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July 2010

Magazine CTM has classes revoked for non-use

The CTM "Self", owned by a US publishing group, has had a number of classes revoked and its coverage limited to magazines only following a challenge by the French hypermarket chain, Groupe Auchan.

New York-based Advance Magazine Publishers, registered the CTM "Self" in 1999 for goods and services in classes 9, 16, 18, 25 and 42.

In 2007, Groupe Auchan, the owner of the French trade mark “Self Discount”, filed a revocation request for the majority of the goods and services covered by "Self" on the ground that the trade mark had not been put to genuine use in the Community in connection with these goods and services within a continuous period of five years.

Groupe Auchan had previously had several goods and services deleted from its French registration of "Self Discount" following opposition by the CTM proprietor. This decision has since been appealed, and the French hypermarket chain argued that since the CTM proprietor was using "Self" for magazines only, all the other goods and services registered ought to be deleted from the mark.

The request for revocation was directed against all goods and services registered, with the exception of magazines in class 16, and thus against the following:

  • Class 9: Eyewear, CD-Roms, software, audio and video cassettes.
  • Class 16: Newsletters, books and paper products.
  • Class 18: Leather goods, luggage, umbrellas, parasols and walking sticks;
  • Class 25: Clothing.
  • Class 42: Provision of access to global or non-global computer networks regarding information about matters of general interest, including entertainment, movies, television, fashion, beauty, health, fitness and food.

OHIM's Cancellation Division noted that in revocation proceedings on the grounds of non-use the CTM proprietor must prove actual and genuine use within the European Union, or present proper reasons for non-use.

Consequently, the CTM proprietor submitted comprehensive evidence including print-outs from the www.self.com website, newspaper articles, press releases, and evidence regarding previous legal decisions.

The Cancellation Division found that the "larger part of the evidence does not mention or refer to the mark" and the printouts from the www.self.com website fell outside the relevant time period, which ended in July 2007.

The evidence, however, included a WIPO Domain Name Decision , which stated that the application published a magazine under the title “Self”. However, magazines in class 16 were not contested by the applicant.

The Cancellation Division concluded: "Bearing in mind the above considerations, the Office deems that the CTM proprietor failed to prove genuine use of the mark "Self" in the relevant territory in relation to the goods and services in respect of which the present revocation request was filed."