OPPOSITION No B 3 060 350

Sephora, 65 avenue Edouard Vaillant, Boulogne Billancourt, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Fisio Consultores, S.L., C/ Magallón 12, Santa Fe, 50420 Cadrete, Zaragoza, Spain (applicant), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 350 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 9, 35 and 42 of European Union trade mark application No 17 878 717 (figurative mark). The opposition is based on French trade mark registration No 4 232 601 (figurative 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.

The opponent accepted, as indicated in the notice of opposition, that the necessary information for the earlier trade mark is imported from the relevant online official database, accessible through TMVIEW, and that this source is used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR.

In addition, the opponent submitted on 03/01/2019 an extract from TMVIEW showing the details of the earlier national trade mark registration No 4 232 601, along with a translation in the language of the proceedings for the relevant information.

However, the owner of the trade mark registration appeared in the extract from TMVIEW and in the French online official database as ‘SEPHORA, Société Anonyme’. Therefore, there was a discrepancy with the opponent’s legal form, ‘SEPHORA, Société par Actions Simplifiée’.

On 16/09/2019 the opposition procedure was suspended and the opponent was requested for clarification of this discrepancy. The opponent submitted in response on 19/09/2019 evidence of a recordal of change of its legal form before the French Trade Mark Office, done on 20/03/2018. Therefore, the opponent clarified that the current legal form of the opponent is ‘SEPHORA, Société par Actions Simplifiée’, even though this updated name was not reflected in the extracted submitted from TMVIEW, neither in the French Trade Mark Office database.

Considering the above, it appears that the change of legal form before the French trade mark office, which was done on 20/03/2018, took place before the filing of the opposition and before the expiry of the time limit to file further facts evidence on 10/01/2019. Therefore, the opponent had the obligation to provide this additional information to comply with the substantiation requirements.

Therefore, 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

Saida CRABBE

Cristina SENERIO LLOVET

Vita VORONECKAITE

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.