OPPOSITION No B 2 482 456

Corporacion Habanos, S.A. (Habanos, S.A.), Carretera Vieja de Guanabacoa y Línea del Ferrocarril Final, Guanabacoa, 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

Primark Holdings, 47 Mary Street, Dublin 1, Ireland (applicant), represented by A.A. Thornton & Co., 10 Old Bailey, London EC4M 7NG, United Kingdom (professional representative).

On 07/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 482 456 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 275 102, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 3 392 611 and Spanish trade mark registration No 662 423. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of one of the trade marks on which the opposition is based, namely European Union trade mark registration No 3 392 611 for the figurative mark .

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 28/11/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 28/11/2009 to 27/11/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

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

Class 25: Clothing, footwear, headgear.

Class 43: Restaurant services (food); temporary accommodation.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 17/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 22/01/2016 to submit evidence of use of the earlier trade mark.

On 02/07/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: Google search results for ‘COHIBA’, demonstrating that the results relate to tobacco products.

• Annex 2: list of tobacco-growing regions in Cuba.

• Annex 3: Wikipedia extract regarding the ‘COHIBA’ mark, referring to tobacco products.

• Annex 5: magazine articles and advertisements relating to the trade mark ‘COHIBA’, referring to tobacco products.

• Annex 6: article entitled ‘The WIPO joint recommendation protecting wellknown marks and the forgotten goodwill’, describing the case ‘COHIBA’ in relation to tobacco products.

• Annex 7: photographs of ‘COHIBA’ products (undated), which are mainly tobacco products. There is also one photograph of Hotel Meliá Cohiba in Cuba (which is, however, outside the relevant territory) and pictures of three T-shirts displaying the word ‘COHIBA’, two of which have a figurative element depicting a head above this word.

• Annexes 8 and 9: various extracts and articles referring to the cigar club ‘Cohiba Atmosphere’ in Prague (the Czech Republic), including a photograph of a cigar club in the Czech Republic from the website http://www.cohibaatmosphere.cz/about-cigar-club.htm, in which can be seen a label with the words ‘CIGAR CLUB COHIBA ATOMOSPHERE’: . The club is described as having 185 active members. Also included in these annexes are an extract from www.praguest.com, dated 02/07/2015, that refers to ‘Cohiba Atmosphere’ in Prague as an exclusive fine-dining restaurant and cigar club, which opened in January 2005, with the logo ; an extract from http://cigarplaces.com, dated 02/07/2015, referring to ‘Cigar Club Cohiba Atmosphere Prague’; an extract from https://es.foursquare.com that refers to ‘Cohiba Atmosphere Club’ in Prague; an extract from www.tripadvisor.es, dated 02/07/2015, that refers to ‘Cohiba Atmosphere’ with the logo ; an extract from http://admoma.es in Spanish dated 02/07/2015 containing the logo ; and an extract from www.cigaraficionado.com, dated May/June 2011, which includes the text ‘lounges of distinction: smoking lounges sponsored by cigar brands are opening virtually everywhere’ and refers briefly to the ‘Cohiba Atmosphere lounge’ in Prague.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the verbal elements ‘COHIBA ATMOSPHERE’ are used in relation to a cigar club in Prague (the Czech Republic) and are accompanied by the logo . However, none of the evidence submitted contains the logo as registered, namely . The figurative element and the colours used in the mark as used clearly alter the distinctive character of the mark as registered, as the figurative elements are distinctive.

The opponent argues that the word ‘COHIBA’ and the figurative element depicting a head are used together in another logo, , and that this does not affect the distinctive character of the mark as used. The Opposition Division does not agree with the opponent. In addition to the fact that this mark does not contain the word ‘ATMOSPHERE’ and uses a different structure, different colours and a distinctive pattern, the use relates to tobacco products in Class 34 and not to the relevant goods in Classes 18, 25 and 43. The use on the three T-shirts, as shown in an undated picture, is purely promotional and cannot be considered, without any additional supporting material, sufficient evidence of genuine use for goods in Class 25. With respect to the picture of a hotel with a name containing the element ‘COHIBA’, the word ‘COHIBA’ appears without any other element that is part of the mark as registered. Moreover, this evidence refers to a hotel outside the European Union and therefore is not relevant to use within the relevant territory.

In view of the above, the Opposition Division considers that the evidence does not show use of European Union trade mark No 3 392 611 as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Therefore, the examination of the opposition will proceed based on the other earlier mark, namely Spanish trade mark registration No 662 423 for the word mark ‘COHIBA’.

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

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 signs

COHIBA
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark, ‘COHIBA’, which will be perceived as meaningless by the relevant public. The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark composed of a stylised single letter ‘A’ with the word ‘ATMOSPHERE’ underneath in much smaller upper case letters. The word ‘ATMOSPHERE’ will be perceived by part of the relevant public as ‘the envelope of gases surrounding the earth or another planet’ as it is similar to the Spanish word ‘atmósfera’; it will be meaningless for another part of the public. It has a normal degree of distinctiveness in relation to the relevant goods in Classes 18 and 25.

The elements ‘A’ and the square black figurative element in the contested sign are the dominant elements, as they are the most eye-catching and overshadow the much smaller word ‘ATMOSPHERE’.

Visually, the earlier mark, ‘COHIBA’, and the contested sign, ‘A ATMOSPHERE’, are completely different. The earlier mark consists of one word composed of six letters, whereas the contested sign is composed of a dominant verbal element consisting of the single letter ‘A’ and the non-dominant verbal element ‘ATMOSPHERE’, which is composed of 10 letters. Moreover, the contested sign is stylised and contains a dominant figurative element in the form of a black square. The fact that some letters, namely the letters ‘A’ and ‘O’, appear in both marks in different positions is not sufficient for a finding of similarity.

As the signs do not visually coincide in any element, it is concluded that the signs are not visually similar.

Aurally, the earlier mark is pronounced in three syllables as /CO/HI/BA/ and the contested sign in five syllables as /A/AT/MOS/PHE/RE/; they do not coincide in any syllable.

As the signs do not aurally coincide in any element, it is concluded that the signs are not aurally similar.

Conceptually, while the public in the relevant territory will perceive the dominant verbal element in the contested sign as the single letter ‘A’, and part of the relevant public will also understand the word ‘atmosphere’ with the meaning indicated above, the earlier mark lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs do not coincide in any element, they are dissimilar.

2. Conclusion

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

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The marks are dissimilar.

According to the clear wording of Article 8(5) EUTMR, similarity (or identity) between the signs is a precondition for the application of this article.

Therefore, the opposition must be rejected as far as it is based on Article 8(5) EUTMR.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Dorothée SCHLIEPHAKE

Saida CRABBE

Inés GARCÍA LLEDÓ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.