OPPOSITION DIVISION




OPPOSITION No B 1 801 359



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 29/01/2018, the Opposition Division takes the following



DECISION:


1. Opposition No B 1 801 359 is upheld for all the contested goods.


2. European Union trade mark application No 9 420 308 is rejected in its entirety.


3. The applicant bears the costs, fixed at EUR 650.




Preliminary remark


As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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 all the goods of European Union trade mark application No 9 420 308 for the word mark ‘PANAMA JACK’. The opposition is based on the following earlier rights:



European Union trade mark registration No 6 778 401, for goods in Classes 3 and 18


(earlier mark 1)







Spanish trade mark registration No 1 317 366, for goods in Class 25


(earlier mark 2)















Spanish trade mark registration No 1 678 825, for goods in Class 25


(earlier mark 3)







Spanish trade mark registration No 1 552 318, for goods in Class 25


(earlier mark 4)







Spanish trade mark registration No 1 678 824, for goods in Class 18


(earlier mark 5)









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


(earlier mark 6)











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


(earlier mark 7)



  • Spanish registered commercial name No 279 273, ‘PANAMA JACK’, for goods in Classes 18 and 25


(earlier right 8)




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


On 31/08/2016, the Opposition Division rendered a decision in which the opposition was partially upheld, namely for all the contested goods in Class 18 and based on earlier mark (1). The opposition was rejected for the earlier marks (2), (3), (4), (5), (6) and (7), since they were not substantiated. It was also rejected as unfounded based on earlier right (8), as the opponent did not submit any information on the possible content of the rights invoked under Article 8(4) EUTMR and the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law in the Member States mentioned by the opponent, namely Spain.


The decision was appealed and the Board of Appeal decided in case R 1975/2016‑2 on 11/05/2017. The Board’s decision partially annulled the decision and remitted the case to the Opposition Division for further prosecution. The Board dismissed the appeal insofar as it concerned the opposition raised on Article 8(1)(b) EUTMR with respect to earlier mark (1). It annulled the contested decision for the remainder.


During the appeal proceedings, the opponent rectified the deficiencies identified under Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), by submitting the necessary documentary evidence, which establishes the existence, validity and scope of protection of earlier Spanish trade marks (2), (3), (4), (5), (6) and (7), and the Board sent back the case to the Opposition Division to examine the opposition based on these earlier rights, pursuant to Article 8(1)(b) and/or 8(5) EUTMR. The Opposition Division’s conclusion regarding Article 8(4) EUTMR, in accordance with which it rejected the opposition under this article based on earlier Spanish registered commercial name No 279 273, was not appealed and is, therefore, final.



PROOF OF USE


In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now 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 publication 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, inter alia, the following earlier marks:




Spanish trade mark registration No 1 678 825, for goods in Class 25


(earlier mark 3)







Spanish trade mark registration No 1 552 318, for goods in Class 25


(earlier mark 4)







Spanish trade mark registration No 1 678 824, for goods in Class 18


(earlier mark 5)













The contested application was published on 18/11/2010. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 18/11/2005 to 17/11/2010 inclusive.


The request was submitted in due time and is admissible as 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 the following:



Earlier marks 3 and 4


Class 25: Clothing for women, men and children, footwear (except orthopaedic), and headgear.



Earlier mark 5


Class 18: Leather and imitations of leather and articles of these materials not included in other classes, animal skins, bags, trunks and suitcases, umbrellas, parasols and walking sticks, whips, harness and saddlery.


According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), 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 10/08/2012, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 15/10/2012 to submit evidence of use of the earlier trade marks. On 11/10/2012, within the time limit, the opponent informed the Office that the evidence submitted on 20/04/2012 to prove the reputation of the earlier marks should also be considered evidence of use.



The evidence to be taken into account is the following:



  • Several extracts from Spanish publications such as Público, Diario AS, ABC, Barcelona Prestige, Barcelona Cruises, Cruceros & Destinos, Chausser, Cosmopolitan, Destinos, El País and La Gaceta, dated 2010, containing advertisements for ‘PANAMA JACK’, using the signs




, or