COCOA | Decision 2696436

Date Published: Oct 22, 2017

OPPOSITION No B 2 696 436

Rives Pitman S.A., Aurora, 4, 11500 Puerto de Santa Maria (Cádiz), Spain (opponent), represented by Rodolfo De La Torre S.L., C/ San Pablo, nº15-3º, 41001 Sevilla, Spain (professional representative)

a g a i n s t

1528 Drinks, S.L., C/Cielo, 22, 11500 El Puerto de Santa Maria, Cádiz, Spain (applicant), represented by Algemeen Octrooi- en Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, The Netherlands (professional representative).

On 18/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 696 436 is upheld for all the contested goods, namely:

Class 32:        Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 33:        Alcoholic beverages.

2.        European Union trade mark application No 15 021 504 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 021 504 for the figurative mark , namely against all the goods in Classes 32 and 33. The opposition is based on European Union trade mark registration No 5 437 884, and Spanish trade mark registrations No 950 057 and No 1 980 711, all for the word mark ‘COCUA’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all of the trade marks on which the opposition is based.

The date of filing of the contested application is 20/01/2016. The opponent was, therefore, required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union, or Spain respectively, from 20/01/2011 to 19/01/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely:

European Union trade mark registration No 5 437 884 ‘COCUA’:

Class 32:        Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33:        Alcoholic beverages (except beers).

Spanish trade mark registration No 950 057 ‘COCUA’:

Class 33:        Anise; spirits and liqueurs in general.

Spanish trade mark registration No 1 980 711 ‘COCUA’:

Class 32:        Beers; mineral waters and sodas and other non-alcoholic drinks; fruit's drinks and juices; syrups and other preparations to make drinks.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 30/11/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 05/02/2017 to submit evidence of use of the earlier trade marks. On 03/02/2017, within the time limit, the opponent submitted evidence of use.

List of evidence

The evidence to be taken into account is the following:

• Invoices: copies of 68 invoices, dated from 04/02/2011 to 20/01/2016. The invoices were issued by the Spanish company Rives Pitman Distribuidora S.A., and addressed to several customers based in various locations in Spain (e.g. Avilés, Barcelona, Vigo, Mataró, La Coruña, Basauri, Málaga). According to the product descriptions, the goods sold included a range of ‘COCUA’ products (namely ‘Azul Cocua’, ‘Granadina Cocua’, ‘Kiwi Cocua’, ‘Lima Cocua’, ‘Maracuya Cocua’, ‘Melocoton Cocua Sin’, ‘Mora Cocua Sin’, ‘Manzana Cocua Sin’), as well as products under other brands (e.g. ‘Granadina Rives’, ‘Granadina Tropic Rives’, ‘Licor de Menta Rives’, ‘Licor Melocoton Rives’, ‘Vodka King Peter’, ‘Ron Conde Cuba Dulce’). The ‘COCUA’ branded goods were sold in sizeable quantities, indicated in boxes containing six bottles each. The quantities per transaction range from a couple of units to several hundreds of units, translating into transaction values reaching hundreds of Euro, and in some instances even several thousand Euro.

• Price lists: copies of three price lists for the ‘COCUA’ product range, dated 01/01/2012, 01/01/2014 and 01/01/2016. In the heading of each document, the ‘COCUA’ sign is displayed either as or . According to the product descriptions, the ‘COCUA’ product range includes ‘concentrated juices’ (lime, kiwi, grenadine, blue, blackcurrant, mint, or passion fruit flavour) and ‘liqueurs without alcohol’ (green apple, peach, or blackberry flavour). The price lists also feature images showing bottles with labels featuring the ‘COCUA’ sign:

• Product catalogues: excerpts from two product catalogues of the Spanish company Rives Pitman Distribuidora, S.A., dated 2012 and 2013, concerning the ‘COCUA’ range of ‘liqueurs without alcohol’ and ‘concentrated juices’, the former referring to drinks that are ready for consumption, and the latter being intended for mixing with water to make a refreshing beverage. The catalogue for 2012 contains images showing bottles with labels featuring the ‘COCUA’ sign: