OPPOSITION No B 2 936 824

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

1000!Ideas Entertainment LLC, 101 2nd Street Suite 1200, San Francisco, California 94105, United States of America (applicant) represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain

On 27/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 936 824 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 and services of European Union trade mark application No 16 583 601 for the figurative mark , namely for goods and services in Classes 9, 14, 25, 35 and 41. The opposition is based on a Spanish trade mark registration No 2 679 988 for the figurative trade mark in connection to which the opponent invoked Article 8(1)(b) EUTMR. The opposition is also based on the appellation of origin (AO hereinafter) ‘HABANA’ 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).

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 the trade mark on which the opposition is based, namely Spanish trade mark No 2 679 988

.

The date of filing of the contested application is 10/04/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 10/04/2012 to 09/04/2017 inclusive.

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 relevant date mentioned above.

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 35: Retail services in shops and by electronic means; business management; organisation of exhibitions, trade fairs, seminars and conferences, conventions for business and promotional purposes; issuance of franchists to help the exploitation or management of a commercial company.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; editing of written texts, other than publicity texts

Class 43: Services for providing food and drink; temporary accommodation.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 08/06/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 13/08/2018 to submit evidence of use of the earlier trade mark. This time limit was later extended and finally expired on 13/10/2018. On 11/10/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex 1: 11 invoices issued between 2012 – 2017; 2 of them have been issued in September 2017 (outside the relevant time frame). The opponent is not indicated in any of them. In most of them Club Pasion Habanos is explicitly indicated as a client (invoice 051/2012, invoice 02-13, invoice A/212, invoice 0020/2016, invoice 16626), or it can be inferred from the text of the invoice that Club Passion Habanos was the client e.g. in invoice No 15.021 the subject of the service is ‘presentation of communication services and content for the CPH website’ or in invoice No 16VFR00656 the ‘ event press kit Habanos chair’ is supposed to be shipped to the Association Private’s Club Passion Habanos. This suggests that the provider is someone else. In a similar vein in the invoice 17VFR00426 for social media management services it is indicated that they should be provided to Asociación Club Privado Pasion Habanos. In the remaining invoices only one party is indicated which is Club Pasion Habanos and it is not clear whether it is a provider or the customer of the services which have to do with events e.g. Christmas event.

Annex 2: A few screen shots of the Club Pasión Habanos’ website www.clubpasionhabanos.com in Spanish, undated.

Annex 3: Printouts from the Google search of the terms “PASION HABANOS”, displaying results in Spanish dated in 2018, but some search results refer to articles with dates in 2016.

Annex 4: Printouts from social media like Facebook, Twitter, Instagram, Youtube regarding the activities of a club Pasion Habanos. They seem to be mostly related to activities in Madrid and stem mostly from Club Pasion Habanos itself.

Annexes 5 and 6: Printouts from online articles published between 2012 and 2017 where Club Pasion Habanos is mentioned as well as scanned copies of press articles where Club Pasion Habanos is featured dated between 2012-2017.

Annex 7: Advertising related to events organised by the Club Pasion Habanos like “HABANA NIGHT EXPERIENCE”, “Habanos Day”, “Habanos Night” in different cities in Spain in the relevant time, consisting of examples of flyers, brochures, tickets.

Within these submissions and the partial translations, the opponent asserts that ‘Pasión Habanos Private Club is a private smoking club’ that not only has fixed clubs but also special events to ‘provide associates with an ideal atmosphere where they can share their passion for the Cuban tobacco’. Indeed, when viewing the evidence listed above the content clearly refers to smoking Habanos in a club or indeed in an event specifically designed around the culture of cigar smoking.

The opponent also submitted some evidence within the substantiation period which precedes the time limit to submit proof of use, so it can also be taken into account in the assessment of proof of use. However, this evidence is irrelevant for the assessment for proof of use in this case as it does not concern the earlier trade mark at all. It is rather meant to illustrate the use of the AO Habana on the market in France as it concerns the sale of cigars originating from Cuba especially Habana, in particular it contains copies of photos of brands which include the AO HABANA (Annex 8) and further information about different brands, their history etc (Annex 10) or invoices for the sale of tobacco products in France as well as some printouts from the French press about the Cuban cigars. Since this evidence is evidently irrelevant for the proof of use in Spain regarding services of the earlier mark there is no need provide a more detailed description or analysis of them here as they have no impact on the current assessment.

The evidence mostly concerns the relevant time and the relevant territory, contrary to what the applicant claims. It emanates from the majority of the evidence that the relevant activities have taken place in diverse cities in Spain, especially in Madrid and concern the relevant time.

The Opposition Division notes that the evidence submitted by the opponent albeit ample is not very convincing and consequently rather concurs with the applicant’s extensive arguments in this regard. The evidence in the social media (Annex 4), especially which seems to originate from the opponent or its affiliated party as well printouts from the opponent’s or its affiliated company’s website have a rather limited probative value as they are not independent. The invoices (Annex 1) mostly show which services have been contracted by an entity using the trade mark rather than provided.

The press articles (Annexes 5 and 6) seem to show how the sign operates on the market in a more objective manner. There are, however also some weak elements in this evidence. As the applicant correctly observed, the trade mark in its registered form does not appear in any of the materials provided and the opponent is not mentioned either. However, it should also be considered that the use of the mark by a third party can amount to genuine use and a trade mark can be used in a different form than registered provided that its distinctive character is not altered.

The Opposition Division notes the criticism of the applicant as regards the provided evidence, especially regarding the extent of use as well as the nature of use and the use of the mark as registered. Nonetheless, based on the principle of economy of proceedings, the Opposition Division does not find it necessary to enter into a detailed analysis of the deficiencies in the evidence. In this regard, the evidence listed above only relates to a smoking club which is a kind of social club where like-minded people get together and meet so that they can enjoy their common interest. These services can be considered to form an objective subcategory of entertainment services in Class 41.

However, there are no indications in the submitted evidence that the other services in Classes 35, 41 and 43 are provided under the earlier trade mark. The opponent claims that it organised events. However, from the evidence, it emanates that the event related services are rather contracted by the opponent (or with its consent) and provided as part of the social club services to the members of the club. In short, the opponent or its affiliate organises its own events for its own purpose but not for third parties. In a similar vein, the provision of food and drink is rather contracted and delivered as part of the club services. There is no indication that any of these services would be provided separately to third parties and in a manner unrelated to the activities of the club. There is no evidence which would suggest that any services in Class 35 and 43 or the remaining services within Class 41 are provided under the trade mark. These findings overlap in essence with what the opponent confirmed in its observations dated 29/05/2019 where is stated that the trade mark was used for a private club established for smoking cigars and that the club organises countless events. It is clear that the other services are contracted in order to provide the services of a club.

In view of the foregoing, the Opposition Division will proceed on the assumption that proof of use has been proven for entertainment services, namely social club services which, in view of the explanations above, is the best light in which the submitted proof of use, can be perceived.

The Opposition Division notes that that the opponent submitted on 29/05/2019 some additional evidence, namely the statue of the Association Club Pasion Habanos as well some online printouts regarding events. This evidence does not affect the above assumption, since the statute concerns the activities of a club, and additionally the excerpts are all dated in 2019, that is after the relevant time.

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.

a) The goods and services

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

Class 41: Entertainment, namely social club services.

The contested goods and services are the following:

Class 9: Recorded content; Media content; Information technology and audio-visual, multimedia and photographic devices; Communications equipment; Mobile phone cases; Data storage devices; Audio recordings; Audio visual recordings; Compact discs featuring music; Digital music downloadable from the internet; Disc storage containers; Downloadable electronic brochures; Downloadable electronic newsletters; Downloadable movies; Downloadable publications; Motion pictures; Video films; Downloadable video files; Musical recordings; Multi-media recordings; Magnets, magnetizers and demagnetizers; Fridge magnets; Gramophone records; Computer programs; Sound recording discs; Magnetic data carriers; Apparatus for recording, transmission or reproduction of sound or images; Sound, image and sound/image carriers (compact discs, CD-ROMs, CD-Is, DVDs, etc); Video, computer and other electronic games adapted for use with television apparatus; Accessories for home computers, videos and computer games and similar electronic and electrotechnical apparatus, namely joysticks, manual controls, control devices, adaptors, modules, computer and video game cassettes, diskettes, cartridges, discs, tapes, and other machine-readable data carriers of all kinds containing programs, included in class 9.

Class 14: Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Watches.

Class 25: Clothing; Articles of clothing for theatrical use; Theatrical costumes; Sportswear; Jackets; Shirts; T-shirts; Stockings; Scarves; Footwear; Shoes; Sport shoes; Headgear; Caps; Hats.

Class 35: Advertising, marketing and promotional services; Merchandising; Business assistance, management and administrative services; Retail and wholesale services in relation to recorded content, media content, information technology and audio-visual, multimedia and photographic devices; Retail and wholesale services in relation to communications equipment, mobile phone cases, data storage devices, audio recordings, audio visual recordings, compact discs featuring music, digital music downloadable from the internet, disc storage containers, downloadable electronic brochures, downloadable electronic newsletters, downloadable movies, downloadable publications; Retail and wholesale services in relation to motion pictures, video films, downloadable video files, musical recordings, multi-media recordings, magnets, magnetizers and demagnetizers, fridge magnets, gramophone records, computer programs, sound recording discs, magnetic data carriers; Retail and wholesale services in relation to apparatus for recording, transmission or reproduction of sound or images; Retail and wholesale services in relation to sound, image and sound/image carriers (compact discs, CD-ROMs, CD-Is, DVDs, etc), Video, computer and other electronic games adapted for use with television apparatus; Retail and wholesale services in relation to accessories for home computers, videos and computer games and similar electronic and electrotechnical apparatus, namely joysticks, manual controls, control devices, adaptors, modules, computer and video game cassettes, diskettes, cartridges, discs, tapes, and other machine-readable data carriers of all kinds containing programs; Retail and wholesale services in relation to jewellery, jewellery boxes and watch boxes, key rings and key chains, and charms therefor, time instruments, watches, clothing, articles of clothing for theatrical use, theatrical costumes, sportswear, jackets, shirts, T-shirts, stockings, scarves, footwear, shoes, sport shoes, headgear, caps, hats.

Class 41: Education, entertainment and sport services; Theatrical production services; Production of theatrical shows; Directing of theatrical shows; Organisation and arranging of music, theatre, musical theatre and musical performances, exhibitions and events held for cultural or sporting purposes; Providing of training, education and instruction, entertainment, in particular live, online, radio and television entertainment services; Production, reproduction, presentation and rental of films, production and reproduction of sound and image recordings on other sound and/or image recording carriers, presentation and rental of these sound and/or image recording carriers; Production and creation of radio and television programmes, in particular radio and television entertainment programmes, shows; Studio services and rental of studios, including equipment, apparatus and devices for the production of films and radio and television programmes; Artist management; Publishing and reporting; Publication of books; Publication of newspapers; Publication of magazines; Club/discotheque services; Entertainer services; Entertainment services performed by musicians; Entertainment services provided by performing artists; Artistic management of theatre shows; Musical performances; Party planning services.

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.

Contested goods in Classes 9, 14 and 25

These contested goods include IT, electronic hardware and software as well as devices which store content (Class 9), items of watchmaking and jewellery and related accessories (Class 14) as well as clothing, footwear and headgear (Class 25) whereas the earlier services are entertainment, namely social club services. The goods and services under comparison do not share any relevant criteria. Aside from their different nature (material objects versus immaterial services), they have a completely different purpose. Their production or provision requires different expertise and means. They belong to different industries. They are neither in competition, nor are they complementary. Even though social clubs may use some of these contested goods or indeed their interest may be due to one of these goods, this is not sufficient to deem any degree of similarity since there is no clear interdependence that would lead to these goods and services being complementary. They target a different public via different channels of distribution. They are clearly dissimilar. The opponent provided neither convincing arguments nor evidence to the contrary.

Contested services in Class 35

These contested services concern marketing, merchandising as well as retail of diverse products, especially those in Classes 9, 14 and 25 compared above. They are normally provided by specialised undertakings with expertise in these areas which assist their consumers in the marketing of their goods and services, merchandising associated with their activities as well with the sale of goods. The purpose of these services is clearly different than that the opponent’s services. These services belong to different industries and clearly require different know-how. They target different public via different channels of distribution. They are neither in competition, nor are they complementary. The fact that the owner of the social club may contract marketing or merchandising services is not sufficient to establish any relevant similarity between them. Quite the contrary, this illustrates that the provider of social club services is more likely to be a client than the provider of marketing or merchandising services and the public is aware of this. The services under comparison have no relevant points in common, thus are clearly dissimilar.

Contested services in Class 41

The contested Theatrical production services; Production of theatrical shows; Directing of theatrical shows; Production of films production of sound and image recordings on other sound and/or image recording carriers, Production and creation of radio and television programmes, in particular radio and television entertainment programmes, shows; Studio services and rental of studios, including equipment, apparatus and devices for the production of films and radio and television programmes; Artist management; Artistic management of theatre shows Publishing and reporting; Publication of books; Publication of newspapers; Publication of magazines; Party planning services are rather technical services which have to do with production of films, shows etc as well as publication services and party planning. These services are rendered by specialized companies with special expertise and resources. They have no relevant common points with the social club services of the opponent in the area of entertainment. These services have a different purpose, different providers and different distribution channels. An owner of a social club is more likely to engage the services of a party planner than to provide such service to a third party, not to mention involvement in film or theatrical production, publishing or artist management. The services are clearly dissimilar.

As to the remaining contested services, some of them are identical to the services of the earlier mark, e.g. the entertainment services.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of these specific services listed above. The examination of the opposition will proceed as if all these contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services assumed to be identical are directed mostly at the public at large. The degree of attention is average.

c) The signs

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).

Both signs are figurative and consist of verbal and figurative components. Even if the word ‘habanos’ in the earlier sign is portrayed in yellow it is not so visually eye-catching that it stands out from the other elements. Consequently, neither of the signs has any element which could be considered more dominant (visually eye-catching) than the other elements.

The word ‘PASION’ in the earlier sign is a Spanish word which means ‘passion’ and the word ‘Habanos’ is a Spanish noun in a plural form which denotes: ‘cigars elaborated in Cuba with the use of the Cuban tobacco’ (See Real Academia Española at dle.rae.es). The connection with cigars is reinforced by an image of smoke present in the earlier sign. The entire expression will therefore, as the opponent correctly observed, be understood as ‘passion for Cuban cigars’. The black background will be perceived as such and not attributed a lot of trade mark significance as it is rather commonplace and banal thus its impact is limited. The concept conveyed by the expression and reinforced by the figurative element of the smoke is connected with the services of the earlier mark, namely the services of a social club, as it suggests that this may be a cigar smoker’s club. Therefore, the distinctiveness of these elements is also limited.

The word ‘Havana’ in the contested sign denotes the capital of the Republic of Cuba. The Spanish equivalent is ‘LA HABANA’ but both ‘HAVANA’ and ‘HABANA’ will be pronounced in the same manner, consequently the Spanish public is most likely to perceive Havana as the capital of Cuba. The word ‘night’ in the contested sign is a basic English word which is likely to be understood in Spain, especially in the area of entertainment and culture, since events often take place at late hours. Consequently, the expression will be perceived as ‘the night in Havana’. This expression in its entirety as well as the word ‘HAVANA’ suggest that the entertainment- or culture- related services have to do with the capital of Cuba at night, or just denote Cuba. Since, Cuba is known for its distinct culture involving music and dancing there is a link with the relevant services, as they may suggest entertainment or culture in the Cuban style or Havana style. Consequently, the distinctiveness of each of these elements, as well as this expression will be limited at least for the entertainment and culture related services. It will be normally distinctive for the remaining services. The centrally placed star-like shape in the contested sign may be perceived as such or as a double star. It is quite unusual and not connected to the services in question. This element is, thus, normally distinctive. The remaining figurative elements, double semi-circular shapes, play a secondary role as a kind of frame where these verbal and figurative elements are placed, however they provide for a particular set up of the contested sign which has a certain visual impact.

Visually, the signs coincide only in the letters HA-AN of HABANOS/HAVANA, whereas these words are differently placed in each of the signs. The signs differ also in the remaining letters of these words which are different as well as in all the remaining elements of the signs, like the composition of the signs, the other verbal elements, the figurative elements etc. Therefore, the signs are visually similar to at most a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HABAN’, since the letters ‘B’ and ‘V’ produce the same sound in Spanish. Note is however taken, that these words, where the coincidences occur, are differently placed in the signs, which has an impact on the aural aspect. The pronunciation differs also in the endings A/OS as well as in the additional words PASION/NIGHT which have no counterparts in the other sign. The figurative elements do not have impact, since they will not be pronounced. Consequently, the aural similarity is low.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with different meanings, the signs are conceptually dissimilar.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as somewhat limited for the earlier services.

e) Global assessment

Whilst most of the goods and services were deemed dissimilar, some contested services in Class 41 have been assumed to be identical. The inherent distinctiveness of the earlier mark is limited. The level of attention of the public is average.

The signs have been found to be visually similar at most to a low degree, aurally similar to a low degree and conceptually dissimilar. They only overlap in some letters in one of the verbal elements, albeit the words where these coincidences occur are differently placed within each of the signs. Moreover, these words have limited distinctiveness for the services of the earlier mark and at least for some of the contested services. The signs differ in all the other aspects. They have a completely different structure; each has additional verbal and figurative elements which set the signs quite far apart.

It is true that that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). However, in this case the assumed identity of some of the services cannot offset the low degree of similarity between the signs on visual and aural levels as well as their conceptual dissimilarity. Additionally, the earlier mark has limited distinctiveness, and the coincidences between the signs are found it the elements which are weak (for the contested sign at least for some of the services). In the view of the above, the Opposition Division is of the opinion that the differences are overwhelming, therefore the public will be able to differentiate between the signs. Contrary to what the opponent claims the public will not make an association between those signs on account of the relevant differences between them, as explained above. Even for identical services and considering the average level of attention of the public there will be no likelihood of confusion.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

As to the proof of use, the Opposition Division looked at this in the best light possible and assumed that the opponent had proven genuine use for the entertainment services namely social club services which were the only services that appeared in the evidence. Consequently, the outcome of no likelihood of confusion remains the same and the further analysis of proof of use is not necessary as the outcome would be no better since it could not have been accepted for any other services.

Since the opposition failed under Article 8(1)(b) EUTMR the Opposition Division will proceed with the assessment under Article 8 (6) EUTMR.

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 ‘Habana’ registered with WIPO (registration No 479) and protected through the Lisbon Agreement in France.

The submissions

On 04/09/2017, 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 09/03/2018.

On 27/02/2018, 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 3599 of 28/11/1967 establishing the protection of the appellation of origin ‘Habana’ for raw and manufactured tobacco and products made of tobacco in Spanish (partially translated), where the opponent is mentioned as the only holder of the AO (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 ‘HABANA’ No 479 is mentioned (the date, the owner, the registration number and the name of appellation of origin are translated but not the goods for which the protection is granted), (Annex 2)

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

 copy of the French decree No 7064 of 23/01/1970 allegedly confirming the protection of the AO ‘Cuba’ in France in French (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:

 An extract from the French Consumer Code (Code de la consummation) referring to the 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), referring to 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 allegedly the trade mark ‘HAVANA’ is cancelled as undermining the reputation of the P.D.O ‘HABANA’ in French (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)

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. Moreover, the opponent submitted the original Article L721-1 of Code of Intellectual Property and Article L.431 of the Consumers Code as well as the original text of Articles L640-2, L641-5 and L643-1 of the French Rural and Maritime Fishing Code together with proof of use.

In the present case, most the evidence filed by the opponent is not in the language of the proceedings, because it is either in French or in Spanish, some was partially translated.

The earlier right

The opposition is based on AO ‘HABANA’ protected for raw or manufactured tobacco and products made of tobacco.

The Opposition Division notes the criticism of the applicant regarding the substantiation of the earlier right, especially considering the missing or incomplete translations. However, basing itself on the principle of economy of proceedings the Opposition Division will assume that the protection claimed by the opponent has indeed been proven for AO ‘HABANA’ for raw or manufactured tobacco and products made of tobacco and that the opponent is entitled to execute this right, as this is the best case scenario for the opponent.

National law invoked

In the present case, the opponent invoked the French Code of Intellectual Property (Code de la Propriété intellectuelle), and in particular Article L721-1 which according to the opponent states: The rules regarding to the determination of the Designation of origin are established under article L.115-1 of the Consumers Code bellow cited (I).

Then the opponent explained that the referred Art. L115-1 of the French Consumers Code was repealed by Ordonnance No 2016-301 of March 14, 2016 in its Article 34 (V), and that Ordonnance No 2016-301 creates the new article L431-1 of the Consumers Code (Code de la Consommation) which rules the concept of Designation of Origin. This article reads as follows:

L431-1: Constitutes an appellation of origin the name of a country, region or locality which serves to designate a product originating therein whose quality and characteristics are due to the geographical environment, including natural factors and human factors.

In addition, the opponent indicated that the provisions of the Rural and Maritime Fishing Code are applicable in Articles L640-2, L.641-5 et s., L.643-1 et s. and 641-11 et s.

The opponent claims that the most important legal provision is L643-1 which states:

The appellation of origin may never be considered as generic in nature and fall into the public domain.

The name constituting the appellation of origin or any other reference that evokes them cannot be used for any similar product, without prejudice to the laws and regulations in force on 6 July 1990. They cannot be used for any establishment or any other product or service if that use is likely to misappropriate or weaken the reputation of the denomination.

The Opposition Division notes the criticism of the applicant regarding the submissions of the opponent to prove the content and the meaning of the national law invoked, especially considering the missing or incomplete translations. However, basing itself on the principle of economy of proceedings the Opposition Division will consider the national legislation as invoked and explained by the opponent, especially considering that the content of the most relevant legal provisions analysed below seem to coincide in essence with the content of the provision analysed by the Court in the ‘Budweiser’ judgment mentioned above (12/06/2007, T‑53/04 - T‑56/04, T‑58/04 & T‑59/04, Budweiser, EU:T:2007:167), albeit it referred to a different number of the Article in the Rural and Maritime Fishing Code. This is the best light in which the opposition can be perceived, in the circumstances of this case.

Legal assessment

The Opposition Division will concentrate on the above mentioned provision L643-1 Rural and Maritime Fishing Code which seems to regulate conflict with the appellation of origin, and which the opponent also indicates as the most pertinent.

This provision stipulates that the potential right to prohibit use is triggered in a case: (i) when the AO is evoked in a sign used for a similar product or (ii) when the use of the contested trade mark results in a misappropriation or weakening of reputation of the denomination.

The Opposition Division notes the criticism of the applicant as to the reputation of the invoked AO. The Opposition Division will not examine this issue but proceed under the assumption there is reputation which is the best light in which the opposition can be examined.

The first scenario (point (i) above) does not apply in this case. The contested goods in Classes 9, 14 and 25 are clearly not similar to tobacco or tobacco products protected by the invoked AO. These contested goods concern IT and electronic hardware and software as well as devices which store content (Class 9), items of watchmaking and jewellery and related accessories (Class 14) as well as clothing, footwear and headgear. Since the goods are not similar the contested sign will not bring to the mind of the consumer tobacco or tobacco products of Havana. Thus, there is clearly no evocation.

This is the more so, for the services in Classes 35 and 41, which have to do with marketing, merchandising, retail of goods in Classes 9, 24 and 25 as well as entertainment, cultural and sporting services. They are also clearly not similar to tobacco and tobacco goods protected by the AO. Therefore, the conditions of the first part of the Article L643-1 Rural and Maritime Fishing Code are not fulfilled.

The second scenario (point (ii) above) regards the weakening or misappropriation of the reputation of the denomination by the use of the contested sign. The Opposition Division notes that the expression ‘HAVANA NIGHT’ in the contested sign is likely to be understood by the French speaking public within its English meaning, since Havana will be perceived as the capital of the Republic of Cuba (Havane being its French equivalent) and ‘night’ is a basic English word which is largely understood in France due to widely known English expression such as ‘good night’ or ‘night club’ for example. Consequently, for the French speaking public, it will evoke the concept of the night in Havana. There is no direct link with the Habana cigars or tobacco.

It is true that the word ‘havane’ means also the cigars in French. However, given that cigars and night do not make a meaningful expression and Havana and night do when used together, it is most likely that when perceived together ‘Havana’ is likely to be understood as the capital of Cuba rather than a cigar. This is especially true considering that the contested goods and services have nothing to do with tobacco or tobacco products.

The Opposition Division does not see how the contested sign, which evokes the concept of a night in Havana, which is quite broad, when used in connection with the goods in Classes 9, 14 and 25 could weaken or misappropriate the reputation of the earlier AO HABANA which is protected for tobacco and tobacco products, considering how unrelated these goods are. Moreover, the opponent did not show exactly what image is triggered by the invoked AO other than the image of good quality cigar and how this image could be transferred to the contested goods. In a similar vein, there is no connection between the services in Class 35 which are business oriented and the tobacco and tobacco products. In view of the disparity between these industries, it is not apparent for the Opposition Division how the contested sign could weaken or misappropriate the reputation of the AO.

The services in Class 41 are in essence entertainment, education, cultural and sports services including technical services that have to do with publishing and production of shows etc. The Opposition Division is of the opinion that in the context of these services, especially those that have to do with entertainment and culture, the public when seeing the sign may at most associate it with Cuban culture represented by its capital Havana. Cuban culture is known to be interesting and original, especially regarding music, dancing etc. Therefore, the contested sign may be perceived as referring to that concept. In the view of the Opposition Division, the public will not readily make a link with the protected tobacco and tobacco products of HABANA. For this reason there can be no weakening or misappropriation of the reputation of the AO which is protected for these goods. It is all the more so in case of services which have to do with education, sports, publishing or production of shows etc. They are so different from the protected goods and the image of the goods invoked by the earlier AO that there can be no weakening or misappropriation of the reputation as well.

The opponent mentions a case of the Court of Appeal of Paris dated 17/05/2000 in which allegedly the trade mark ‘HAVANA’ is cancelled as undermining the reputation of the AO ‘HABANA’. However, this case is not comparable to the current proceedings because, as the part translated by the opponent shows, the sign was found to infringe the rights of the AO on account of the use made of it by its owner on the market. As the translated fragment of the judgment suggests, the owner of that trade mark intentionally marketed its cologne for men in a manner which evoked the Habano cigars. Apparently the owner went so far that it imitated the shape of a cigar burning down in the packaging of the cologne and in that manner the connection with the HABANA cigars could be established, as the Court observed in the ‘Budweiser’ judgment mentioned above (see § 201). Such use cannot be considered in this case because the contested sign is not registered. Moreover, the structure of the contested sign and its additional verbal and figurative elements do not allow for a similar conclusion in the case of the contested sign. In a similar vein the other decision of the French court mentioned by the opponent, also concerns perfume. Therefore, this argumentation has to be set aside.

The opponent argues that the consumer of the contested goods and services should, on account of the use of the words ‘HAVANA NIGHT’ attribute to the goods and services designated by this sign the characteristics and standards of the protected AO HABANA. The Opposition Division observes in this regard that given the differences between the protected AO and the contested sign as well the fact that the contested goods and services have nothing to do with tobacco it is not plausible that consumers would indeed expect characteristics of tobacco products reflected in them. This argument has to be set aside.

Therefore, the conditions of the second part of the Article L643-1 Rural and Maritime Fishing Code are not fulfilled.

Given that the opponent failed to prove that the requirements to exercise the right of prohibition of use, under the French law citied by the opponent, are fulfilled in this case, the opposition is not well founded under Article 8(6) EUTMR.

In view of the foregoing, it is clearly not necessary to enter into a more in-depth analysis of the substantiation and reputation issues as mentioned previously. Although the Opposition Division made a number of assumptions concerning substantiation and reputation, this was the best light in which the case could be considered and even in that scenario, the opposition is not well founded.

Since, the opposition failed on both Article 8(1)(b) an 8(6) EUTMR the opposition it is to be rejected in its entirety.

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

Vanessa PAGE

Ewelina SLIWINSKA

Elisa ZAERA CUADRADO

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.