OPPOSITION No B 3 052 931

Novacity SAS, 65 Avenue du Président Kennedy, 59800 Lille, France (opponent), represented by Ondine Prevoteau, 4 Rue des Canonniers, 59841 Lille, France (professional representative)

a g a i n s t

Нова Сити Груп Оод, бул. Христо Ботев № 13, ет. 1, 1606 София, Bulgaria (applicant), represented by Illiana Marinova and Ivanka Pakidanska, 6 Trapezitsa Street, Fl. 1, Office 4, 1000 Sofia, Bulgaria (professional representatives).

On 18/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 931 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 792 201 for the figurative mark , namely against all the services in Classes 35, 36 and 37. The opposition is based on French trade mark registration No 4 402 522 for the word mark ‘NOVACITY’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

On 28/06/2018 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 03/11/2018.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the evidence submitted by the opponent within the given time limit for substantiation (03/11/2018) comprises the following.

• Excerpts from the French trade mark bulletin, BOPI 17/48 — Vol. I, page 314 (dated 01/12/2017) and BOPI 18/18 — Vol. II, page 106 (dated 04/05/2018), which display, inter alia, the opponent’s French trade mark registration No 4 402 522 for the word mark ‘NOVACITY’, all in French. The two owners of the mark are named as Matthieu Prevoteau and Julien Duhamel, with the additional notion in French ‘agissant pour le compte de ‘NOVACITY’, Société en cours de formation’, which was not translated into English.

The opponent submitted further evidence on 08/03/2019, after the time limit had expired, which comprised the following:

• A document stating that the additional notice in the registry of ‘agissant pour le compte de ‘NOVACITY’, Société en cours de formation’ translates as ‘they act on behalf of NOVACITY, company in process of constitution’.

• An excerpt from the French trade mark registry in French for the opponent’s trade mark.

• A copy of a registration certificate from the French register of commerce and companies in French. The certificate relates to the company ‘NOVACITY’, where Julien Duhamel acts as ‘Président’ and Matthieu Prevoteau acts as ‘Directeur général’.

• Copies of documents relating to the establishment of the company ‘NOVACITY’ naming Julien Duhamel and Matthieu Prevoteau in the administration section.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, which in the present case is 03/11/2018, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opponent of the present case is clearly listed, according to the notice of opposition, as ‘Novacity SAS, 65 Avenue du Président Kennedy, 59800 Lille, France’, while the owner of the trade mark on which the opposition is based on (French trade mark registration No 4 402 522 for the word mark ‘NOVACITY’) is, according to the notice of opposition, ‘Julien Duhamel’ and, according to the copy from the French trade mark registry, the owners are ‘Matthieu Prevoteau’, 37 rue jean bart, 59110 La Madeleine and ‘Julien Duhamel’, 27 avenue de lattre de Tassigny, 59350 Saint Andre lez Lille. Hence, there is a discrepancy between the opponent and the owner/s of the earlier mark on which the opposition is based. As for the additional notion of ‘agissant pour le compte de ‘NOVACITY’, Société en cours de formation’ in French, it must be remarked that the language of the proceedings in the present case is English and that no translation was provided before the expiry of the given time limit. The opponent claimed that the translations of publication BOPI 17/48 and BOPI 18/18 into English were in the notice of opposition. This is not the case, as these publications were only submitted in French.

The opponent in its notice of opposition opted to accept that the Office import the necessary information from the relevant online official database, accessible through TMView, and that this source be used for substantiation purposes as referred to in Article 7(3) EUTMDR. However, according to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

In the present case, the information available through the relevant online official database does not provide any additional information in English that may prove the opponent’s entitlement to file the opposition.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark, since the evidence submitted within the given time limit of 03/11/2018 is not sufficient to prove the opponent’s entitlement to file the opposition.

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

Claudia MARTINI

Tu Nhi VAN

Renata COTTRELL

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.