OPPOSITION No B 1 955 510

Grupp Internacional, S.A., Elche Parque Ind., C/ Arquímedes, 1-3, 03203 Elche (Alicante), Spain (opponent), represented by Ibidem Abogados Estrategas, S.L.P., Juan de la Cierva, 43, Elche Parque Empresarial, Planta 2, local 1.1, 03203 Elche (Alicante), Spain (professional representative)

a g a i n s t

Panama Jack International, Inc., 230 Ernestine Street, Orlando, Florida 32801, United States of America (applicant), represented by Elzaburu, S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative)

On 26/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 955 510 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 10 224 021, ‘PANAMA JACK’ (word mark). The opposition is based on the following earlier rights:

(1) Community trade mark registration No 6 778 401, , for goods in Classes 3 and 18;

(2) Spanish trade mark registration No 1 317 366, , for goods in Class 25;

(3) Spanish trade mark registration No 1 678 825, , for goods in Class 25;

(4) Spanish trade mark registration No 1 552 318, , for goods in Class 25;

(5) Spanish trade mark registration No 1 678 824, , for goods in Class 18;

(6) Spanish trade mark registration No 2 913 484, for goods and services in Classes 9, 10, 14, 16, 21, 26, 28 and 35;

(7) Spanish trade mark registration No 2 952 947, ‘PANAMA JACK: BIEN HECHOS EN ESPAÑA’ (word mark), for goods in Class 25;

(8) Spanish registered commercial name No 279 273, ‘PANAMA JACK’, for goods in Classes 18 and 25.

The opponent invoked Article 8(1)(b) and 8(5) CTMR for earlier marks (2), (3), (4) and (5), Article 8(1)(b) CTMR only for earlier marks (1), (6) and (7) and Article 8(4) CTMR for earlier sign (8).

SUBSTANTIATION

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case, the notice of opposition was accompanied by incomplete evidence as regards the earlier Spanish trade mark registrations (2), (3), (4), (5) and (6) on which the opposition is based, inter alia.

On 11/01/2012 the opponent was given two months from the end of the cooling-off period to submit the above-mentioned evidence. This time limit expired on 16/05/2012.

The evidence filed by the opponent on 03/01/2012 with the notice of opposition for substantiating the earlier marks (2), (3), (4), (5) and (6) consisted of extracts from the Spanish Patent and Trademark Office database (SITADEX) and their translation.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks (2), (3), (4), (5) and (6), because it does not contain all the necessary elements. The notice of opposition contains the representation of the figurative marks (2), (3), (4), (5) and (6) on which the opposition is based, inter alia. However, in order to substantiate its earlier rights, the opponent was required to submit a certificate or an extract from the official database containing all the required information, including the representation of its marks. When an earlier mark is figurative, SITADEX extracts normally show the image not on the same page, but separately on an otherwise blank page. Consequently, the opponent should have filed this additional page stemming from the official relevant source showing the image, i.e. either from SITADEX itself (which reproduces the image on a separate page) or from another official source (such as its publication in the official bulletin).

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the earlier marks (2), (3), (4), (5) and (6).

The proceedings will continue with an analysis of the opposition in relation to the remaining earlier rights, namely earlier marks (1) and (7) (for which Article 8(1)(b) CTMR was invoked) and earlier sign (8) (for which Article 8(4) CTMR was invoked).

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

(1) Community trade mark registration No 6 778 401

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations).

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

(7) Spanish trade mark registration No 2 952 947

Class 25: Footwear clothing and headgear.

After a limitation, the contested goods are the following:

Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

The contested CTM application seeks protection for the entire class headings of Classes 20 and 24 of the Nice Classification. It was filed on 29/08/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade mark applications filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9^th edition.

Consequently, in order to take account of the entire alphabetical list in Classes 20 and 24 of the contested CTM application, the Opposition Division will compare the goods of the earlier marks with both (i) the general indications specified and (ii) any items in the alphabetical lists that do not fall within the natural and usual meaning of these general indications.

In the case of Classes 20 and 24, the Opposition Division has identified the following items in the alphabetical lists covered by the contested CTM application that do not fall within the natural and usual meaning of these general indications:

Class 20: Birds (Stuffed -); stuffed animals.

Class 24: Curtains of plastic; furniture coverings of plastic; plastic material [substitute for fabrics]; shower curtains of plastic.

Therefore, as regards these classes, both the general indications specified and the items listed above will be compared.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other (‘Canon criteria’).

Contested goods in Class 20

The contested furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; birds (stuffed -); stuffed animals are furniture, mirrors, picture frames and goods made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, and decorative stuffed animals, whereas the opponent’s goods are bleaching preparations; cleaning, polishing, scouring and abrasive preparations in Class 3, leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery in Class 18, and clothing, footwear and headgear in Class 25. The contested goods in Class 20 are considered dissimilar to the opponent’s goods in Classes 3, 18 and 25, as they have different natures and purposes, are distributed through different distribution channels and manufactured by different producers. Their end users are different and they are not complementary or in competition.

Contested goods in Class 24

The contested textiles and textile goods, not included in other classes; bed and table covers; curtains of plastic; furniture coverings of plastic; plastic material [substitute for fabrics]; shower curtains of plastic are all raw materials or goods made of these materials, whereas the opponent’s goods are bleaching preparations; cleaning, polishing, scouring and abrasive preparations in Class 3, leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery in Class 18, and clothing, footwear and headgear in Class 25.

The contested textiles and textile goods, not included in other classes; bed and table covers; curtains of plastic; furniture coverings of plastic; plastic material [substitute for fabrics]; shower curtains of plastic are considered dissimilar to the opponent’s goods in Classes 3 and 18 as they have different natures and purposes, are distributed through different distribution channels and manufactured by different producers. Their end users are different and they are neither complementary nor in competition.

When comparing the contested textiles and textile goods, not included in other classes with the opponent’s goods in Class 25, these goods are also dissimilar. The mere fact that these contested goods may be used for the manufacture of some of the opponent’s goods is not sufficient in itself to conclude that the goods are similar, because their natures, and target customers are different. Raw materials such as those mentioned above are intended for use in the manufacture of clothing, rather than for direct purchase by the final consumer. The differences in natures, intended purposes, methods of use and other relevant Canon criteria are obvious. They are not expected to be manufactured, marketed or provided by the same undertaking, or by economically linked undertakings. Furthermore, there are no similarities with regard to their distribution channels or sales outlets.

The same applies to the contested bed and table covers; curtains of plastic; furniture coverings of plastic; plastic material [substitute for fabrics]; shower curtains of plastic that are considered dissimilar to the opponent’s goods in Class 25. The opponent’s goods are intended to cover, hide, protect and clothe the body. The contested goods are coverings for beds, tables and furniture or curtains, and there are mainly for household purposes and interior decoration. The mere fact that contested goods are made of textile or plastic material, like some of the opponent’s goods in Class 25, is not enough to justify a finding of similarity. They serve completely different purposes. The sales outlets and producers of these goods are different. They are neither in competition nor are they complementary.

2. Conclusion

According to Article 8(1)(b) CTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) CTMR

The opponent also based its opposition on the Spanish registered commercial name No 279 273, ‘PANAMA JACK’ for goods in Classes 18 and 25.

According to Article 8(4) CTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) CTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) CTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) CTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) CTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) CTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (judgment of 05/07/2011, C‑263/09 P, ‘Elio Fiorucci’, paragraph 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis‑à‑vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, except for a registration certificate of the Spanish registered commercial name No 279 273, ‘PANAMA JACK’, and its translation, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked, namely the Spanish registered commercial name No 279 273. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded under Article 8(4) CTMR.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Eamonn KELLY

Francesca DINU

Plamen IVANOV

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.