• IN THE UK OFFICE

    Havana Goes Up In Smoke

    Corporation Habanos S.A. applied to register the trade mark Havana for Class 34 goods. The UK Trade Mark Office raised objections under Section 3(1)(b) and (c) of the 1994 Trade Marks Act on the ground that the mark consisted of a geographical name that other traders might legitimately wish to use on goods made in or product emanating from the Cuban capital. The applicant filed a wide range of evidence in an attempt to show that the mark had acquired a distinctive character through use. This evidence consisted of

    • A certificate from the Cuban Government showing that the applicant was exclusively authorised to use the name Habana (sic) in relation to tobacco products exported from Cuba.

    • Proof that there is state control of the production and export of tobacco products from Cuba and that the applicant was the beneficiary of this state monopoly.

    • Information on the applicant's annual sales of tobacco products in the UK which had risen from about £4 million in 1990 to about £13 million in 1996.

    • Labels used in the UK which bore the word Habana rather than Havana. Further, the labels all carried a prominent word mark which was not Habana (or Havana).

    • Trade evidence recognising the exclusive association of Havana with cigars (and cigarillos) made entirely of tobacco grown in Cuba and therefore with the applicant.

    • Survey evidence aimed at proving the link between Havana and the applicant.

     

    This substantial weight of evidence did not persuade the Examiner and the applicant requested a Hearing. The Hearing Officer maintained the Section 3 objections and ruled as follows,

    • The meaning of the words "in trade" in Section 3(1)(c) included importers and retailers, as well as producers and exporters. The applicant might control the export of Havana tobacco products from Cuba, but they could not control the trade in the goods in the UK. For example, a UK importer could repackage cigars from Cuba under their own brand or import Cuban tobacco with the intention of manufacturing cigars in the UK. Use of Havana to describe the geographical origin, kind and quality of the importer's goods would be use "in trade" in the UK outside the control of the applicant.

    • The fact that a third party's use of Havana might be protected by Section 11(2)(b) of the Act (a provision providing a defence against trade mark infringement) did not necessarily alter a finding under Section 3(1)(c).

    • The mark Havana served to guarantee the trade source of the goods sold in the UK merely because of the limited awareness in this country of the Cuban state monopoly over tobacco exports. Without that monopoly (and a conscious knowledge of it) the mark merely guaranteed the geographical origin, kind and quality of the goods. There was therefore nothing about the inherent qualities of the mark which allowed it to perform the essential function of a trade mark.

    • In relation to the evidence filed - The use shown did not appear to be trade mark use. The use was of Habana (rather than of Havana) and was consistent with an identification of geographical origin. - The trade witnesses recognition of the applicant as the source of Havana cigars was not "because of the trade mark" but because of their knowledge of the state monopoly. - The sort of association that arises from a monopoly situation does not necessarily mean that the mark has acquired the necessary distinctive character. - It would be wrong to limit the target audience to connoisseurs of fine cigars. - The trade witnesses' evidence about the perception of consumers should be given little weight since it dealt with only a small subset of such consumers. - After closely analysing the survey evidence, the impression given was that the actual recognition amongst the UK public of Havana as a trade mark was less than 2%.

    • It followed that there had been no use of Havana as a trade mark for cigars in the UK. Thus, there was very little recognition of Havana as a trade mark identifying the cigars of one company and any recognition that existed arose not from Havana being viewed as a trade mark but from a knowledge of the state monopoly in the export of tobacco from Cuba.

     

    Comment

    This case illustrates the considerable difficulties that face a UK trade mark applicant who wishes to register a highly descriptive or generic name in the UK. In order to succeed in such a case the trade mark owner must show widespread use of the sign in the UK, almost certainly as the sole trade mark. Use as a secondary mark, in combination with a house mark or another distinctive mark will not suffice. Further, a high level of consumer recognition will be required, if the products claimed are relatively low cost articles such as cigars.

    It follows that the decision given by the Hearing Officer in the above case was fairly predictable. The applicant might have been wiser filing a CTM application for a combination of Havana and a minimal device element. Such applications tend to be accepted by OHIM as a matter of course.