OPPOSITION No B 3 067 244

Bolsas y Mercados Españoles Inntech, S.A.U., Plaza de la Lealtad, 1, 28014 Madrid, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

"Българска независима енергийна борса" ЕАД, Район "Оборище", бул. "Княз Александър Дондуков" № 19, ет. 7, 1000 София, Bulgaria (applicant), represented by Bureau Ignatov & Son, 53, "Schipchenski prohod" blvd., 1111 Sofia, Bulgaria (professional representative).

On 30/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 244 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 in Classes 35 and 36 of European Union trade mark application No 17 931 324 for the figurative mark . The opposition is based on the following earlier marks:

(1) European Union trade mark registration No 2 840 for the figurative mark ;

(2) European Union trade mark registration No 3 809 498 for the word mark ‘IBEX’;

(3) European Union trade mark registration No 16 930 901 for the word mark ‘IBEX MAB’;

(4) Spanish trade mark registration No 2 821 223 for the word mark ‘IBEX’ (the opponent indicated in its submissions of 15/05/2019 that this earlier mark is withdrawn as a basis of the opposition).

The opponent invoked Article 8(1)(b) and Article 8(5) 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.

On 24/11/2018 the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate the opposition and to submit additional facts, evidence and arguments. This time limit was extended and expired on 04/08/2019.

It is to be pointed out that under the grounds invoked in the present proceedings, entitled to file an opposition are proprietors of trade marks and authorised licensees (Article 46(1)(a) EUTMR).

In the present case, the opposition was filed by ‘Bolsas y Mercados Españoles Inntech, S.A.U.’. In the notice of the opposition it is, furthermore, indicated that the opponent is the owner/co-owner of the earlier marks.

However, as evident from the data contained in the Office’s database, the owner of the earlier trade marks is ‘Bolsas y Mercados Españoles Market Data, S.A.’ and the opponent is neither owner nor co-owner of the earlier rights.

If the opposition is filed by an 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 a 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. However, in the present case there are no indications or evidence of a transfer of the earlier marks to the opponent. From the opponent´s observations and evidence filed within the substantiation time limit it is clear that the opponent and the owner of the earlier marks belong to the same economic group but are not one and the same legal entity.

In addition to the above, the opponent neither claimed to be an authorised licensee nor the Opposition Division can find any indication that the opponent would be an authorised licensee of the proprietor of the earlier marks.

According to Article 25 EUTMR and Articles 26 and 29 EUTMR, the Office registers and publishes license agreements in respect of European Union trade marks. If the earlier mark basis of the opposition subject to the license agreement is an EUTM, the opponent does not have to submit any evidence of the license contract as long as the license has been registered and published at the Office according to Article 25 EUTMR. In the case at hand, no license has been registered and published at the Office in respect of the earlier marks either.

While the opponent is not required to present proof of a registered licence and there are no restrictions on what evidence can be submitted to support the opponent’s entitlement to file an opposition, it is up to the opponent to demonstrate that it is a licensee and also that it is authorised by the trade mark owner to file an opposition.

The Opposition Division takes note that on 15/05/2019 the opponent submitted, together with its observations, a written authorization from the opposing rights owner in favour of the opponent and explained that both companies belong to the same business group. However, in the Opposition Division´s view, this document and the evidence with respect to the economic relation between the parties is not sufficient to prove the opponent´s entitlement to file the opposition. Not only it is clear from the notice of opposition that the opponent indicated that it was the owner/co-owner of the earlier marks (and not an authorised representative; in the present case, there is a professional representative) but the provision of Article 46(1)(a) EUTMR clearly identifies the persons entitled to filing an opposition and the opponent clearly does not fall within the scenarios provided for by the applicable law. While it is true that a proprietor of a trade mark is free to appoint a professional or an employee representative in opposition proceedings before the Office, in the present case the opponent not only did not indicate to be acting on the earlier marks´ proprietor behalf but also does not comply with the provisions as regards representation by professional representatives and/or employees as per Articles 119 – 120 EUTMR.

On 04/03/2019, the opponent informed the Office that the opposition notice contains an error and that the name of the opponent should read ‘Bolsas y Mercados Españoles Market Data, S.A.’ (with a communication not in the language of the proceedings and without a translation into the language of the proceedings, i.e. not in compliance with Article 146 EUTMR). Even if this document was to be taken into account, it cannot lead to a different outcome to the present proceedings.

The Office allows a correction of the name of the opponent where it can be determined that an obvious mistake had been made by the opponent. However, such a correction can be allowed only where the mistake is obvious on the basis of all the information available in the file. Such is the case, for example, if the opponent’s and the representative’s details are mixed up, or where the opponent’s name clearly contains a typographical error. It is only where the Office can clearly determine that nothing else would have been intended than what is offered as the correction that can qualify a mistake as ‘obvious’.

This cannot be said about a difference between the name of the opponent and proprietor, because a difference in a company name normally designates a different company. Moreover, it is apparent from the analysis above and, in fact, from the opponent´s observations filed on 15/05/2019, that there were other possibilities that could have been intended by the opponent, so that the case at hand cannot be treated as an obvious mistake. Therefore, the opponent’s request for correction of its name in the notice of opposition cannot be accepted.

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 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

Denitza STOYANOVA- VALCHANOVA

Reet ESCRIBANO

Alina FRUNZA

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.