The Cancellation Division concluded that it was clear that Davilex had commenced its use of the mark without the consent of the Freiherren von Richthofen. The licence negotiations commenced only after Davilex was notified of the prior rights, and the fact that the use was allowed to continue did not imply consent. Further, the fact that Davilex was subsequently recorded as a licensee and later as the proprietor of the registration did not alter this conclusion. Thus the only use that could be taken into account was use during the period that commenced on the date of the licence agreement.

What sort of use was there? Davilex submitted evidence of orders for a computer game called Der Rote Baron ('the Red Baron'). The Cancellation Division held that use of the mark DER ROTE BARON could not be taken into account as use of the mark RED BARON because the distinctiveness of the mark was altered: it was unlikely to be understood by members of the relevant public to mean 'the Red Baron', and even those who understood German would immediately perceive it as German, giving the mark a different visual impression and a clearly different phonetic pronunciation.

Davilex also submitted evidence of an order for 188 computer games bearing the mark RED BARON.  The Cancellation Division held that this was the only admissible instance of use. However. the order quantity was very low and, given the nature of the goods as mass market products, it merely amounted to token use; as such, this evidence was held to be insufficient to defend against the revocation claim, which therefore succeeded.

Source: note for World Trademark Review by Nicole Gernon and Niamh Hall, FRKelly, Dublin

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