OPPOSITION No B 2 910 514

Empresa Cubana del Tabaco (Cubatabaco), Calle Nueva No. 75 e/ Universidad y Pedroso, municipio Cerro, La Habana, Cuba (opponent), represented by ARS Privilegium S.L., Felipe IV 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

Adalya Tobacco International SPRL, Avenue Louise 486/5, 1050, Brussels, Belgium (applicant) represented by Segbert & Kollegen, Friedrich-Ebert-Str. 9-11, 41352 Korschenbroich, Germany (professional representative)

On 18/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 910 514 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 European Union trade mark application No 16 695 504 for the word mark ‘Wind of Cuba’ for goods in Class 34. The opposition is based on the appellation of origin ‘CUBA’ registered at WIPO pursuant to the Lisbon Agreement and protected in France for raw or manufactured tobacco as well as products made of tobacco. The opponent invoked Article 8(6) EUTMR (previously Article 8(4a) of Regulation No 207/2009).

CUBA	Wind of Cuba
Earlier appellation of origin	Contested sign

DESIGNATIONS OF ORIGIN OR GEOGRAPHICAL INDICATIONS — ARTICLE 8(6) EUTMR

According to Article 8(6) EUTMR, upon opposition by any person authorised under the relevant law to exercise the rights arising from a designation of origin or a geographical indication, the trade mark applied for must not be registered where and to the extent that, pursuant to the Union legislation or national law providing for the protection of designations of origin or geographical indications:

(i) an application for a designation of origin or a geographical indication had already been submitted, in accordance with Union legislation or national law, prior to the date of application for registration of the EU trade mark or the date of the priority claimed for the application, subject to its subsequent registration;

(ii) that designation of origin or geographical indication confers the right to prohibit the use of a subsequent trade mark.

a) The right under applicable law

Notwithstanding that Article 8(6) EUTMR does not explicitly mention geographical indications protected under international agreements, the reference to ‘Union legislation’ and ‘national law’ naturally includes international agreements as they form part of the legal order of the Union or the Member State who is a party to the international agreement.

In order for an opposition under Article 8(6) EUTMR to be successful on the basis of a right deriving from any international agreement, the provisions under the international agreement must be directly applicable and they must allow the beneficiary of the relevant geographical indication to take direct legal action to prohibit the use of a subsequent trade mark

An appellation of origin is a type of geographical indication. Geographical indications owe their protection either to a registration or similar recognition system or to their use in the course of trade. The protection systems in the Member States vary widely.

Appellations of origin are geographical indications where there is a particular link between the geographical origin and the quality or other characteristics of the product or service. Appellations of origin protected under the Lisbon Agreement are registered, albeit on request by the industrial property office of a State party to the agreement, in the name of a person, which can be a natural person or a public or private legal entity (Article 5(1) of the Lisbon Agreement). Article 8 of the Lisbon Agreement provides that legal action required for ensuring the protection of appellations of origin protected under the Agreement may be taken under the provisions of the national legislation either at the instance of the competent national authority or at the request of the public prosecutor, or by any interested party. The registered owner of such an appellation will always be entitled to take action.

In the present case, the opponent invoked the appellation of origin ‘Cuba’ (hereafter referred to as ‘AO’) registered with WIPO (registration No 477) and protected through the Lisbon Agreement in France.

According to Article 95(1) EUTMR (previously Article 76 (1) of Regulation 207/2009), 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.

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

According to Article 7(1) EUTMDR (in force at the beginning of the adversarial part of the proceedings), the Office will give the opposing party the opportunity to submit 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 Article 7(2)(e) EUTMDR (in force at the beginning of the adversarial part of the proceedings), if the opposition is based on an earlier right within the meaning of Article 8(6) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the contents of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

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’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the contents of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(e) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision (Article 7(3) EUTMDR) (in force at the beginning of the adversarial part of the proceedings).

According to Article 7(4) EUTMDR (in force at the beginning of the adversarial part of the proceedings), any documents provided as evidence of acquisition, continued existence and scope of protection of the geographical indication as well as provisions of the applicable national law governing the acquisition of rights and their scope of protection, as referred to in Article 7(2)(e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party on its own motion within the time limit specified for submitting the original document.

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.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

The submissions

On 28/08/2017, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time was later extended and finally expired on 02/03/2018.

On 15/02/2018, within the time limit, the opponent filed the following evidence in order to prove the existence of the right on which the opposition is based:

 copy of the Cuban Decree No 3597 of 28/11/1967 establishing the protection of the appellation of origin ‘Cuba’ for raw and manufactured tobacco and products made of tobacco in Spanish (partially translated), where the opponent is mentioned as the entity that manages the registration of AO before the Registry of Industrial Property (Annex 1)

 copy of the extract from WIPO’s international register of appellations of origin in French (at that time known as BIRPI) dated 03/09/1968 where appellation of origin ‘CUBA’ is mentioned (not translated), (Annex 2)

 copy of the French Decree No 68.309 of 26/03/1968 ratifying the Lisbon Agreement (not translated), (Annex 3)

 copy of the French decree No 7064 of 23/01/1970 confirming the protection of the AO ‘Cuba’ in France (partially translated), (Annex 4).

In order to prove the national law which gives the opponent right to prohibit the use of the contested sign, the opponent submitted the following:

 A extract from the French Consumer Code (Code de la consummation), and in particular Article 115-2 until Article 115-7 (not translated) (Annex 5)

 An extract of the French Rural and Maritime Fishing Code (Code rural et de la pêche maritime) Article L.643-1 until Article L.643-3; in particular Article L.643-1, which regulates the protection of the appellations of origin (partially translated) and copy of the judgment of the General Court dated 12/07/2007 in joined cases T-53/04 a T-56/4, T-58/04 y T-59/04, Budejovický Budvar, národní podnik versus OHIM (“BUDWEISER”). In this judgment the General Court confirms that the relevant legal provision of the French law that defines the protection of geographical indications is Article L.641-2 of the French Rural and Maritime Fishing Code. (Annex 5)

 Extract of the judgment of the Court of Appeal of Paris dated 17/05/2000 in which the trade mark ‘HAVANA’ is cancelled as undermining the reputation of the P.D.O ‘HABANA’ (partially translated), (Annex 6)

 Copy of the judgment of the Paris Tribunal de Grande Instance dated 01/03/2002 regarding the action against the trade mark ‘PARIS CUBA’ in conflict with the appellation of origin Cuba (not translated), (Annex 7)

 Copy of the decision of the Cancellation Division of the Office in case No 3730 C issued on 03/11/2010 against the EUTM ‘CUBAO’ (Annex 11)

Additionally, the opponent quoted some legal provisions directly in the observations in original and with translation, namely Article L.721-1 of Code of Intellectual Property and Article L.431-1 of the Consumers Code.

In the present case, all the evidence filed by the opponent is not in the language of the proceedings, because it is either in French or in Spanish.

According to Article 25(1) EUTMIR (applicable to documents and translations submitted after 01/10/2017), when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document. Furthermore, according to the same provision, where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

According to Article 7(5) EUTMDR (in force at the beginning of the adversarial part of the proceedings), the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office. It follows that the evidence filed by the opponent cannot be taken into account.

In this context the Opposition Division notes that some of the documents submitted by the opponent have not been translated at all and some only partially. It seems however that due to this partial translation relevant data might have been omitted.

The opponent filed a copy of the Cuban Decree No 3597 (Annex 1) in Spanish, which consists of various paragraphs, only two have been translated. Without the understanding of the original it is also impossible to establish which paragraphs have been translated, as there is no numbering. Moreover one of the paragraphs which has been translated reads as follows: The Company EMPRESA CUBANA DEL TABACO (CUBATABACO) will manage before the Registry of Industrial Property the registration in its favor of the name of CUBA as designation of origin.

This suggests that further steps should have been taken to register the designation in the Registry of Industrial Property, and yet no documentation was submitted to confirm that this was the case.

As to the copy of the extract from WIPO’s international register of appellations of origin (Annex 2), a document in French was submitted and has not been translated. Moreover, in this document the opponent is not mentioned at all, there is a reference to the above mentioned Cuban Decree though.

Similarly, the copy of the French Decree No 68.309 of 26/03/1968 ratifying the Lisbon Agreement (Annex 3) has been submitted in French and not translated at all.

The opponent also filed a copy of the French decree No 7064 of 23/01/1970 confirming the protection of the AO ‘Cuba’ in France (Annex 4), and from this document one sentence has been translated which states that "Designations of Origin of the Republic of Cuba recorded in the International registry of the WIPO (...) protected in France under the provisions of the art. 1.2 of the Agreement". AO Cuba seems to be indeed mentioned, but there is no reference to the opponent, and no further details about the scope of protection (e.g. for which products the AO is protected) have been translated.

As can be seen from the explanations above, the translations which have been submitted clearly do not reproduce the structure and contents of the evidence to be translated. Furthermore, Article 25(1) EUTMIR does not imply that the opponent has the discretion to decide not to translate the requirements needed for substantiation of the earlier rights as listed in Article 7(2) EUTMDR as only irrelevant administrative indications (e.g. previous transfers of ownership that do not affect the opposition, administrative entries on fees, etc.) with no bearing on the case may be omitted from the translation. In the present case, the omitted parts are clearly not irrelevant administrative indications.

Therefore on the basis of the translated parts of the documents submitted by the opponent the necessary information regarding the acquisition, scope of protection, as well as the continued existence of the right cannot be established.

The opponent refers to a previous decision of the Office to support its arguments, namely the decision of the Cancellation Division issued on 03/11/2010 in case 3730 C, against a sign ‘CUBAO’. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

The previous decision is irrelevant for current proceedings as those proceedings were in Spanish and the decision was based on a different set of documents and translations which are not applicable to the current proceedings in view of the different language and a considerable time lapse. Additionally, it was issued in 2010 in a different legal framework than in the current proceedings (before the recent legal reform). Therefore this argumentation has to be set aside.

For the sake of completeness the Opposition Division also observes that there are also some deficiencies regarding the legal provisions submitted by the opponent as regards the applicable national law governing the acquisition of rights and their scope of protection.

The text of some of the legal provisions has been submitted but without translation, for instance Articles 115-2 until 115-7 of the Consumers Code, or Article L.643-2, L643-3etc. of the French Rural and Maritime Fishing Code. There is a reference to Article L.115-5 in judgments of the French courts and these parts of the judgments have been translated but given that these judgments are dated in 2000 and 2002 it is unclear to which version of this article they refer to and if this version is the same as the one which was submitted in the current proceedings. From the observations of the opponent, the Opposition Division understands that some significant changes in the law referred to have taken place in the meantime. Moreover, texts of some of the legal provisions to which the opponent refers to in the observations have not been submitted at all, for instance Article 34 (V) of Ordonnance No 2016-301 of March 14, 2016 which allegedly repealed the Article L115-1 of the Consumers Code, and created Article L431, or Articles L.640-2, L.641-5, L.641-11etc. of the French Rural and Maritime Code.

The opponent also relied on two decisions of the French courts, which were submitted in French. One was not translated at all, and of the other only some elements have been translated.

The opponent also submitted a copy of the ‘BUDWEISER’ judgment of the General Court mentioned above as illustration to the application of the French law with regard to appellation of origin. However in this judgment the General Court confirms that the relevant legal provision of the French law that defines the protection of appellations of origin/geographical indications is Article L.641-2 of the French Rural and Maritime Fishing Code, which is reproduced in Article 115-5 of the Consumer Code, and not Article L643-2 on which the opponent primarily relied.

Given that the opponent did not prove the acquisition, scope of protection, as well as the continued existence of the right on which the opposition is based the opposition is not well founded under Article 8(6) EUTMR.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Elisa ZAERA CUADRADO

Ewelina SLIWINSKA

Vanessa PAGE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.