EUIPO - DALTREY FUNDING LP v/ MEGA Spielgeräte Entwicklungs- und Vertriebsgesellschaft mbH & Co. KG
Board of Appeal of EUIPO
DALTREY FUNDING LP v/ MEGA Spielgeräte Entwicklungs- und Vertriebsgesellschaft mbH & Co. KG
The company DALTREY FUNDING LP, in application in this proceeding and on appeal, before the EUIPO, was represented by Karina Dimidjian-Lecomte, attorney at law assisted by Klervi Henry, attorney at law.
DALTREY is the owner of the worldwide portfolio of CSI brands, with the exception of the United States where this portfolio is held by the well-known media company CBS Broadcasting Inc. In particular, DALTREY owns the trademarks of the European Union CSI: NY and CSI: MIAMI, registered in 2007.
However, in October 2014, the German company MEGA Spielgeräte Entwicklungs- und Vertriebsgesellschaft mbH & Co. KG (hereinafter "MEGA") brought a revocation for non-use action against the trademarks CSI: NY and CSI: MIAMI for part goods and services in classes 9, 28 and 41.
Therefore, DALTREY had to demonstrate a serious use of its trademarks within the Union Europe for the contested products and services for the period from October 2009 to October 2014.
If the reputation of the trademarks CSI: NY and CSI: MIAMI could not be challenged, given the very high popularity of eponymous series broadcast in Europe and worldwide, the examination of proof of use made by the Office remains very strict.
Indeed, in its decisions of November 12 and December 17, 2015, the EUIPO Cancellation Division recognized the use of the marks in question for only part of the disputed products and services, despite the extensive evidence submitted.
The Office carried out a careful examination, for example, of the video games in question and considered that proof of use was provided for “video games used on computers” but not for “video games other than for computers”.
The Office has, on its own, determined sub-categories of products in light of the evidence submitted.
Similarly, with respect to the disputed product “computer software, including gaming software”, the Office made an unexpected distinction in considering that the proof of use was provided for “computer software including PC game software” but not for “computer software other than PC game software”.
In this context, DALTREY appealed against these decisions.
On September 14, 2016, after a further review of the submitted evidence and additional evidence, the Board of Appeal finally recognized the genuine use, within the European Union, of the CSI: NY and CSI: MIAMI marks for the main products and services of DALTREY.
The Board of Appeal decided that the evidence submitted, including, inter alia, license agreements and sworn testimony, globally demonstrates the genuine use of DALTREY’s trademarks for the vast majority of covered goods and services.