OPPOSITION DIVISION




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’: