OPPOSITION No B 3 060 221

Royal Distribution T D N, SAS, 1, rue du Calvaire, 59810, Lesquin, France (opponent), represented by Cabinet Jurisexpert, 104 rue Esquermoise, 59000, Lille, France (professional representative)

a g a i n s t

JT International S.A., Rue Kazem-Radjavi 8 1202 Geneva, Switzerland (applicant), represented by Kempner & Partners Llp, Fountain House, 4 South Parade, LS1 5QX Leeds, United Kingdom (professional representative).

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 221 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 880 407 , namely against all the goods in Class 9. The opposition is based on French trade mark registration No 4 231 675 for the word mark .The opponent invoked Article 8(1)(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.

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.

If the opposition is filed by the opponent who, according to the registration certificate, is not the owner of the earlier mark, the opposition will be rejected as not substantiated, unless the opponent has provided evidence of the transfer and, if already available, the registration of the transfer in the relevant register or the opponent has shown that both are the same legal entity, which has merely changed its name.

In the present case, according to the information available online, the French trade mark No 4 231 675 has been filed and registered on 07/12/2015.

However, according to the opposition notice, the opponent is ‘Royal Distribution T D N, SAS’ while according to the online register extract available from the French database excerpt and checked on the date of this decision, the owner of the earlier trade mark is ‘Royal Distribution, SAS’.

Therefore, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, since the owner of the mark is not the same

Within the substantiation period as defined by Article 7(2) EUTMDR the opponent must prove the existence, validity and scope of protection of the earlier marks or rights as well as submit the proof of entitlement to file the opposition.

Within the same time limit, the opponent may submit additional facts, evidence and arguments in support of its opposition.

On 03/09/2018 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 08/01/2019.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark. The opponent only made reference to evidence accessible online, which the Office has also checked. The Office considered the opposition not substantiated on 21/01/2019.

On 06/02/2019 the opponent asked for continuation of proceedings and submitted the registration certificate of the French trade mark No 4 231 675, this certificate was not translated into the language of the proceedings, namely into English within the time stipulated in the Regulations. The continuation of the proceedings was granted.

The opponent did not submit the necessary translation.

According to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, 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 opposition must therefore be rejected as unfounded.

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

Erkki MÜNTER

Maria José LÓPEZ BASSETS

Sabine HACKSTOCK

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.