The SEPHORA trade mark enjoys widespread renown and enables its proprietor to prevent third parties from registering similar trade marks, even where those trade marks relate to goods that are very different from those for which the SEPHORA trade mark is renowned. This illustrates the benefits of a renowned trade mark and the value of opposing any subsequent trade mark that might be similar to it.
Sephora, the proprietor of the figurative trade mark SEPHORA, which it claims has acquired a reputation in the retail sale of toiletries, perfumery and cosmetics, is seeking a declaration of invalidity of the word mark SEPHORA TOBACCO, registered for goods in Class 34 – tobacco substitutes, tobacco products, cigarettes, cigars, smokers’ articles and accessories for electronic cigarettes.
The EUIPO (Cancellation Division) upheld the application and the trade mark was cancelled in respect of all the contested goods.
➡️ The European Office focuses its assessment on France, a major part of the European Union, where market research shows that the SEPHORA trade mark enjoys an extraordinarily high level of overall brand awareness (99 per cent) and a high level of spontaneous brand awareness (over 80 per cent) and “top-of-mind” awareness (nearly 50 per cent). This trade mark has acquired a solid reputation in France and, consequently, in a substantial part of the European Union.
➡️ The common element “SEPHORA” is devoid of meaning and, as such, has average distinctiveness. The English word “tobacco” has a close equivalent in French (‘tabac’); this element is, at best, of weak distinctiveness for goods that are tobacco or closely associated with it. The …
