OPPOSITION No B 3 128 204

Head Sport GmbH, Wuhrkopfweg 1, 6921 Kennelbach, Austria (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Headbox Solutions Limited, 25 Holywell Row, London, EC2A 4XE, United Kingdom (applicant), represented by Lewis Silkin Ireland, 26 Lower Baggot Street, Dublin 2, Ireland (professional representative).

On 26/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 128 204 is rejected in its entirety.

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

REASONS

On 12/08/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 203 905 ‘HEADBOX’ (word mark), namely against all the services in Classes 35, 42 and 43. The opposition is based on international trade mark registrations designating the European Union No 1 435 193 and No 584 785 (figurative marks).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.

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, the evidence submitted by the opponent consists of extracts from the WIPO database, Madrid Monitor, referring to international trade mark registrations designating the European Union No 1 435 193 and No 584 785 showing ‘Head Technologies GmbH’ as the holder of these earlier rights.

However, according to the notice of opposition, the opponent is ‘Head Sport GmbH’. No evidence of a change of name or transfer has been submitted.

Therefore, the evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade marks.

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 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 05/01/2021 the opponent was given two months to substantiate the opposition and submit the abovementioned material. This time limit expired on 10/03/2021.

On 10/03/2021, the opponent filed further submissions, indicating, inter alia, the following.

 The opposition notice contains a simple typographical error and the opponent’s name should have been specified as ‘Head Technologies GmbH’ and not ‘Head Sport GmbH’. It should, therefore, be considered an obvious mistake, especially taking into account that both start with ‘Head’ and finish with ‘GmbH’.

 In some parts of the explanation of grounds attached to the notice of opposition, ‘Head Technologies GmbH’ appears as the opponent and, therefore, it is properly identified.

 The opponent confirmed that if the Office considered the opposition to have been filed by ‘Head Sport GmbH’, ‘Head Technology GmbH’ ratified and authorised ‘Head Sport GmbH’ for the filing of the opposition.

The Office allows a correction of the opponent’s name where it is clear that an obvious mistake has been made by the opponent. However, such a correction can be allowed only where the mistake is obvious to the examiner, not the opponent or applicant, on the basis of all the information available in the actual case file (and not other files). 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 we can clearly determine that nothing else would have been intended than what is offered as the correction that we can qualify a mistake as ‘obvious’.

This cannot be said of a difference between the actual name of an opponent in the application and the name of an opponent in the evidence, because a difference in a company name normally designates a different company. The only thing that can be ‘obvious’ to the examiner when checking the relevant data of the notice of opposition against the online evidence is the discrepancy itself, but not that it is a ‘mistake’. The Office should assume that the different opponent name was indicated intentionally, and that there is a reason for the discrepancy that will be explained by the opponent later within the substantiation period.

In light of the above, the opponent ‘Head Sport GmbH’ cannot be considered to be an ‘obvious error’, even if the facts attached to the notice of the opposition identified, in some parts, ‘Head Technologies GmbH’ as the holder of the earlier international trade mark registrations No 1 435 193 and No 584 785, which also correspond with TMview data.

Finally, as regards the alleged ratification/authorisation by ‘Head Technology GmbH’ for ‘Head Sport GmbH’ to file the opposition, it should be noted that:

a) no supporting evidence has been submitted by the opponent;

b) ‘Head Sport GmbH’ was identified as the owner rather than as a licensee in the notice of opposition; and

c) the notice of opposition was not accompanied by any evidence to indicate if it is the authorised person or the authorised licensee of the earlier right on which the opposition is based.

Therefore, the argument must be set aside.

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

Victoria DAFAUCE MENÉNDEZ

Fernando AZCONA DELGADO

Andrea VALISA

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.