively restrictive. Through its ‘ERASMUS’ programme, the European Union does not seek an 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 envied by other undertakings, which may then ‘free ride’ by taking unfair advantage of the repute of the European Union’s ‘ERASMUS’ mark in order to benefit from its reputation. It is in such cases, the holder argued, that trade mark law takes on its full importance and essential function, which is to ensure that the relevant public will be able to distinguish the goods and services originating from the holder from those of other undertakings. PRELIMINARY REMARKS The IR holder partially surrendered the IR on 29/04/2021 and deleted Classes 39 and 43 entirely. The partial surrender was accepted by WIPO, and the Office notified the applicant of its intention to continue the revocation proceedings with the remaining goods and services unless the latter expressly requested that the revocation proceedings continue with the entire list of goods and services and show a legitimate interest in
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Decision on Cancellation No C 38 560                                           page: 6 of 34 obtaining a decision on the merits. Within the deadline set by the Office, the applicant replied that it wished to maintain its application for the remaining goods and services against which the revocation is directed as listed above in the section ‘Reasons’. GROUNDS FOR THE DECISION According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark 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 Union for the goods or services for which it is registered, and there are no proper reasons for non-use. Pursuant to Article 198 EUTMR, the same applies to international registrations as far as validity in the European Union is concerned. According to Article 182 EUTMR, unless otherwise specified, both the EUTMR and the EUTMIR apply to applications for international registrations. As regards the application of Article 58(1) EUTMR to international registrations designating the Union, Article 203 EUTMR establishes that the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as of which the mark must be put to genuine use in the Union. Genuine use of a trade mark exists 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 requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 35-37 and 43). When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether 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 market share for the goods or services protected by the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38). According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, 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. In revocation proceedings based on the grounds of non-use, the burden of proof lies with the IR holder, as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the IR holder who must prove genuine use within the European Union or submit proper reasons for non-use. In the present case, the IR was published in accordance with Article 190(2) EUTMR on 31/05/2010. The revocation request was filed on 30/09/2019. Therefore, the IR had been published for more than five years at the date of the filing of the request. The IR holder had to prove genuine use of the contested international registration during the five-year period preceding the date of the revocation request, that is, from 30/09/2014 until
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Decision on Cancellation No C 38 560                                           page: 7 of 34 29/09/2019 inclusive, for the contested goods and services listed in the section ‘Reasons’ above. On 25/02/2020 the IR holder submitted evidence as proof of use. The IR holder requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Cancellation Division accepts this request insofar as it relates to part of the evidence (specifically the sensitive commercial information contained in the documents under Annexes 41 and 42). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any data or specific information that could breach the terms of the confidentiality request. However, this does not apply to evidence that consists of information already in the public domain (including that available to the public either in mass media or on the IR holder’s websites). The evidence to be taken into account comprises the following annexes. 1.     Witness statements signed by the Directors of the National Agencies of Belgium (Agence francophone pour l’education et la formation tout au long de la vie - AEF- Europe), Germany (Nationale Agentur fur EU-Hochshulzusammenarbeit im DAAD), France (Agence Erasmus + France/Education & Formation), Lithuania (Lithuanian ‘Erasmus+’ NA), and Romania (National Agency for Community Programmes in the Field of Education and Vocational Training (ROO1)) concerning the use of the ‘Erasmus’ trade mark in the context of financial sponsorship, provision of information, organisation of events and promotional activities. The statements describe ‘Erasmus+’ as the EU’s programme to support education, training, youth and sport in Europe for 2014-2020 and specify that the mark was used by every Agency with the consent of the European Union. The statements give details about the activities of each agency mentioned above: (i) ‘selected and managed “Erasmus+” projects to be funded and issued grant support to beneficiaries in the contexts of: 1) mobility of students in all cycles of higher education and of students, apprentices and pupils in vocational education and training; (2) strategic partnerships within cooperation projects involving organisations active in the fields of education, training and/or youth, and may include other organisations’; (ii) ‘supported applicants and participants and, in general, provided information on “Erasmus+” and funding opportunities related to higher education establishments as well as to student and teaching staff mobility and exchanges in such establishments, through information in websites, organization of events, information sessions, conferences, workshops, webinars, video tutorials, face-to-face consultation, publications, leaflets and various promotional materials, organisation of regular meetings (at least biannual) with the representatives of Erasmus+ Offices / International Relations Offices established within universities that have obtained the Erasmus Charter for Higher Education and implement mobility projects and strategic partnership projects, organisation of “Erasmus+” Information Day events for promotion of “Erasmus+” international dimension, organisation of national valorisation conferences dedicated to Higher Education field, organisation of annual Erasmus Open Doors events to promote mobility (with activities of online promotion and physical meetings), supporting the “Erasmus+” Promoters network involving former Erasmus students and Erasmus Student Network Romania volunteers that share experiences and promote mobilities, promotion through mass-media (internet, TV, radio, magazines, newspapers etc.), and information published on the www.erasmusplus.ro and erasmus-plus.lt websites’; (iii) ‘promoted the “Erasmus+” funding opportunities’.
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Decision on Cancellation No C 38 560                                             page: 8 of 34 Details are given of the legislative framework in which the agencies perform their activities, namely under a contractual relationship with the European Commission and in accordance with Regulation (EU) No 1288/2013 of the European Parliament and of the Council of 11/12/2013 establishing ‘Erasmus+’: the Union programme for education, training, youth and sport and repealing Decisions No 1719/2006/EC, No 1720/2006/EC and No 1298/2008/EC. 2.   Excerpts from Regulation (EU) No 1288/2013 of the European Parliament and of the Council of 11/12/2013 establishing ‘Erasmus+’: the Union programme for education, training, youth and sport and repealing Decisions No 1719/2006/EC, No 1720/2006/EC and No 1298/2008/EC. •      Article 1 refers to the scope of ‘Erasmus+’ (nicknamed ‘the Programme’), its period of implementation (01/01/2014 to 31/12/2020) and fields of application: o      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); o      youth (Youth in Action), particularly in the context of nonformal and informal learning; o      sport, in particular grassroots sport. •      Article 18(1) states that “‘financial provisions” refers to the financial envelope for the implementation of the programme, which is set at EUR 14 774 524 000 of which 77,5 % is allocated to education and training, from which the following minimum allocations shall be assigned: (i) 43 % to higher education, representing 33,3 % of the total budget …’. •      Article 22 refers to the use of the brand ‘ERASMUS’ in communication and dissemination activities – see, in particular, Article 22(4): The public and private bodies within the sectors covered by the Programme shall use the brand name 'Erasmus+' for the purpose of communication and dissemination of information relating to the Programme. For the different sectors of the Programme, the following brand names shall be used:— 'Erasmus', associated with all types of higher education within the Programme countries; — 'Erasmus Mundus’, associated with all types of higher education activities between the Programme countries and partner countries. •      Article 24(1) refers to the participant countries, indicating the EU Member States, and Article 26 ‘Implementing bodies’ states that the Programme shall be implemented in a consistent manner by (a) the Commission at Union level and (b) the national agencies at national level in the Programme countries. Together, these elements provide, according to the holder, indications of place, time, nature and extent of the use of the ‘ERASMUS’ sign for financial sponsorship by the trade mark holder and other entities with its consent.
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Decision on Cancellation No C 38 560                                            page: 9 of 34 3.   Excerpts from the Commission Implementing Decision of 05/09/2016 on the adoption of the 2017 annual work programme for the implementation of ‘Erasmus: The Union Programme for Education, Training, Youth and Sport’. This document constitutes the financing decision and the work programme for the ‘Erasmus+’ programme for 2017, which was implemented through grants, procurement, financial instruments, experts and other actions. A summary of the 2017 work programme is provided on pages 4 and 5, showing a contribution for the implementation of the programme for 2017 set at EUR 2 499 658 134. Article 7 mentions as ‘financial instruments’ that the student loan guarantee facility is established and that the European Investment Fund (EIP) shall be entrusted with providing the financial support by means of the Student Loan Guarantee Facility. The specific budget appropriations and the country allocations (including all EU Member States) are indicated. Together, these elements provide, according to the holder, indications of the place (throughout the European Union), time (work programme for 2017), nature and extent of the use of the ‘Erasmus+’ sign for financial sponsorship and education services by the IR holder and entities with its consent. 4.   Some publications in the Official Journal of the European Union of the Call for Proposals for grants under ‘Erasmus+’ for 2015 to 2019. The holder considers that these documents demonstrate the place (services provided in the territory of the European Union, with the entities eligible for funding being, amongst others, entities based on Member States of the European Union), time (the calls were published between October 2014 and October 2018), extent (the funds for financial sponsorship are indicated, ranging from EUR 1 736.4 million to EUR 2 733.4 million) and nature (the trade mark is used to identify its source, publicly and in relation to the services it covers). The call for proposals covers the following actions of the Erasmus +Programme: Key Action 1 (KA1) – Learning mobility of individuals; Key Action 2 (KA2) – cooperation for innovation and the exchange of good practices; Key Action 3 (KA3) – Support for policy - reform structure dialogue: meetings between young people and decision-makers in the field of youth; Jean Monnet activities and Sport: collaborative partnership in the sport field and non- profit European sport events. 5.   Selected pages from the publication ‘Erasmus+ Annual Report 2017’ (ISBN 978- 92-79-96721-4) and its Statistical Annex, published on 23/01/2019. Page 9 provides information on the launch of the ‘Erasmus+’ mobile app, which since its launch in June 2017 had been downloaded by more than 55 000 users. Page 11 refers to the ‘ERASMUS’ promotional campaign that was run in 2017, headed by the European Commission. Page 14 describes the budgetary execution of the programme in 2017, which amounted to EUR 2.56 billion. A graphic on page 22 refers to the amount of grants (in millions of euro) and the number of mobilities between 2014 and 2017. Page 24 indicates that ‘Erasmus+’ supported more than 312 300 student and 62 500 staff mobilities in 2017 (higher education). Page 36 includes information regarding the Erasmus Mundus Joint Master Degrees, including information on the number of projects, courses and allocated funds. Page 37 includes references to the ‘Erasmus+’ Master Loans, which in 2017 made available EUR 160 000 000, through EU guarantees worth EUR 26 000 000. Regarding the ‘Erasmus+’ Online Linguistic Support (promoting language learning and linguistic diversity), page 38 states that 380 000 people have benefited from online Erasmus language training courses since their launch in 2014. Pages 90 and 91 provide information on the ‘Erasmus+’ Project Results Platform, a comprehensive online database of Erasmus projects, provided online by the IR
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Decision on Cancellation No C 38 560                                      page: 10 of 34 holder. A complete breakdown of the provided financial sponsorship is contained in the statistical annex. 6.   28 ‘Erasmus+’ 2017 country factsheets, with references to the amount of money, number of grants and number of cooperation projects funded through ‘ERASMUS+’ in each EU Member State. Details are given per Member State of the national agencies in charge of each field (e.g. the ‘Vocational Education and Training’, ‘School Education’, ‘Higher Education and Adult Education’ and ‘Youth’ fields in Italy, and the ‘Education and Youth’ field in Romania); the outgoing and incoming students, trainees and staff; and the top three sending institutions and receiving countries. The holder claims that these demonstrate the use of the
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