Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1172536
`
`Filing date:
`
`11/15/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92076531
`
`Party
`
`Correspondence
`Address
`
`Defendant
`FASHIONTV.COM GmbH
`
`RAYMOND J DOWD
`DUNNINGTON BARTHOLOW & MILLER LLP
`SIXTINE BOUSQUET LAMBERT
`230 PARK AVENUE 21ST FLOOR
`NEW YORK, NY 10169
`UNITED STATES
`Primary Email: rdowd@dunnington.com
`Secondary Email(s): sbousquet@dunnington.com
`212-682-8811
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Other Motions/Submissions
`
`Raymond J. Dowd
`
`rdowd@dunnington.com
`
`/Raymond J. Dowd/
`
`11/15/2021
`
`Attachments
`
`FTV MSJ_Reply_11.15.2021.pdf(849793 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Fashion One Television LLC,
` Petitioner,
`
` v.
`
`fashiontv.com GmbH
` Respondent.
`
`
`
`Cancellation No. 92076531 (Parent case)
`Cancellation No. 92076634
`
`Reg. Nos. 5,477,536; 3,530,563
`
`Marks:
`F FASHIONTV
`fashiontv
`
` RESPONDENT’S S REPLY BRIEF TO PETITIONER’S PRELIMINARY RESPONSE
`TO RESPONDENT’S MOTION FOR JUDGMENT ON THE PLEADINGS AND
`ALTERNATIVELY FOR SUMMARY JUDGMENT
`
`
`
`TO THE HONORABLE TRADEMARK TRIAL AND APPEAL BOARD:
`
`In these consolidated cancellation proceedings brought against the mark fashiontv No.
`
`3530563 (the “fashiontv Mark”) and the mark F Fashion TV No. 5477536 (the “F Fashion TV
`
`Mark” and together with the fashiontv Mark, the “FTV Marks”), Fashiontv.com GmbH
`
`(”Respondent”) by and through its counsel of record, Dunnington Bartholow & Miller LLP, hereby
`
`replies to Petitioner Fashion One Television LLC (“Petitioner”)’s “Preliminary Response to
`
`Respondent’s Motion for a Judgment on the Pleadings or for Summary Judgment” dated October
`
`25, 2021 (“Response”) in further support of Respondent’s Motion for a Judgment on the Pleadings
`
`or, for Summary Judgment dated October 4, 2021 (“Motion”).
`
`I.
`
`PRELIMINARY STATEMENT
`
`
`
`On October 4, 2021, Respondent moved (1) for a judgment on the pleadings because
`
`Petitioner’s petitions to cancel contain no allegation supporting Petitioner’s standing and or any
`
`valid ground for cancellation; and (2) alternatively for summary judgment (a) based on admissible
`
`
`
`1
`
`

`

`and undisputed evidence of use Respondent provided in the form of a declaration, screenshots
`
`from relevant websites and business documents, and (b) because Mr. Gleissner, as former licensee,
`
`knew or should have known Respondent’s use of the mark and brought these proceedings in bad
`
`faith with an intent to deceive the USPTO and the Board.
`
`Petitioner’s Response dated October 25, 2021, argues that summary judgment is not
`
`warranted because (1) Petitioner and Respondent are competitors with a long history of disputes
`
`over
`
`the marks FASHION TELEVISION and FASHION ONE and Respondent has
`
`misrepresented the status of the Settlement Framework Agreement between the parties, (2)
`
`Petitioner has standing because it has spent millions of dollars to acquire the FASHION
`
`TELEVISION mark which is confusingly similar to the FASHION TV mark and has pleaded a
`
`valid ground for cancellation when it argued that Respondent’s “Web Shop” is no longer
`
`functional, (3) Petitioner has vigorously defended the FASHION ONE brand despite Respondent’s
`
`attempts to register the mark FASHION ONE in more than 20 jurisdictions, (4) Petitioner is
`
`entitled to discovery because Respondent has produced nothing to substantiate actual use of the
`
`FTV Marks, and (5) Petitioner requests a 60-day extension to reply because its key associate who
`
`had records of substantiative evidence in support of Petitioner’s argument passed away in April
`
`2021.
`
`These arguments should be rejected for the following reasons. First, summary judgment is
`
`warranted because Petitioner has not satisfied its burden of showing a genuine issue of material
`
`fact that the FTV Marks have not been abandoned and Petitioner’s recitation of the parties’
`
`litigation history is completely irrelevant to the resolution of the Motion. Second, judgment on the
`
`pleadings is warranted because (a) Petitioner’s acquisition of the FASHION TELEVISION brand
`
`does not create standing, (b) Petitioner fails to plead a valid ground for cancellation by merely
`
`
`
`2
`
`

`

`arguing that one of Respondent’s online retail store using the fashiontv Mark is not functional
`
`without describing the research or the methodology used to get to this conclusion, and (c) Petitioner
`
`fails to even mention Respondent’s F Fashion TV Mark. Third, summary judgment is warranted
`
`because Petitioner has not satisfied its burden of showing a genuine issue of material fact that the
`
`FTV Marks have not been abandoned and Petitioner’s recitation of disputes between the parties
`
`over the FASHION ONE mark is irrelevant to the present proceedings. Fourth, Petitioner is not
`
`entitled to discovery because Petitioner has not satisfied its burden of showing a genuine issue of
`
`material fact that the FTV Marks have not been abandoned that would warrant discovery. Fifth,
`
`Petitioner is not entitled to an extension because Petitioner fails to provide an affidavit regarding
`
`the documents in the possession of Petitioner’s deceased key associate, never asked for such
`
`extension until the date of its deadline to oppose the Motion, and already had an opportunity to
`
`respond but yet failed to show any genuine issue of material fact that Respondent has not
`
`abandoned use of the FTV Marks.
`
`
`
`
`
`II.
`
`ARGUMENT
`
`A. Summary Judgment Is Warranted Because Petitioner Has Not Satisfied Its Burden
`Of Showing A Genuine Issue Of Material Fact That The FTV Marks Have Not Been
`Abandoned And Petitioner’s Recitation Of The Parties’ Litigation History Is
`Completely Irrelevant To The Resolution Of The Motion
`
`Petitioner’s Response fails to raise a genuine issue of material fact regarding Petitioner’s
`
`abandonment claim as Petitioner solely recites the parties’ litigation history. This recitation is
`
`nothing more than a desperate attempt by Petitioner to mislead the Board as to the real issue of
`
`these proceedings, which is to determine whether Respondent uses the FTV Marks in the US.
`
`Once Respondent presented evidence supporting the position that the mark in question was
`
`in use, Petitioner has to go beyond the mere pleadings and identify specific facts showing a genuine
`
`
`
`3
`
`

`

`issue. See Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir. 1994) (en banc) (per curiam).
`
`Petitioner’s burden to show a genuine issue of material fact is not satisfied with “some
`
`metaphysical doubt as to the material facts, by conclusory allegations, by unsubstantiated
`
`assertions, or by only a scintilla of evidence.” Id. (citations omitted).
`
`Petitioner’s attempt to raise a genuine issue of material fact is rife with conclusory
`
`allegations and unsubstantiated assertions that are convenient for Petitioner’s desired outcome.
`
`The facts and evidence explicitly demonstrate that Respondent is currently using the FTV Marks.1
`
`Instead of addressing Respondent’s admissible and undisputable evidence of use of the
`
`FTV Marks, Petitioner rehashes the same exact allegations it asserted in its petitions. Specifically,
`
`Petitioner alleges that the fashiontv Mark is not in use simply because Respondent’s “Web Shop”
`
`is no longer functional despite relevant evidence provided by Respondent of at least five other
`
`functional online retail stores of Respondent actually using the fashiontv Mark. See Response at
`
`7. Further, Petitioner egregiously fails to even mention the F Fashion TV mark.
`
`In complete disregard to Respondent’s admissible and undisputable evidence, Petitioner
`
`focuses on the parties’ litigation history that has absolutely no relevance here. Specifically,
`
`Petitioner alleges that (1) “Respondent … started a campaign for massive attacks, starting in April
`
`2013 and lasting for several years” against Petitioner, (2) “Respondent … started applying for the
`
`trademark “Fashion One” in 2013”, (3) the “2016 ‘Settlement Framework Agreement’ … never
`
`matured into permanency”, (3) “Respondent started cancellation actions in 2013 or 2014 related
`
`
`1 See Motion at 10-12 and Dowd Decl. Exhibits J-M.
`
`
`
`4
`
`

`

`to the brand ‘Fashion Television’” and (4) “Respondent has been engaged in an extensive
`
`campaign to sabotage Petitioner.” See Response 2-3.
`
`Such unsubstantiated allegations are blatantly irrelevant as to the question of Respondent’s
`
`abandonment of the FTV Marks.
`
`Even assuming arguendo that Petitioner could show non-use of the FTV Marks by
`
`Respondent, Petitioner still has not presented any evidence that Respondent ever had any intent to
`
`abandon the FTV Marks. Respondent’s evidence is clear and uncontroverted—it had and has no
`
`such intent to abandon the FTV Marks. The clear standard for abandonment of this valuable
`
`intellectual property right is discontinued use with intent not to resume such use. Petitioner’s
`
`failure to address this critical element and present any evidence to controvert Respondent’s
`
`evidence is fatal to Petitioner claim.
`
`Because Petitioner failed to satisfy his burden by raising a genuine issue of material fact,
`
`Respondent is entitled to summary judgment as a matter of law.
`
`B. Judgment On The Pleadings Is Warranted Because Petitioner’s Acquisition Of The
`FASHION TELEVISION Brand Does Not Create Standing, And Petitioner Fails To
`Plead A Valid Ground For Cancellation By Merely Arguing That One Of
`Respondent’s Online Retail Store Using The fashiontv Mark Is No Longer Functional
`And By Failing To Even Mention Respondent’s F Fashion TV Mark
`
`
`
`Petitioner has failed to set forth any factual basis for asserting that it believes that it will be
`
`damaged as a result of the continued registration of the FTV Marks and cannot point to any
`
`evidence supporting damages.
`
`Petitioner’s allegations that “Petitioner has spent millions of Dollars on acquiring the rights
`
`to the brand “Fashion Television”, a television channel established by what is now known as Bell
`
`Media, one of the premier media companies in Canada” has no relevance here for the following
`
`
`
`5
`
`

`

`reasons. First, the SDNY ruled that the mark FASHION TELEVISION was generic. See Chum
`
`Ltd. v. Lisowski, 2001 WL 243541 (2001). Therefore, based on res judicata, Petitioner is barred
`
`from asserting its rights to the FASHION TELEVISION brand, which could therefore not create
`
`standing in the present consolidated proceedings. Second, even assuming arguendo that the
`
`FASHION TELEVISION mark was not generic, the mark subject of the present proceedings is
`
`Petitioner’s Application for the mark F FASHION|TV filed on May 28, 2017 and not the mark
`
`FASHION TELEVISION, as Petitioner erroneously alleges. Third, Petitioner’s F FASHION|TV
`
`Application is under section 1(b) and is not and has never been in use in the US. See Motion at 8-
`
`9 and Dowd Decl. Exhibit I. Therefore, Petitioner has failed to plead its standing to maintain these
`
`proceedings.
`
` Regarding whether Petitioner has pleaded a valid ground for cancelling the registration at
`
`issue, Federal Rule of Civil Procedure 8(a)(2) requires that a pleading contain a “short and plain
`
`statement of the claim showing that the pleader is entitled to relief.” Petitioner’s whole argument
`
`is that Petitioner has “ascertained the fact that the “Web Shop” Respondent claimed as Evidence
`
`of Use is permanently non functional” because “[i]t does not take any orders, presumably because
`
`the account of the underlying ecommerce provide is no longer in good standing.” See Response at
`
`7.
`
`First, although Petitioner alleges in a cursory manner that research was conducted, the
`
`failure to plead facts describing the research, its methodology, and its results renders the
`
`allegations implausible. Second, Petitioner willfully ignores and fails to address Respondent’s
`
`admissible and undisputable evidence that the fashiontv Mark is still in use in connection with
`
`online retail stores as demonstrated by Dowd Decl. Exhibit M which shows screenshots of at least
`
`five of Respondent’s online retail shops currently using the fashiontv Mark. See Motion at 12 and
`
`
`
`6
`
`

`

`Dowd Decl. Exhibit M. Third, it is worth noting that Petitioner does not even bother to address
`
`any allegation of non-use regarding Respondent’s F Fashion TV Mark, yet also part of these
`
`proceedings.
`
`Because Petitioner fails to allege or provide any factual basis supporting the contention
`
`that Petitioner is damaged by the continued registration of the FTV Marks or any grounds for
`
`which cancellation is an available remedy to Petitioner, Petitioner’s Petitions for Cancellation
`
`should be dismissed.
`
`C. Summary Judgment Is Warranted Because Petitioner Has Not Satisfied Its Burden
`Of Showing A Genuine Issue Of Material Fact That The FTV Marks Have Not Been
`Abandoned And Petitioner’s Recitation Of Disputes Between The Parties Over The
`FASHION ONE Mark Is Irrelevant To The Present Proceedings
`
`As already demonstrated above in Point A, Petitioner’s Response fails to raise a genuine
`
`issue of material fact regarding Petitioner’s claim of abandonment when Petitioner solely makes
`
`unsubstantiated and irrelevant allegations regarding the parties’ disputes over the FASHION ONE
`
`Mark.
`
`Again, allegations that “Respondent has attempted to register trademarks for Petitioners
`
`‘Fashion One’ channel in more than 20 jurisdictions and that all trademark offices have concluded
`
`that trademarks registered by the Respondent are to be cancelled for either bad faith or non use”
`
`are irrelevant for the issue at hand which is whether Respondent uses the FTV Marks -- which it
`
`does as demonstrated by Respondent’s admissible and undisputable evidence.
`
`What Petitioner fails to disclose, however, is that the European Union Intellectual Property
`
`Office (“EUIPO”) recently ruled on Mr. Gleissner’s bad faith in a similar cancellation proceeding
`
`that Mr. Gleissner initiated through a “shell company.” Specifically, the EUIPO stated that the
`
`proceeding was fraudulent and abusive given the number of “simultaneous and massive attacks on
`
`
`
`7
`
`

`

`trade marks” initiated before the EUIPO by “‘empty shell’ companies belonging and created by
`
`the same person, Mr. Gleissner.” See Dowd Suppl. Decl. Exhibit A at 13.
`
`
`
`Throughout Petitioner’s Response, Petitioner uses nothing more than irrelevant and
`
`unsubstantiated allegations to try and conjure up a factual issue. However, what Petitioner is
`
`unable to do is raise a genuine issue of material fact that would preclude this Board from finding
`
`that Respondent has not abandoned the use of the FTV Marks. Consequently, because there is no
`
`genuine issue of material fact regarding Respondent’s continuous use and intent to use the FTV
`
`Mark, Petitioner’s claims should be dismissed as a matter of law.
`
`D. Petitioner Is Not Entitled To Discovery Because Petitioner Has Not Satisfied Its
`Burden Of Showing A Genuine Issue Of Material Fact That The FTV Marks Have
`Not Been Abandoned That Would Warrant Discovery
`
`Petitioner fails to demonstrate any genuine issue of material fact that the FTV Marks have
`
`not been abandoned that would warrant discovery.
`
`Petitioner asserts that it is entitled to discovery, because the “procedure of the Trademark
`
`Trial and Appeals Board specifically include the period of discovery that establishes the fact of
`
`the underlying case” and discusses the “economic considerations” of the present motion, alleging
`
`“would undoubtedly be much easier to file,” and that Respondent’s relevant arguments and
`
`undisputable evidence are “unsubstantiated claims and hearsay.” See Response at 12.
`
`Further, instead of addressing any of Respondent’s evidence that indisputably shows use
`
`of the FTV Marks, Petitioner frivolously concludes without substantiation that it is entitled to
`
`discovery because “Respondent in fact has nothing to substantiate actual use.” See Response at
`
`14.
`
`
`
`8
`
`

`

`However, and as demonstrated above, Petitioner fails to address the undisputed evidence
`
`that Respondent is using the FTV Marks and to demonstrate any issue of material fact that the FTV
`
`Marks have not been abandoned by Respondent.
`
`Accordingly, Petitioner should not be entitled to discovery as there is no triable issue of
`
`facts that the FTV Marks are still in use.
`
`E. Petitioner Is Not Entitled To An Extension Because Petitioner Fails To Provide An
`Affidavit Regarding The Documents In The Possession Of Petitioner’s Deceased Key
`Associate, Never Asked For Such Extension Until The Date Of The Deadline To
`Oppose The Motion, And Already Had An Opportunity To Respond But Yet Failed
`To Show Any Genuine Issue Of Material Fact That Respondent Has Not Abandoned
`Use Of The FTV Marks.
`
`Petitioner requests a 60-day extension arguing that its key associate, Ivan Seevens, passed
`
`away in April 2021, and had many records in its possession that are not readily available to
`
`Petitioner. Specifically, Petitioner requests an extension so it can file “extensive material” in
`
`support of its arguments which, as stated above, are irrelevant to the present proceedings. See
`
`Response at 4-5. This extension request should be denied for at least three reasons.
`
`First, Petitioner failed to provide an affidavit describing the records Mr. Seevens had in his
`
`possession and how such records could be relevant to the present proceedings.
`
`Second, Mr. Seevens allegedly passed away in April 2021, six months prior to Respondent
`
`filing of the Motion. However, Petitioner waited until the date of its deadline to respond to
`
`Respondent’s Motion, 20 days after Respondent’s Motion, to request and extension.
`
`Third, Petitioner already had an opportunity to respond but failed to address any of
`
`Respondent’s evidence and show any genuine issue of material fact pertaining to Respondent’s
`
`use of the FTV Marks.
`
`Accordingly, Petitioner’s extension request should be denied.
`
`
`
`
`
`9
`
`

`

`III. CONCLUSION
`
`WHEREFORE, Respondent respectfully requests that summary judgment be granted in
`
`favor of Respondent, that Petitioner’s claims be dismissed with prejudice and that Petitioner take
`
`nothing from this case, and that Respondent be awarded such other and further relief to which they
`
`may be justly entitled.
`
`Dated: New York, New York
`November 15, 2021
`
`DUNNINGTON BARTHOLOW & MILLER LLP
`Attorneys for Respondent FashionTV GmbH
`
`By: __/s/Raymond J. Dowd_________
`Raymond J. Dowd
`Sixtine Bousquet-Lambert
`230 Park Avenue, 21st Floor
`New York, New York 10169
`Tel: (212) 682-8811
`rdowd@dunnington.com
`sbousquet@dunnington.com
`
`10
`
`

`

`CERTIFICATE OF SERVICE AND FILING
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Respondent’s Motion for a judgment
`on the pleadings and alternatively, for summary judgment was served on pro se Petitioner on the
`date indicated below via email:
`
`
`
`November 15, 2021
`
`
`
`
`
`
`
`_________/s/ Sixtine Bousquet-Lambert_______
`Sixtine Bousquet-Lambert
`
`11
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Fashion One Television LLC,
`
`
`
` Petitioner,
`
` v.
`
`fashiontv.com GmbH
`
` Respondent.
`
`
`
`Cancellation No. 92076531 (Parent case)
`Cancellation No. 92076634
`
`Reg. Nos. 5,477,536; 3,530,563
`
`Marks:
`F FASHIONTV
`fashiontv
`
`SUPPLEMENTAL DECLARATION OF RAYMOND J. DOWD IN SUPPORT OF
`RESPONDENT’S MOTION FOR JUDGMENT ON THE PLEADINGS AND
`ALTERNATIVELY FOR SUMMARY JUDGMENT
`
`
`
`
`Raymond J. Dowd, declared subject to penalty of perjury under the laws of the United States as
`
`follows:
`
`1.
`
`My name is Raymond J. Dowd. I am over the age of 18 years old and am
`
`competent to testify to the facts in this Declaration. This Declaration is based upon my personal
`
`knowledge of the facts stated in this Declaration.
`
`2.
`
`I am a partner at the law firm of Dunnington Bartholow & Miller LLP, attorneys
`
`for Respondent Fashiontv.com GmbH (”Respondent”) in these consolidated cancellation
`
`proceedings.
`
`3.
`
`I submit this Declaration in further support of Respondent’s motion for a judgment
`
`on the pleadings and alternatively, for summary judgment.
`
`4.
`
`On February 11, 2020, the EUIPO Grand Board of Appeal, rendered a decision in
`
`a cancellation proceeding initiated by one of Mr. Gleissner’s shell company, ruling on Mr.
`
`
`
`
`
`

`

`Gleissner bad faith and providing that the proceeding was fraudulent and abusive given the
`
`number of “simultaneous and massive attacks on trade marks” initiated before the EUIPO by
`
`“‘empty shell’ companies belonging and created by the same person, Mr. Gleissner.” A true and
`
`correct copy of the decision is attached hereto as Exhibit A.
`
`5.
`
`I declare under penalty of perjury under the laws of the United States of America
`
`that the foregoing is true and correct.
`
`
`
`November 15, 2021
`
`__/s/Raymond J. Dowd___
`Raymond J. Dowd
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`
`
`
`
`
`
`
`
`THE BOARDS OF APPEAL
`
`
`
`DECISION
`of the Grand Board of Appeal
`of 11 February 2020
`
`In case R 2445/2017-G
`
`Fashion TV Brand Holdings C.V.
`Keizersgracht 62
`1015 CS Amsterdam
`Netherlands
`
`
`
`
`Cancellation Applicant / Appellant
`
`
`v
`
`CBM Creative Brands Marken GmbH
`Kalandergasse 4
`8045 Zürich
`Switzerland
`
`
`
`
`EUTM Proprietor / Defendant
`
`
`represented by BIRD & BIRD LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany
`
`
`
`APPEAL relating to Cancellation Proceedings No 13 262 C (European Union trade
`mark No 1 039 510)
`
`THE GRAND BOARD OF APPEAL
`
`(Rapporteur),
`(Chairperson), D. Schennen
`of Th. M. Margellos
`composed
`G. Humphreys
`(Member), S. Stürmann
`(Member),
`J.-K. Govers
`(Member),
`Ph. von Kapff (Member), C. Bartos (Member), L. Marijnissen (Member) and
`S. Martin (Member)
`
`Registrar: H. Dijkema
`
`gives the following
`
`Language of the case: English
`
`11/02/2020, R 2445/2017-G, Sandra Pabst
`
`

`

`
`
`2
`
`Decision
`
`Summary of the facts
`
`1 On 15 July 2016, Fashion TV Brand Holdings C.V. (‘the cancellation applicant’)
`filed a request for the revocation of European Union trade mark registration
`No 1 039 510 ‘Sandra Pabst’ (word mark) registered on 19 February 2001 and
`duly renewed. The request was directed against all the goods and services covered
`by the EUTM, namely:
`
`Class 3 - Soaps, perfumery, essential oils, cosmetics, hair lotions;
`
`Class 16 - Paper, cardboard and goods made from these materials (included in Class 16); printed
`matter, bookbinding articles, photographs, stationery, adhesives for stationery or household
`purposes; artists' materials; plastic materials for packaging (included in Class 16); playing cards,
`printers' type, printing blocks.
`
`Class 18 - Leather and imitations of leather, and goods made of these materials (included in
`Class 18); animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks;
`saddlery;
`
`Class 20 - Furniture, mirrors, picture frames, goods included in Class 20, of wood, cork, reed,
`cane, wicker, tortoiseshell, amber, mother-of-pearl, meerschaum and substitutes for all these
`materials, or of plastics;
`
`Class 21 - Household or kitchen utensils and containers; combs and. sponges, brushes, material for
`brushes; articles for cleaning purposes, unworked or semi-worked glass, glassware, porcelain and
`earthenware, included in Class 21;
`
`Class 23 - Yarns and threads, for textile use;
`
`Class 24 - Textiles and textile goods, included in class 24; bed and table covers;
`
`Class 25 - Clothing, footwear, headgear;
`
`Class 27 - Carpets, rugs, mats and matting, linoleum and other materials for covering existing
`floors, wall hangings (non-textile);
`
`Class 35 - Advertising, business management, business administration, office functions;
`
`Class 42 - Design.
`
`2 The grounds for the revocation were those laid down in Article 58(1)(a) EUTMR,
`namely lack of genuine use. The request was filed by electronic communication
`(and facsimile) and signed by Ivan Seevens. The request was reasoned as follows:
`
`‘European Trademark Registration No. 001039510 “Sandra Pabst” is due for cancellation for non-
`use according to Article 51(1) EUTMR as it has not been put to genuine use in the European
`community in connection with all the protected goods and services in Class 3, 16, 18, 20, 21, 23,
`24, 25, 27, 35, 42 Within a continuous period of five years, and there are no reasons for non-use.
`
`The Applicant conducted a search for any possible indication of a genuine use of the Trademark
`for goods and services in Class 3, 16, 18, 20, 21, 23, 24, 25, 27, 35, 42 but could not reveal any
`evidence according to which the Trademark is in fact in use for goods and services in Class 3, 16,
`18, 20, 21, 23, 24, 25, 27, 35, 42.
`
`11/02/2020, R 2445/2017-G, Sandra Pabst
`
`

`

`
`
`3
`
`Accordingly, no genuine use of European Trademark Registration No. 001039510 “Sandra Pabst”
`for goods and services in Class 3, 16, 18, 20, 21, 23, 24, 25, 27, 35, 42 is taking place.
`
`It is therefore respectfully requested that European Trademark Registration No. 001039510
`“Sandra Pabst” be revoked due to non-use for all goods and services in Class 3, 16, 18, 20, 21, 23,
`24, 25, 27, 35, 42.’
`
`3 Within the time limit set by the Cancellation Division to that effect, the EUTM
`proprietor filed various documents in order to prove genuine use of the mark. The
`EUTM proprietor explained that it belongs to the ‘Peek & Cloppenburg’ group,
`which runs more than 100 fashion and clothing stores in Europe. The EUTM
`proprietor believed that the cancellation applicant could have easily found that
`there was actual use of the mark on its website.
`
`4 The EUTM proprietor also raised the defence that the revocation request was filed
`as an abuse of law and accused the cancellation applicant of having filed the
`revocation request with the mere intention of blackmailing it, relying on the
`following facts and evidence:
`
` The cancellation applicant has filed requests for revocation not only against
`the present EU trade mark, but also against 36 other EUTMs owned by the
`EUTM proprietor or companies belonging to the ‘Peek & Cloppenburg’
`group, within a short space of time.
`
`
`
`In 2014, Fashion One Television LLC, a company linked to the cancellation
`applicant and founded by Michael Gleissner, unsuccessfully tried to purchase
`two of those trade marks (for the sign ‘fashionnow’). Michael Gleissner was
`directly involved in these negotiations and confirmed his link with the
`cancellation applicant in these negotiations.
`
` The cancellation applicant filed all these 37 revocation requests, including
`some against trade marks for which it was apparent and obvious that they
`were actually being used. Within the negotiations the other party indicated
`that it was prepared to withdraw the revocation requests once the
`‘fashionnow’ trade marks were assigned to it. It is apparent that the
`cancellation applicant is not interested in the 37 marks except the two for the
`sign ‘fashionnow’ and is using the revocation requests for the sole purpose of
`exerting pressure on the EUTM proprietor.
`
` This is further stressed by the fact that responding to a revocation request for
`non-use is time-consuming and costly; it entails the risk of losing trade mark
`rights and, exponentially so, if this is done in a large number of cases.
`
` The cancellation applicant is a company which was founded only a couple of
`days before the revocation request was filed (namely on 15 July 2016) and it
`has a ‘virtual office’ (letterbox) address, which shows that it was established
`for the sole purposes of conducting all the present procedures and it does not
`have its own business activity.
`
`11/02/2020, R 2445/2017-G, Sandra Pabst
`
`

`

`
`
`4
`
` The cancellation applicant is linked to M. Gleissner, who was directly
`involved in the negotiations and confirmed the link with the cancellation
`applicant’s company.
`
` Companies linked to M. Gleissner also filed 68 applications for revocation
`concerning non-use before the UK Office, which, in a decision of
`18 January 2017 regarding a trade mark held by Apple Inc., found that there
`was an abuse of law.
`
` Companies linked to M. Gleissner have also filed various trade mark
`applications in their own name for trade marks corresponding to the marks
`held by the EUTM proprietor or companies belonging to the ‘Peek &
`Cloppenburg’ group.
`
`5 The Cancellation Division found it expedient to deal with the abuse of process
`defence first, before assessing the proof of use in substance. The cancellation
`applicant was given a time limit of two months to respond to the EUTM
`proprietor’s observations in that regard. The cancellation applicant did not file
`observations.
`
`6 On 26 September 2017 the Cancellation Division took the contested decision by
`which it rejected the request for revocation in its entirety and ordered the
`cancellation applicant to bear the costs.
`
`7 The Cancellation Division rejected the request for revocation as unfounded on the
`grounds that the cancellation applicant had tried to rely on Article 58(1)(a)
`EUTMR for abusive ends, i.e. for ends which were not related to the public
`interest underlying that provision. There was, consequently, no need to examine
`the extensive proof of use filed by the EUTM proprietor. In detail the
`Cancellation Division reasoned that:
`
` Although there is a public interest in removing non-used marks from the
`register, this cannot be interpreted as an absolute principle that would oblige
`the Office to turn a blind eye to any type of circumstances surrounding a
`particular case.
`
` The Cancellation Division relied on the ‘Kratzer’ judgment of the Court of
`Justice (28/07/2016, C-423/15, Kratzer, EU:C:2016:604) according to which
`administrative or judicial actions may not be entertained when they constitute
`a clear abuse of law or process. That entails a combination of subjective and
`objective elements.
`
` As to the objective elements of the present case, the massive filing of
`requests for revocation is not in line with the purposes of Article 58(1)(a)
`EUTMR. As explained by the EUTM proprietor, in most cases the respective
`marks are visibly present on the market.
`
` The facts and arguments put forward by the EUTM proprietor as regards the
`abusive conduct have not been challenged by the cancelation applicant.
`
`11/02/2020, R 2445/2017-G, Sandra Pabst
`
`

`

`
`
`5
`
` The massive filings of revocation requests will not result in the purpose
`pursued by Article 58(1)(a) EUTMR. The revocation requests are directed
`against trade marks which are visibly present on the market and there is no
`public interest in forcing the EUTM proprietor to spend a substantial amount
`of time and resources in demonstrating this.
`
` The fact that the cancellation applicant has indicated its readiness to
`withdraw all the revocation requests if the EUTM proprietor assigns some of
`its trade marks shows that the achievement of the goal underlying
`Article 58(1)(a) EUTMR is purely contingent.
`
` As to the subjective element, there are sufficient indications to enable the
`conclusion to be drawn that the essential aim of all the revocation requests
`was to obtain an undue advantage. Specifically the cancellation applicant
`sought to force the EUTM proprietor to act against its wishes or otherwise to
`have to defend its trade mark portfolio in a high number of simultaneous
`cases in different jurisdictions.
`
`Appeal proceedings
`
`8 On 16 November 2017, the cancellation applicant filed a notice of appeal,
`followed by a statement of grounds of appeal on 25 January 2018. The
`cancellation applicant requests that the contested decision be overturned, the
`Cancellation Division examine the evidence submitted by the EUTM proprietor
`as to whether it proves genuine use of the contested EUTM and award it the costs
`of the proceedings.
`
`9 The arguments raised in the statement of grounds may be summarised as follows:
`
` The EUTM proprietor’s submissions filed on 19 December 2016 should not
`have been taken into account, as they were filed one day late.
`
` The cancellation applicant accuses the Cancellation Division of having based
`the contested decision on distorted facts and elements taken out of conte