Overview of the BoA Decision

On 19 May 2020 an opposition was filed by Havanna S.A (“Havanna”) against an Application by Soho Group for the mark HAVANA SOCIAL [figurative] (Fig 1) covering the following services in class 43: restaurant services; bar services; café services; services for providing food and drink.

The Opposition was based on Article 8(1)(b) EUTMR (likelihood of confusion) with its earlier mark shown above at Fig 2 which covered: Providing of food and drink; cafes, cafeterias, snack-bars, catering services. The provision of alcoholic beverages, with the exception of beers, provided that it is not rum flavoured, is expressly excluded from the aforementioned services.

During the opposition proceedings HAVANNA was put to proof of use of its mark during the period of 26 Feb 2015-25 Feb 2020. HAVANNA owns two cafes in Barcelona and filed limited evidence of use including the contracts for the renewal of the premises, websites of the shopping centres, undated photos of the premises, tickets with no goods and services indicated and evidence of internet presence on Youtube, Instagram etc. Most of the evidence was either undated or out of the scope- 2015-2020.

However, the Opposition Division rejected Havanna’s opposition in its entirety on the grounds that the documents submitted did not support genuine use of the mark throughout the EU.

Havanna subsequently appealed the decision to the Board of Appeal and filed additional evidence before the Board of Appeal arguing that it should be allowed into proceedings on the basis that it merely supplements the evidence already filed. The Board of Appeal agreed to allow the additional evidence which consisted of a copy of the franchise renewal agreement detailing a franchise plan to open a café in Madrid, VAT returns, statements of sales showing HAVANNA had a revenue exceeding 4million EURO between 2015 and 2020, and also confirmation that the revenue data referred exclusively to the sales of HAVANNA.

Based on the additional evidence, the Board of Appeal found (in a rather unusual decision) that notwithstanding the fact that HAVANNA operated just two restaurants in Barcelona and had provided limited evidence of use, that they were able to show genuine use of the mark for the following services: class 42: providing of food and drink; cafes, cafeterias, snack-bars.

The case has now been remitted to the Opposition Division to assess the opposition under Art. 8(1)(b) EUTMR.

This case is interesting because of the approach by the Board of Appeal to assessing the evidence. In particular, the fact that even though the individual pieces of evidence filed by HAVANNA were problematic and often weak (for example, much of the evidence was dated outside of the relevant period, the extent of use was very limited and none of the evidence showed the mark being used in the form as registered), the Board considers that the evidence as a whole was sufficient to demonstrate use throughout the EU.

Whilst the decision might seem positive for smaller businesses wanting to maintain and enforce EU-wide rights, our view is that the decision to find genuine use of HAVANNA’s mark based on the evidence filed was lenient and seems to be attributable to the facts of this specific case.

It will be interesting to see whether the Opposition Division now goes on to find a likelihood of confusion between the marks based on the revised specification of HAVANNA’s earlier mark.

Take-homes!

For us this case raises several interesting take-homes for both Stobbs and for our clients:

• Evidence needs to be comprehensive the first time around especially when evidence is available at the time of substantiation. Whilst in this case, the additional evidence was allowed, this cannot be assumed and so it is important to file as much evidence as possible at First Instance.
• The Board of Appeal has taken a lenient approach to the requirement for evidence of use to show use of the mark in the form as registered. Since in this case (as the Board points out at paragraph 69 of the decision), HAVANNA had failed to provide any evidence of use of the mark in the form as registered but was still able to show genuine use of the mark throughout the EU.
• The case shows that it is sufficient for the purposes of showing genuine use, that a commercial undertaking is only operating in a very small part of the EU, such as one city in one member state, and that this could be sufficient to maintain an EUTM.
• Finally, it highlights that filing evidence might be helpful (and necessary) for the Applicant to help make out their case.
• In this case, Soho Group did not submit any evidence at first instance relating to the state of the register or the market in relation to marks or restaurants containing the word HAVANNA or HAVANA and did not file detailed arguments on appeal relating to the shortcomings of the supplemental evidence filed. In particular, Soho Group did not file any arguments relating to the lack of evidence showing use of the mark as registered and instead focused on why the evidence should not have been admitted.