CANCELLATION No 41 042 C (INVALIDITY)

Free Société par actions simplifiée, 8, rue de la Ville l'Eveque, 75008 Paris, France (applicant), represented by Yves Coursin, 49, Rue Galilée, 75116 Paris, France (professional representative)

a g a i n s t

Shenzhen Lofree Cultural Co., Ltd., Room 202 in Bldg F8,F518 Fashion Creative Park, No.1065 in Baoyuan Road, Xixiang Street, Bao'an Dis, Shenzhen, People’s Republic of China (EUTM proprietor), represented by Carolina María Sánchez Margareto, C/ Sueca, 22, 4º, pta 12, 46006 Valencia, Spain (professional representative).

On 18/09/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 16 261 505 is declared invalid for all the contested goods, namely:

Class 9: Computer peripheral devices; headphones; computer keyboards; pocket calculators; computer software applications, downloadable; mouse pads; cabinets for loudspeakers; horns for loudspeakers; laptop computers; sound transmitting apparatus; compact discs [audio-video]; audio- and video-receivers; smartwatches; batteries, electric; couplers [data processing equipment]; cases for smartphones; camcorders; chargers for electric batteries; battery chargers; chips [integrated circuits].

3. The European Union trade mark remains registered for all the uncontested goods, namely:

Class 11: Ultraviolet ray lamps, not for medical purposes; air purifying apparatus and machines; tanning apparatus [sun beds]; light bulbs; lamps; pocket torches, electric; torches for lighting; chandeliers; air sterilisers; fairy lights for festive decoration; Chinese lanterns; pocket searchlights; lighting apparatus for vehicles; standard lamps; aquarium lights; motorcycle lights; germicidal lamps for purifying air; water purifying apparatus and machines.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 16 261 505 namely against all the goods in Class 9. The application is based on, inter alia, French trade mark registration No 3 679 804 ‘FREE’, in relation to which the applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR and 8(5) EUTMR. Relating to other earlier rights the applicant invoked Article 60(1)(c) EUTMR in connection with Article 8(4) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant’s observations and the evidence filed will be assessed in the following sections of the decision.

The proprietor did not reply to the applicant’s observations, although a deadline was set for it to do so.

REPUTATION – ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(5) EUTMR

Pursuant to Article 60(1)(a) EUTMR, an European Union trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or 5 of that Article are fulfilled.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable in invalidity proceedings when the following conditions are met.

 The signs must be either identical or similar.

 The applicant’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the invalidity request is based.

 Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the invalidity request under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above-mentioned conditions may not be sufficient. The invalidity request may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor did not file observations and therefore it did not claim to have due cause for using the contested mark. In the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the applicant, the earlier trade mark has a reputation in France for some of the goods and services for which it is registered, namely telecommunication and communication apparatus and equipment for telephony, radio, telematics in Class 9 and, among others, telecommunication, communication services; communications by computer terminals; communications by radio; telephone communications; cellular telephone communication; computer aided transmission of messages and images in Class 38.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public in France.

In the present case the contested trade mark was filed on 18/01/2017. Therefore, the applicant was required to prove that the trade mark on which the invalidity request is based had acquired a reputation in France prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the applicant has claimed reputation, and that it was still standing at the time of the filing of the invalidity action, namely on 31/01/2020.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The observations and documents filed by the applicant are, among others, the following:

The sign "free" has been used for different goods and services, notably in the fields of communications, telecommunications and IT, and the reputation of FREE goes far beyond that of an internet service provider - the first service offered by FREE since 1999 - given that since 2003 FREE and the companies of the ILIAD group offer television and landline phone services, and mobile phone services since 2012.

Moreover, in order to offer its services to its subscribers, FREE developed IT and
telecommunication goods.

On 10/01/2012, ILIAD-FREE Group launched its mobile phone offer under the trade
marks "free" and became the 4th mobile phone operator in France (appendix 11: general terms of subscription of 10/01/2012). A survey carried out by the famous market research institute GFK (fourth largest market research organisation in the world after NIELSEN COMPANY, KANTAR GROUP and IPSOS) shows that just a few days after the launch of the offer, already 97% of the interviewed persons
had heard of the FREE mobile phone offer (appendix 12: GFK survey January 2012).

According to the applicant its company changed drastically the mobile phone market in proposing an offer with many services at a very low price, a fact that was pointed out by the press, and for example:

FREE blew up the French mobile phone market. ( ...) In reality, with its low cost offer, Free makes more than stimulate the market, it blew it up." (appendix 13: Le Monde, 08/02/2013)

The Great transformation. ( ...) Two years after [the launch of the mobile phone
offer], there is no doubt on the positive consequences of the arrival of the fourth operator, claimed by UFC-Que Choisir (appendix 14: Que Choisir, May 2014):

The reputation of "free" for the mobile phone offer is proved by the number of persons who subscribe to it in a short period of time. For instance, on 30/06/2016, nearly six months before the filing of the EUTM, the number of subscribers to the mobile offer was of 12,080,000 (appendix 15: press release dated 31/08/2016). To date, more than 13,296,000 individuals subscribed to "free" mobile offer (appendix 16: press release dated 12/11/2019).

FREE has offered internet services since 1999. Since 2002, the company launched its broadband offer, which has been completed by a landline phone and television offer at the end of the year 2003. Also, over the years the company has offered more services to its subscribers, for example, and beyond the internet access, many related services such as Wi-Fi, e-mails, web hosting, blog, chat, personal internet pages, file sharing, parental control, etc. (appendixes 18 and 19: bailiffs report on the website "free.fr”, 23 and 24/04/2015 - annexes 3, 16, 17, 25 and 26 + translation).

The company offers landline phone services including phone calls to more than 110 destinations and from landline to mobile phones (appendixes 18, 19 and 21: bailiffs report on the website "free.fr”, 23 and 24/04/2015 - annexes 2, 4, 18 and 19 + translation; excerpt of "free.fr" website of 02/02/2017).

The company also offers television services, including TV channels, video on demand, personal TV channels, radio, etc. (appendixes 18 and 19: bailiffs report on the website "free.fr", 23 and 24/04/2015- annexes 2, 6, 7, 8 and 21 + translation).
FREE's subscribers get access to all the television services through the TV decoder box which is connected to the TV and interacts with the server box thanks to the Freeplugs. More precisely, it is a television service that the subscribers watch on their television screen, and not on their computers. For many years, FREE offers the broader range of TV channels and catch-up television services (appendixes 22 to 24: article published on "universfreebox.com" of 27/03/2013; excerpt of digital channel guide of March 2013 and digital channel guide of April 2018).

In relation to the market share held by the company under the sign ‘FREE’ the applicant refers to the following information and proof:

Regarding the broadband market ‘FREE’ was, in March 2013, the number two French operator in electronic communications after ORANGE (appendixes 26 and 27: press release dated 15/05/2012, and excerpt of the press excerpt Journal du Net, 03/06/2013). ‘FREE’ is therefore the leader among the "new" operators on the scene since the state monopoly was lifted.

Regarding the mobile phone market, it is pointed out that, in a short period of time, there has been a significant increase of the market share, which ranges from 8% in 2012 to 19% in 2017 (appendixes 28 to 33: press release of 28/02/2013; 10/03/2014; 12/03/2015; 10/03/2016; 07/03/2017 and 13/03/2018).

The applicant argues that the "reputation" of a distinctive sign is correlated to the
number of people who know it, and on 31/03/2016 (nearly a year before the filing of the contested mark) nearly 6,216,000 were in possession of a box "free" (appendix 34: press release dated 17/05/2016). Given that according to the French National Institute of Statistics and Economic Studies, a household brings an average of 2.26 individuals (appendix 35: excerpt of the "insee.fr" website of 05/11/2014), it was around 14,048,160 individuals who received internet and television, who called by phone, who recorded programs or accessed videos on demand thanks to the boxes "free" that they have at home. The design of the box was conceived by one of the greatest contemporary designers, Philip STARK (appendix 7: press release dated 14/12/2010). Indeed, to date, more than 6,428,000 households possess a box "free" (appendix 16: press release dated 12/11/2019).

Also, on 18/01/2017, three months before the applicant filed its EUTM, the number of subscribers to the mobile offers was of around 11,900,000 and this number is still increasing (appendix 34: press release dated 17/05/2016), and in February 2020 there were around 13,296,000 subscribers (appendix 16: press release dated 12/11/2019), a success confirmed by the press articles and surveys filed by the applicant.

Nearly a year before the filing of the EUTM, FREE counted 6,216,000 households subscribers to Internet (appendix 34: press release dated 17/05/2016), so following the number of persons in French households provided by the French National Institute of Statistics and Economic Studies, around 14,048,160 individuals connect to internet thanks to FREE (appendix 35: excerpt of the "insee.fr" website of 05/11/2014). To date, more than 6,428,000 households had subscribed to FREE’s broadband offer (appendix 16: press release dated 12/11/2019).

The applicant states that, apart from the millions of customers and users of the "free" signs, the "free" sign is recognized by a substantial number of French citizens thanks to the advertising campaigns organized throughout the country, on TV, radio and billboards, which have contributed largely to extending the already very sound reputation of FREE, including among those who are neither customers nor users of FREE services but for whom "free" will at the very least call internet access, television, telephony services and telecommunications goods to mind.

The independent company SECODIP-TAYLOR NELSON SOFRES MEDIA INTELLIGENCE- KANTAR MEDIA places the value of advertising campaigns with a total value of no less than 1,132,194,624 Euros from 1999 to 2017 (appendix 58: figures for advertising campaigns recorded by SECODIP-TAYLOR NELSON SOFRES MEDIA INTELLIGENCE - KANTAR MEDIA from 1999 to 2017).
Moreover, it is pointed out that the advertising campaigns of FREE do not only present the services of FREE of internet, television, mobile phone and landline phone, but also deal with the equipment of FREE and in particular its boxes.
Thus, the box is not only well-known by the numerous FREE's subscribers but also by all the French consumers who are in contact with numerous FREE's advertisements, broadcasted on TV and posted on the street or in the subway, published on newspaper or on websites. The French public will thus associate the trademarks of FREE, included in the advertisements, with the very well-known box of FREE.

The applicant adds that, from its inception, FREE was an immediate success with the public, a fact widely confirmed by several opinion polls. Some examples are:

 In June 2019 the consulting firm BRAND FINANCE, which is specialized in trademarks, published a study of the French strongest trademarks in which "FREE" was ranked number two (appendix 59).

 The survey Que Choisir, conducted by the UFC among 19,536 consumers, places FREE on top of the ranking on all the concepts the survey deals with, for example ‘satisfaction with the quality of the service’ (appendix 60).

 The comparative study published by the magazine CAPITAL in November 2017 regarding telecommunications operators ranked the offer of FREE box as number one (appendix 61).

 On November 2016 the consumer magazine "60 MILLIONS DE CONSOMMATEURS" issued a comparative study of the telecommunication operators, in which FREE is ranked number one (appendix 62).

 The study made by IFOP-TERRE DE SIENNE in September 2016 (appendix 63), whose objective was to identify the top 20 companies which are the most useful according to French people mentions ‘FREE’ in it.

 In September 2015, the American magazine FORBES established a ranking of the world's top 100 most innovative companies, in which ILIAD (FREE) takes the 49th position (appendix 64).

 In January 2015 the revue CHALLENGES published a survey realized by TOLUNA and LE GRAND LIVRE DES MARQUES underlining the favorite trademarks of the French consumers. The survey shows that, in the field of telecommunications, the trade mark "FREE" is in first position (appendix 66).

 In February 2014, TAYLOR NELSON SOFRES performed a third survey on behalf of FREE (appendix 67). It arises there from that FREE is known by 96% of the French public. This percentage increases to 98 % among French people under 50 years old, who work and who have children.
This poll confirms that the reputation of FREE is still growing over the years and that nowadays, almost everyone knows FREE.

 In November 2014, the consumer association "UFC QUE CHOISIR" published a comparative study of the telecommunication operators, in which FREE is ranked number one (appendix 68).

 On its second edition survey of the "Most Influential Brands", IPSOS ranked the top ten influent trade marks for the French consumers, in which FREE was ranked number 6 behind trademarks such as Apple, Google, Microsoft, being FREE the only trade mark in the telecommunication sector (appendix 69).

 On 16/07/2013 the consumer association "UFC QUE CHOISIR" published a survey which is the result of four questionnaires detailed in the magazine
"QUE CHOISIR" (appendix 70). This survey clearly shows the success of FREE as internet service provider:

o around 94% of the people asked are generally satisfied with FREE as internet service provider.

o 80% of the people asked will recommend FREE as internet service provider. The survey indicates also that "FREE is the leader as to all the criteria, way ahead of its competitors whose results are various".

 The survey published by 01NET, a specialised magazine in the information
and technology field (IT) on 13/06/2013, (appendix 71), shows that FREE is the second leading trade mark, just after GOOGLE, but before AMAZON, APPLE or FACEBOOK.

 Only two days after the launch of the mobile phone offer, and from 12/01/2012
to 16/01/2012, GFK institute carried out a survey targeting 1.000 French consumers. To the question "the internet service provider FREE has decided to launch into mobile telephony. Have you heard about its mobile phone offer?", 97% of the interviewed persons answered that they have heard of FREE's mobile phone offer. Thus and just after the launch of the mobile phone offer, only 3% of the interviewed persons had not heard of the offer (appendix 12).

 The 60 Millions de consommateurs, magazine produced by the INC-Institut national de la consommation (National Consumer Institute - part of the Secretariat of State for Consumers) published the results of a survey targeting 5.052 consumers in July 2012, and revealing that FREE is the operator the consumers are the most satisfied with (95% of general satisfaction-appendix 72).

 The magazine CHANNELBIZ.FR published the survey Net Promoter Industry Benchmarks for Europe, which covers the most important marks in eight fields: personal computers, mobile phones, internet service providers and mobile operators, (...) in France, Germany and United Kingdom. The result to the question: Which mark would you recommend to your relatives, more
particularly in the high-tech field? is that Apple and Free, the French are faithful to those marks more than any others... and in the telecommunications operators' field, internet as well as mobile, Free establishes itself in 2012 as the most powerful trade mark (appendix 73).

 According to the publication 60 Millions de consommateurs which publishes each year its purchasing power rating: The consequences of Free Mobile on the phone market should be underlined as it contributed to give back to households an average of 7 per month and per household, making the purchasing power being amortized between June 2011 and June 2012". (appendix 74).

 The magazine QUE CHOISIR published by the most important French consumers organisation "UFC", gave the results of a survey concerning the satisfaction of French people with their internet service providers (ISP): IN relation to FREE: are the most satisfied with (92,3%), have the less dispute with (13,8%), would recommend the most to their relatives (77.3%) (appendix 75)

 In an article entitled Les marques preferees des franqais... (The favourite trademarks of the French people...), published in July 2011 CAPITAL magazine published a survey showing that FREE is the favourite French trade mark of the French people, in the field of telecommunications: it is in 6th position, just behind international trademarks such as MICROSOFT, APPLE or SAMSUNG (appendix 76).

 The magazine 60 Millions de consommateurs published in October 2007 the results of a survey targeting 11.000 consumers and revealing that FREE achieved the best figures in terms of customer satisfaction, with 93% of customers satisfied (for information, only 81% of customers of the historical operator, FRANCE TELECOM were satisfied) and that the multi-play services of FREE were the most advantageous (appendix 77).

 BENCHMARK GROUP - JOURNAL DU NET conducted in summer 2005 a survey targeting 13.000 internet users on whether or not they intended leaving their current provider: when asked If you are thinking of changing access provider, which would be your preferred new provider? 44,1% replied FREE (in comparison, only 10% answered FRANCE TELECOM); when internet users were asked if they wished to change operator, only 7,8% of FREE customers replied ‘YES’ (in comparison, 50% of FRANCE TELECOM customers replied ‘YES’). It arises there from that FREE attracts more people than other operators and it then knows how best to retain their loyalty (appendix 78).

 In November 2004, TAYLOR NELSON SOFRES DIRECT performed a second survey on behalf of FREE. It arises therefrom that: FREE is known to 66% of the general public at large, whether or not they use the internet; FREE is known to 88% of internet users. This poll confirms the figures from the 2000 survey and the growth of FREE’s reputation and services, as internet usage has expanded and competition increased, FREE has known how to retain its high reputation among a significantly larger number of users (appendix 79).

 As early as 2000, just a year after FREE was set up, in a survey conducted by TAYLOR NELSON SQFRES results reflected the interest shown by the public at large for internet in general, and FREE in particular. At that time: 62% of the members of the general public polled stated that they had heard of FREE internet access, if only by name; 88% of internet users polled had heard of FREE internet access (appendix 80).

 In 2006, the OECD (Organization of Economic Cooperation and Development) published a study of the telecommunications sector in some of its 30 member countries. The OECD is an international organization that today groups 36 developed or "intermediate" countries all with democratic forms of government, which brings together the governments of countries committed to democracy and the market economy from around the world to: support sustainable economic growth, boost employment, raise living standards, maintain financial stability, assist other countries economic development, contribute to growth in world trade". The OECD is a reference for economic publications and studies: "For more than 40 years, OECD has been one of the world's largest and most reliable sources of comparable statistics and economic and social data... OECD is one of the world's largest publishers in the field of economics and public policy" (excerpt of www.oecd.org). This study stresses that FREE’s triple play offer is the first and most complete offer, at a unique, inclusive price of 29,99 Euros (appendix 81): " FREE Telecom was the first company in France to introduce multiple-play services, particularly video, voice and data over ADSL. This study also involved two other French telecommunication operators with tariffs which ere
respectively two and three times higher than FREE’s prices.

Presence of the mark FREE in the press

According to the applicant, many articles have focused on the technical and commercial initiatives taken by FREE since 2000, in both general and specialized press (appendixes 13, 14, 65, 73, 75, 76, 82 to 95: articles and press excerpts from 2000 to 2019). A few examples are:

 At 51 years old, Free's leader received 54% of positive opinion. Described as a "visionary", "troublemaker", "audacious" or even "brave"... This business leader seems to embody "the one that breaks the codes". Considered as the most inspiring business leader by CEOs from
Lyon, Xavier Nie, FREE’s founder, (...) discussed his vision of entrepreneurship in France" (Le Progrès, 15/01/2019, appendix 95)

 Free is considered one of the most dynamic mobile operators in Europe. Moreover, know that his boss, Xavier Niel, has just been named to the European Leadership Awards that honor the most emblematic personalities of the world of business, politics and innovation; Free Mobile has just entered the 2018 ranking of the top 50 telecom operators in the world. This top 50, which already has Orange, SFR and Bouygues Telecom, was directed by Brand Finance (...) Free Mobile achieved a tremendous rise. In just 6 years, the telecom troublemaker has managed to gain a foothold in the French operator market (meilleurmobile.com, 31/03/2018, lesechos.fr. 13/03/2018, phonandroid.com, 12/03/2018, appendix 94).

 Free: The operator is one of the most trusted by the French. Ranking, the company is on the Top 10 of the most estimated companies... Free is the 8th company the most estimated in France, and the First operator and the first internet access provider in terms of confidence granted by the consumers (...) Bouygues (35th), Orange (36th) and Numericable-SFR (39th), ranked well after in consumers preferences of France, got even a negative score of favourable opinions" (20 minutes, 04/12/2015, appendix 65).

 Iliad (Free) joins in the First half of the ranking. At the 49th place. Xavier Niel's company is better placed than the only one other French of the FORBES ranking, namely Dassault Systemes (76th position) and, mostly, than Orange main element missing of the list (Silicon.fr, 06/09/2015. appendix 65).

 And as usual, the operator flaunts an incredible health. (...) A good performance, which is notably explained by the reputation of the trademark Free (Le Monde Economie, 15/05/2015; appendix 65)

 Free Mobile recruited more than 2 million of new subscribers in 2014 and surpassed in whole the 10 million. Xavier Niel succeeded his bet in only three years (L'Express, 12/03/2015- appendix 65).

 Two years after [the launch of the mobile phone offer], there is no doubt on the positive consequences of the arrival of the fourth operator, claimed by UFC-Que Choisir" (Que Choisir, May 2014; appendix 14);

 FREE blew up the French mobile phone market. (...) In reality, with its low cost offer, Free makes more than stimulate the market, it blew it up" (Le Monde, 08/02/2013- appendix 13)

 Apple and Free, the French are faithful to those marks more than any others... (...) In the telecommunications operators' field, internet as well as mobile, Free establishes itself in 2012 as the most powerful trademark. The one that is often presented in the "major Medias" as "APPLE" in the French way (...) is positioning itself in the market of internet services" (Channelbiz.fr, 20/09/2012- appendix 73).

 Free is the internet access provider rated by French consumers as the operator that they are the most satisfied with (Que Choisir, 16/07/2013 07/05/2012- appendixes 70 and 75).

 Free, the favourite French trademark of the French people in the telecommunications' and high technologies' fields (Capital, 01/07/2011- appendix 76).

 Eight out of ten French ready to migrate to Free" (Aujourd'hui en France,
17/01/2012- appendix 93).

 Free, already 12 audacious years (La Tribune, 10/01/2012- appendix 93).

 Free is an operator which many countries would love to have. Thanks to FREE, the ADSL market in France has received a complete overhaul and been optimised.... FREE is our favourite IAP (Internet access provider) without any doubt (Le Point, 15/11/2007- appendix 89)

 These brands raised to the rank of idols. ... Brand preference is coupled with opposition to a dominant competitor. Thus the "free-netters", Free's most militant customers, feel that they are on a crusade against France Telecom" (L'Expansion, December 2006- appendix 88).

 Free. fr: low profile but high audience. The website of the ISP is meant to be simple: Classical editorial contents, consumer-friendly services, managing tools dedicated to subscribers. Results: more than 10 millions visitors in June 2005 (Le Journal du Net, 02/09/2005- appendix 87); Typhoon Free ravages its rivals (Strategies, 16/09/2004); Free puts a turbo in broadband" (La Tribune, 20/10/2004) all of these articles in appendix 86);

 FREE: OFFENSIVE OF SEDUCTION. The one who has never heard about Free 9s offers shall raise or keep silent forever (ADSL magazine, December 2004- appendix 86).

 The ADSL bomb of Free" (Science & Vie Micro, December 2003- appendix 85).

 Free, a champion soon at the stock exchange? (Le Revenu, 25/01/2002- appendix 84); Free, the famous Internet access provider..." (Presence PC, 01/03/2002- appendix 84).

According to the applicant, the articles published demonstrate that the sign FREE not only enjoys a very high reputation but is also associated with positive images: innovation, quality and highly affordable prices.

Relating the attractive rates of the services offered under the trade mark, the applicant filed the following evidence:

 The arrival of FREE has lowered the mobile invoice of 30%" (Les Echos,
29/04/2014 appendix 14)

 Joyeux Noel for French Mobile Phone Users? Soon Mr NieTs telecoms group, Iliad SA, will unveil what it says is one of the cheapest mobile phone offers in Europe (The Wall Street Journal, 14/12/2011- appendix 92).

 FREE announces ADSL at less than 30 Euros. FREE toy offer (SVM Science et Vie Micro, October 2002- appendix 84)

 FREE jostled the mobile market by launching a package of 19,99 Euros per month (...) FREE is making a sensational entrance in the market, considering the prices as well as the content thanks to its two very good offers, and is keeping its promise by dividing the prices by more than two, has summarized the AFP (Le Nouvel Observateur, 10/01/2012- appendix 93)

 TV through the telephone. FREE offers TV channels, in addition to Internet and telephone. For 30 /month all included. Revolution (L'Est Republicain, 29/11/2003- appendix 85).

 FREE dynamites ADSL. Not satisfied with breaking prices, FREE also lends at no extra charge a modem... (Internet en action, November/December 2002- appendix 84).

 FREE overtakes everybody for ADSL at 30 Euros" (MICRO ACHAT,
December 2002- appendix 84).

The applicant filed the following documents from the general and specialist press which associate FREE with innovation:

 The most innovative telco in the world sets its sights on the US (…) Iliad, whose consumer brand name is Free, has been shaking up the French telecommunications market since it was founded in the late 1990s (…) Have you ever had a ‘three-in-one’ package with multiple-channel TV, broadband internet and wire phone service? Free invented that (…) Free has radically changed the same in the mobile industry in France (CITEworld, 31/07/2014- appendix 14)

 The Nobel for Free which revolutionized the fixed line (…) Free (…) is one of the most innovative operator in the world” (lndustrie-techno.com, 30/08/2014- appendix 14).

 For its mobile offer, FREE [FREE’s group] has surely analysed the most advanced technical options to improve its performance and lower its costs (Challenge, 10/01/2012- appendix 93)

 The mobiles networks utualization, (Le Figaro Economic, 16705/2012- appendix 93) FREE’s second revolution;

 French visionary looks to break free in telecoms… A bid to revolutionize France’s mobile phone market . .. (Financial Times 22/06/2009-apendix 91)

 There can be no doubt: Free has kicked off several technological revolutions in France: the first box, the first Triple Play solution, the Ipv6… so many innovations that have appealed to Internet users (Le Republicain Lorrain, 26/03/2009- appendix 91)

 Free, the freedom to innovate (Tele Cable Satellite, 05/01/2009- appendix 91).

 The FREEBOX is impressive from a technological point of view. Free is often a couple of steps ahead of the competition and offers original, very multi-media orientated, services via its Freebox v5 (L’ordinateur Individuel, January 2008- appendix 90).

 FREE has designed and developed its own network for which it won, in 2005, the “CISCO innovation award” (an international award for outstanding achievements in the deployment and successful implementation of innovative technologies). FREE won this award in the category of Best Service Provider IP Infrastructure with the following commentary One of the first projects to embed Mobile IP Connectivity into Public Transportation allowing customers/commuters to stay connected on any Wireless Network when on the move, carrying voice, video and internet traffic across the network, we commend Free Telecom for delivering an inexpensive alternative to its customers (excerpt from the website ciscoliveawards.com regarding the 2005 “CISCO innovation award”- appendix 96).

 Free: the forerunner (NET, December 2004- appendix 86).

 Free switches on ADSL TV before everyone (01Net, 27/11/2003- appendix 85).

Relating the association of the earlier mark with an image of quality the applicant filed the following documents:

 Launched in January, the fourth French operator Free Mobile succeeds to seduce the public at large (Le Monde, 15/06/2012- appendix 93)

 MFREE is the leader as to all the criteria, way ahead of its competitors whose results are various' (survey UFC- Que Choisir, 16/07/2013- appendix 70).

 FREE number one for quality of service (Le Figaro Economic,
08/01/2008- appendix 90).

 Quality: Free is the leader (Univers Mac, June 2005- appendix 87).

 Net surfers acknowledge [FREE's] great quality: reliability (Journal du Net, June 2001- appendix 83)

 ISP FREE is the favourite provider of net surfers (CB News Communication, December 2000- appendix 82).

It is clear from the exhaustive evidence filed that the earlier trade mark ‘FREE’ has been subject to long-standing and intensive use in France and is generally known in the telecommunications sector, where it enjoys a consolidated position among the leading brands, as has been attested by various independent sources (numerous surveys, press articles and press releases). This threshold of knowledge among the public existed when the contested mark was filed and extended up to the filing of the application for invalidity.

The amount of consumers for services offered under the mark in different fields of telecommunication services (TV, broadband, Internet), the marketing expenditure and market share affirmed by the applicant have been corroborated by the evidence. Likewise, the numerous EUIPO Opposition and Cancellation decisions, decisions from the Boards of Appeal of EUIPO and decisions from different judicial instances in France attest the reputation of the trademark FREE.

On account of all the documents mentioned above and the information contained therein, the Cancellation Division finds that the earlier mark enjoys a reputation in France at least for a very ample group of services within the broad category telecommunication services in Class 38 for which the earlier mark is registered. Whether or not the mark is also reputed for the goods in Class 9 is immaterial and this issue might be left open.

b) The signs

FREE
Earlier trade mark	Contested trade mark

The relevant territory is France.

The marks have no elements that could be viewed as more dominant than others.

The General Court has held that the word ‘FREE’ is widely used not only amongst the English-speaking public, but also amongst all other people with a basic knowledge of English such as the relevant public in this application (average and professional French consumers) (04/02/2014, T-127/12, Freevolution, EU:T:2014:51). Given that ‘free’ can be perceived as ‘libre’ or ‘gratuit’ (basically ‘free of charge’), in relation to the services for which reputation has been proved the term has a low degree of distinctiveness, as it will denote that these services can be accessed in an unlimited way or free of charge.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Given that the consumers will immediately perceive the term ‘free’ in the contested mark, they will be able to tell ‘lo’ and ‘free’ apart. Regarding the distinctiveness of ‘free’ the same that has been stated for the earlier trade mark applies for the contested mark. As for ‘lo’, it has no meaning in French and, therefore, it is distinctive.

It is true that the word ‘lo’ lays at the beginning of the sign in the contested mark, which is the part of a word mark is likely to retain the consumer’s attention more than the parts that follow (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, §§ 64 and 65). However, that consideration cannot apply in all cases and it cannot, in any event, undermine the principle that the examination of the similarity between the marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not examine its individual details (09/04/2014, T-501/12, Octasa, EU:T:2014:194, § 58). This applies to the contested mark, where it is unlikely that the attention of the public will focus solely on ‘lo’ and ignore ‘free’, in particular as the latter forms the largest part of the sign.

The marks coincide in the term ‘free’; however, given that this term is weak, the degree of similarity of the marks is visually, aurally and conceptually, low.

As the marks are similar for the relevant public, one of the conditions for Article 8(5) EUTMR applies and the evaluation of the present case will continue.

c) The ‘link’ between the signs

As seen above, the earlier mark has a reputation and the signs are similar to a low degree in all three levels of comparison.

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The services for which reputation has been proved are, at least, telecommunications in Class 38 and the contested goods are in Class 9, computer peripheral devices; headphones; computer keyboards; pocket calculators; computer software applications, downloadable; mouse pads; cabinets for loudspeakers; horns for loudspeakers; laptop computers; sound transmitting apparatus; compact discs [audio-video]; audio- and video-receivers; smartwatches; batteries, electric; couplers [data processing equipment]; cases for smartphones; camcorders; chargers for electric batteries; battery chargers; chips [integrated circuits], that is to say, hardware and software, peripheral devices, devices that transmit sound and images and accessories for these goods. Some of the goods and services are similar as they have the same purpose, they usually coincide in relevant public and distribution channels and, furthermore, they are complementary. Other goods are used together with those goods that have been deemed similar to the applicant’s services, for example cases for smartphones vis-à-vis sound transmitting apparatus, and many of the goods are operated on batteries and need battery chargers, so inevitable there is a link between these goods and the services.

The relevant public in relation to the conflicting goods and services that are offered in the same or neighbouring markets is the same, and so is the degree of attention displayed. The marks are similar and the earlier mark has a strong reputation in France.

Given the circumstances, it may be assumed that a link between the signs will be immediately established in the minds of the relevant consumers. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96). The Cancellation Division will therefore proceed with the examination of the case.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in invalidity proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the applicant must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the applicant should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The applicant bases its claim on the following:

 the earlier mark ‘FREE’ possesses an exceptional reputation;

 the similarity between the signs is such that the public could very easily associate them and wrongfully believe that the conflicting goods and services are provided by related companies;

 all conflicting goods and services are identical or at least similar;

 it is natural that companies extend their brands to cover identical or at least neighbouring markets, and, accordingly, the relevant public may easily come to the conclusion that such brand extension has taken place, and the likelihood of association is, therefore, much higher;

 in view of its special attractiveness, the earlier mark may be exploited even outside its natural market sector;

 the French consumer could assume that the applicant and the EUTM proprietor are economically linked;

 the average French consumer could very well attribute the good image of the earlier mark ‘FREE’ (innovation, quality and affordable prices) to the contested goods;

 in such a situation, the applicant would take advantage of the reputation of the earlier mark ‘FREE’, profit from its advertisement as well as commercial and technical investment.

According to the Court of Justice of the European Union …..as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment, which takes into account all the factors relevant to the circumstances of the case (10/05/2007, T-47/06, Nasdaq, EU:T:2007:131, § 53, confirmed, on appeal, by 12/03/2009, C-320/07 P, Nasdaq, EU:C:2009:146; see also 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

The EUTM proprietor’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example, where there is clear exploitation and free-riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics that it projects are transferred to the goods and services covered by the mark applied for, with the result that the marketing of those goods and services is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T-128/06, Camelo, EU:T:2008:22, § 46).

In the present case, the earlier mark has obtained a strong reputation among the relevant public in relation to, at least telecommunication services in Class 38. It has become an attractive and powerful brand in the French market. As can be seen in the evidence provided by the applicant, the mark ‘FREE’ is subject of a high consumer satisfaction and is associated by the relevant public with ‘high-quality, fast, stable internet access services’.

It is true that in the case at issue the marks are similar in a weak element; however, the element in which they differ is shorter than the common one. Taking into account the strong reputation of the earlier mark and the fact that the conflicting goods and services belong to the same or neighbouring markets, it is concluded that the relevant public will make a connection between the marks, an association that will produce a commercial benefit for the EUTM proprietor. There is a high probability that the use of the mark applied for may lead to freeriding, that is to say, it would take unfair advantage of the well-established reputation of the earlier mark and the considerable investments undertaken by the applicant to achieve that reputation. The contested sign could take unfair advantage of the image of the earlier trade mark and the message conveyed by it, that is, that its goods have identical or similar characteristics to the services of the applicant, namely that they are of ‘high quality’, ‘fast’ and ‘stable’. The use of the contested trade mark could also lead to the perception that the EUTM proprietor is associated with or belongs to the applicant and, therefore, could facilitate the marketing of the goods for which the later mark is registered.

On the basis of the above, the Cancellation Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Since the application for invalidity is entirely successful under Article 8(5) EUTMR, there is no need to analyse the remaining grounds invoked by the applicant. In addition, as the application is entirely successful on the basis of French trade mark registration No 3 679 804, there is no need to evaluate the other trademarks on which the action is based.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Carmen SÁNCHEZ PALOMARES

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRIGUEZ

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.