OPPOSITION No B 2 263 724

Corporacion Cuba Ron, S.A., Calle 200, Nº 1708 esq. 17 y 19 Reparto Atabey, Playa, Ciudad Habana, Cuba (opponent), represented by Berenguer y Pomares Abogados, Calle Canalejas, 13 – 4º, 03001 Alicante, Spain (professional representative)

a g a i n s t

1872 Holdings V.O.F., P.O. Box 933, Road Town Tortola, British Virgin Islands (applicant), represented by Lynde & Associes, 5 rue Murillo, 75008 Paris, France (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 263 724 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 in Classes 32, 33 and 43 of European Union trade mark application No 12 036 571 for the word mark ‘MATUSALEM THE SPIRIT OF CUBA LIBRE’. In the course of the proceedings, the applicant limited its EUTMA. The opponent, nevertheless, maintained its opposition in relation to the remaining goods, namely all the goods in Classes 32 and 33. The opposition is based on the geographical indication ‘CUBA’ used in the course of trade in Germany and Spain in relation to rum. The opponent invoked Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

In the present case, the opposition is based on the geographical indication ‘CUBA’ used in the course of trade in Germany and Spain.

 

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. Article 8(4) EUTMR allows an opposition to be validly filed against a European trade mark application, based on a sign that is not a registered trade mark, provided that the opponent is able to prove that this sign confers on it, under the applicable national law, the right to prohibit the use of a subsequent trade mark.

It should be noted that not all geographical indications are business signs within the meaning of Article 8(4) EUTMR, because there are no individual rights vested in those entitled to use a geographical indication. For example, in some Member States, the use of a sign may be prohibited if it results in unfair or misleading business practices. In such cases, if the earlier right lacks any ‘proprietorial quality’, it will not fall within Article 8(4) EUTMR. It does not matter whether these signs are protected against misleading or unfair use under trade mark law, the law relating to unfair competition, or any other set of provisions. This law would not be a proper basis for an opposition under Article 8(4) EUTMR because the sign in question lacks any proprietorial quality and, as such, is more public in nature.

By contrast, within the European Union there are other legal systems where the applicable national law expressly confers on a natural person or an association an exclusive right in a geographical indication, including the right to prohibit the use of a subsequent trade mark on the basis of an entitlement to an indication of origin. When this is the case such entitlement will be considered as a right to a business identifier within the meaning of Article 8(4) EUTMR.

Therefore, in the present case, in order for use of the geographical indication ‘CUBA’ to be invoked under Article 8(4) EUTMR, it is necessary for the relevant national law to recognise that the use of this geographical indication, as a business identifier, allows its proprietor, or a specific subject of law, to prohibit later use of a subsequent trade mark.

Accordingly, the opponent must prove that the sign in question falls within the scope recognised by the national law and that the latter authorises the sign’s proprietor to prohibit later use of a subsequent trade mark. In this respect, the tenor of the relevant national law and also the judgments of the competent courts of that State in relation to the right in question must be taken into account, among other elements.

As mentioned, the opponent based the opposition on the use of the geographical indication ‘CUBA’ granted to the opponent on 02/04/2010 by resolution of the Cuban Office of Intellectual Property. The opponent claims that it uses the sign in the course of trade in Spain and in Germany for rum, and that it constitutes an earlier right allegedly having effect in these territories pursuant to the following bilateral agreements:

– Trade Convention signed by the Kingdom of Spain and the Republic of Cuba on 23/01/1979, and

– The Convention signed by the Federal Republic of Germany and the Republic of Cuba on 22/03/1954.

In order for an opposition under Article 8(4) 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 holder of a geographical indication or appellation of origin to take direct legal action to prohibit the use of a subsequent trade mark.

In other words, the earlier right must be vested in a particular owner or a precise class of user that has a quasi-proprietorial interest over it, in the sense that it can exclude or prevent others from unlawfully using the sign. This is because Article 8(4) EUTMR is a ‘relative’ ground for opposition and Article 41(1)(c) EUTMR provides that oppositions may be filed only by the proprietors of earlier marks or signs referred to in Article 8(4) EUTMR and by persons authorised under the relevant national law to exercise these rights.

In assessing the proprietorship of a sign used in the course of trade, the Office must analyse specifically whether the opponent has acquired rights over the sign ‘in accordance with the national law’ (judgment of 18/01/2012, T-304/09, BASmALI, EU:T:2012:13).

Geographical indication ‘CUBA’ used in the course of trade in Spain

With regard to Spain and the protection that use of the appellation of origin ‘CUBA’ allegedly has under the national law, Article IV of the Bilateral Agreement between the Kingdom of Spain and the Republic of Cuba provides that:

Without prejudice to the provisions of Article 9 of the General Agreement on Tariffs and Trade, both governments take such measures as may be necessary, at the initiative of their public authorities or of the interested parties, to ensure protection in their respective territories, against any form of unfair competition against the natural or manufactured products of the other Contracting Party and, therefore deter and, as the case may be, ban the import, export, manufacture or sale of products bearing trade marks, trade names, inscriptions, references or any other similar signs constituting a false indication of the source or designation of origin, or of the type, nature or quality of the products.

Consequently, designations of origin such as ‘Cuba’, ‘Cubano’ (…) and any other designations defined officially by the competent Cuban authorities cannot be used in Spain to identify commercially any cigars, cigarettes, (…) or rum unless those products actually originated from Cuba.

Accordingly, it must be pointed out that the document submitted indicates that the protection recognised for these designations of origin falls within the law on the protection of competitors and consumers from unfair and misleading commercial practices. However, (…) geographical indications protected by this law cannot be invoked under Article 8(4) EUTMR (see by analogy decision of 23/10/2008, R 51/2007-4, ‘CUBAO/CUBA’, paragraph 24).

The mere fact that the corresponding national law, giving effect to the bilateral Agreement between Spain and Cuba for the protection of the geographical indication ‘Cuba’, allows a legal action or measures to be taken against unlawful use of such a geographical indication is not sufficient to grant a subjective right. The national law does not confer on a given legal entity (whether public or private) a subjective right allowing it to prohibit the use of a subsequent trade mark and the ‘proprietary requirement’ is, therefore, not met.

The opponent acknowledges this, but argues that it is the only entity granted the right to use the geographical indication ‘CUBA’ by the Cuban Intellectual Property Office and this vests a proprietorial interest in the opponent in the sense that it can prohibit the use of a subsequent sign by third parties. The opponent quotes Article 28.1 and Article 29 of the Cuban Decree-Act No.228 of Geographic indications. Furthermore, the opponent claims that the bilateral agreement between Spain and Cuba is self-executing and is part of the Spanish national legislation.

These arguments, however, cannot succeed. According to Article 8(4) EUTMR the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing the earlier sign, the opponent has the right to prohibit the use of a subsequent trade mark. Therefore, the provisions cited from the Cuban decree are not relevant, as it is the Spanish law that must grant such a right, not the Cuban law. Furthermore, as mentioned above, the text of the bilateral agreement refers to protection against unfair competition or misleading use. However, the essential issue is not whether or not, under said national law, these indications of origin are protected against unfair or misleading use by virtue of trade mark legislation, unfair competition legislation or any other legislation. The essential element is that the national law confers on a legal entity (whether public or private) a subjective right allowing it to prohibit the use on the market of a subsequent trade mark (see by analogy decision of 23/10/2008, R 51/2007-4, ‘CUBAO/CUBA’, paragraph 25).  

Consequently, the documents submitted do not confirm that the protection afforded to the appellation of origin ‘CUBA’ in Spain confers on its proprietor an individual right allowing it to prohibit the use of a subsequent trade mark.

In addition, the Opposition Division notes that opponent failed to prove/indicate the relevant conditions under which, in accordance with the applicable national law, the use of a subsequent trade mark may be prohibited.

To support its arguments, the opponent enclosed the judgment of the Provincial Court of Madrid of 26/11/2010 (Annex 5). However, this judgment is not directly relevant to the present opponent and present case, as it concerns a cancellation action for non-use of trade marks containing the word ‘HABANA’ for ‘cigars’ and proper reasons for non-use. The opponent also enclosed a decision of 06/10/2016 of the Spanish Patents and Trade Marks Office (OEPM) refusing registration of the Spanish trade mark No 3 598 336 ‘TROPICUBA’. This decision is irrelevant to the present case either, as it does not provide any clarification on whether the Spanish law grants the opponent a proprietary subjective right to prohibit use of subsequent trade marks.

According to Article 76(1) EUTMR, 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.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

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 EUIPO 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 evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

In the present case, the Opposition Division considers that, for Spain, the evidence submitted does not prove that the right recognised by the Bilateral Agreement grants a subjective right to the opponent to prohibit the use of a subsequent trade mark. Therefore, the opposition must be rejected insofar as it is based on the use of the geographical indication ‘CUBA’ in the course of trade in Spain.

Geographical indication ‘CUBA’ used in the course of trade in Germany 

With regard to Germany and the protection that the geographic indication ‘CUBA’ allegedly has under the national law, the Agreement between the Republic of Germany and the Republic of Cuba provides the following under Article 13:

1. The contracting parties will mutually grant all guarantees and benefits established in their internal legislation on the protection of indications of origin.

2. An indication of origin shall be deemed to be false, if in commercial traffic it is indicated on the article or with reference thereto, as well as in its advertisements or propaganda, for a mark or outside it, a geographic location, situated in any of the territories of both Contracting Parties in which the article has not been manufactured, prepared, harvested or collected. This will not be so understood if the name of the geographic location, according to trade uses, may be deemed as generic in nature. However, this exception will not include those geographical indications on industrial or agricultural products, whose quality or appreciation depends precisely upon the place of production or origin. Likewise prohibited is the use of legends, drawings, ornaments, photographic reproductions and other expressions that may in any way lead or attribute Cuban or German origin to articles or products, contrary to the facts.

The opponent argues that pursuant to the reciprocity principle, each contracting party of the bilateral agreement recognizes the geographical indications granted by the other and protects said geographical indications to the same extent that they are protected in the other party’s internal legislation. According to the opponent, by virtue of the reciprocity principle, the geographical indication ‘CUBA’ must be equally recognised in Germany, including the fact that according to the Cuban legislation, the opponent is entitled to prohibit the use of the contested trademark (as per Article 28.1 of the Cuban Decree-Act No. 228).

It can be deduced from the tenor of the Agreement, which expressly refers to the protection enjoyed by indications of origin under the national law, that these laws involve the protection of goods (such as industrial or agricultural products) with Cuban geographic origin.

However, contrary to the claims of the opponent, the provisions of the abovementioned Cuban law are not relevant in the present case. This is because according to Article 8(4) EUTMR, the relevant law is the Union legislation or the law of the Member State governing the earlier sign. Therefore, it needs to be examined if the national law confers on a legal entity (whether public or private) a subjective right allowing it to prohibit the use on the market of a subsequent trade mark.

In order to prove its claim that the German law affords it a right to prohibit the use of the contested application, the opponent submitted the German Act on the Protection of Trademarks and other Signs and its respective translation into the language of proceedings. In its observations, the opponent refers to Section 127 of the law, which reads as follows:  

(1) Indications of geographical origin may not be used in the course of trade for goods or services which do not originate from the place, area, territory or country which is designated by the indication of geographical origin if it is likely to mislead concerning the geographical origin should such names, indications or signs for goods or services of different origin be used.

(2) If the goods or services marked by an indication of geographical origin have special properties or a special quality, the indication of geographical origin may only be used in the course of trade for the corresponding goods or services of this origin if the goods or services have these properties or this quality.

(3) If an indication of geographical origin enjoys a particular reputation, it may not be used in the course of trade for goods or services of a different origin even if it is not likely to mislead concerning the geographical origin if use provides without good cause an opportunity for goods or services of a different origin to take unfair advantage of, or be detrimental to, the reputation of the indication of geographical origin or its distinctive character.

(4) The above subsections shall also apply if names, indications or signs are used which are similar to the protected indication of geographical origin or if the indication of geographical origin is used with additions insofar as

1. in cases falling under subs. 1, despite the deviation or the additions, it is likely to mislead concerning the geographical origin, or
2. in cases falling under subs. 3, despite the deviation or the additions, it is suitable to take unfair advantage of, or be detrimental to, the reputation or the distinctive character of the indication of geographical origin.

However, contrary to the opponent’s claim, this provision does not vest a quasi-proprietorial interest in a particular owner or a precise class of user in the sense that it can exclude or prevent others from unlawfully using the sign. It does not specify who can act against the unlawful act mentioned therein.

Therefore, the opponent has not proven that the geographical indications protected by this law are of the type falling within Article 8(4) EUTMR, namely that such indications of origin confer on their proprietors a subjective right allowing them to prohibit the use of a subsequent trade mark. The mere fact that the above provision prohibits unlawful use of a geographical indication is not sufficient to prove that the opponent has a right to prohibit the use of a subsequent trade mark, as this provision does not specify the persons entitled to act against such use. Hence, it does not confer an individual right to invoke such a right.

For the sake of clarity, the Opposition Division notes that Section 128(1) of the abovementioned German law actually does specify the persons entitled to act against any contravention of Section 127 of the same law. It reads as follows:

1. Anyone who in the course of trade uses names, indications or signs in contravention of section 127 may be claimed against by persons with an entitlement in accordance with section 8 subs. 3 of the Act Against Unfair Competition to claim rights for an injunction if there is a danger of recurrence. The right shall also exist if a contravention is threatened. Sections 18, 19, 19a and 19c shall apply mutatis mutandis.

However, the opponent did not refer to this section, nor did it submit the German Act Against Unfair Competition referred to in this provision pursuant to Article 76(1) EUTMR and Rule 19(2)(d) EUTMIR.

As a result, the Opposition Division considers that, for Germany, the evidence submitted does not prove that the right invoked through the Bilateral Agreement grants a subjective right to the opponent to prohibit the use of a subsequent trade mark nor that the relevant national law in relation to indications of origin provides for this possibility.

Therefore, the opposition must be rejected with regard to the ground of the use of the geographical indication ‘CUBA’ in the course of trade in Germany.

Finally, as regards the opponent’s request for re-examination of the contested EUTM application on absolute grounds, it must be stated that the opponent already submitted on 29/10/2013 third parties observations under Article 40 EUTMR. These observations were duly examined by the Office and did not give rise to serious doubts concerning the eligibility of the trade mark for registration.

It follows from the above that the opposition is not well founded under Article 8(4) EUTMR and therefore must be rejected.

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

Patricia LOPEZ FERNANDEZ DE CORRES

Liliya YORDANOVA

Gueorgui IVANOV

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.