OPPOSITION No B 2 922 923

Free, 8, rue de la Ville l'Evêque, 75008 Paris, France (opponent), represented by Yves Coursin, 49, Rue Galilée, 75116 Paris, France (professional representative)

a g a i n s t

Ricardo Cano García, Cala Tarida 170 Bajo, Edificio Club, 07830 Sant Josep de sa Talaia, Spain (applicant).

On 22/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 922 923 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 491 201 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 491 201 for the figurative mark . The opposition is based on, inter alia, French trade mark registration No 134 037 814 for the word mark ‘FREE’, in relation to which the opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to French trade mark registration No 134 037 814 for the word mark ‘FREE’. The opponent claimed reputation in France for the goods and services in Classes 9 and 38.

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 will 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 for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’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 opposition is based.

• Risk of injury: 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 opposition 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 abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in France for the following goods and services:

Class 9: Apparatus and equipment for recording, transmission, reproduction and the process of sound, images or data; telecommunication and communication apparatus and equipment for telephony, radio, telematic; computers.

Class 38: Telecommunication services; communication by computer terminals; telephone communications; providing access to electronic communication networks; cellular telephone communication; transmission of messages; computer aided transmission of messages and images; electronic mail; providing access to databases.

Reputation implies a knowledge threshold that 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 the present case, the contested trade mark was filed on 21/03/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the above mentioned goods and services for which the opponent has claimed reputation.

On 31/05/2018 the opponent submitted, inter alia, the following evidence:

• Press release dated 31/10/2000, relating to ‘Médiamétrie/Nielsen/Netratings (September 2000 internet audience ratings)’, showing that ‘FREE’ was among the three most-visited websites in France and that 1,12 million internet users, namely 33.6% of the internet users, had visited the website ‘Free.fr’ at least one time during the given period.

• Nine excerpts from ‘Médiamétrie’, dated 2007-2015, for example an excerpt of 14/05/2007 showing the most visited websites in France in March 2007, with ‘FREE’ in 4^th position having 14.097.000 unique visitors per month and an excerpt of 02/03/2015 showing the most visited websites in France in January 2015, with ‘FREE’ in 11^th position having 15.509.000 unique visitors per month.

• An excerpt from the website Médiamétrie.fr mentioning that Médiamétrie has been created in 1985 for internet audience rating in France and that its independence is guaranteed.

• An Affidavit on the website ‘free.fr’, dated 23/04/2015 and 24/04/2015 mentioning, for example, that ‘FREE’ offers television services, including notably TV channels, video on demand, personal TV channels, radio, etc. ‘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.

• Excerpts from www.01net.com/www.journaldunet.com dated 2001-2006, for example an excerpt dated July 2001 on internet audience ratings, showing ‘FREE’ in 2^nd position and an excerpt dated 21/04/2006, relating to ‘Médiamétrie/Net internet audience ratings’, showing ‘FREE’ in 3^rd position.

• ‘Taylor Nelson Sofres’ survey for the mark ‘FREE’, dated September 2000, indicating that 62% of all persons interviewed (general public) were aware of the earlier mark ‘FREE’ as an internet service provider and that 88% of the internet users were aware of the earlier mark ‘FREE’ as an internet service provider.

• ‘Taylor Nelson Sofres’ survey for the mark ‘FREE’ (1000 persons interviewed), dated November 2004, indicating that ‘FREE’ has a total recognition rate of 66% among the general public, and that ‘FREE’ has a total recognition rate of 88% among the internet users.

• ‘Benchmark-Journal du Net’ survey (2005) targeting 13.000 internet users to determine whether or not they intended to leave their current provider, and an extract from ‘Le Journal du Net’ referring to this survey. 44.1% of the people that were thinking of changing their access provider would prefer ‘FREE’ as being the new provider.

• Excerpt from the site ‘ciscoliveawards.com’ regarding the 2005 ‘CISCO innovation awards’. In 2005, ‘FREE’ won the ‘CISCO innovation awards’ in the category ‘Best Service Provider IP Infrastructure’.

• Report, dated 07/04/2006, of the ‘Organization of Economic Cooperation and Development (OECD)’ entitled ‘Working Party on Telecommunication and Information Services Policies - Multiple play: pricing and policy trends’. The report indicates that the opponent was the first company in France to introduce multiple-play services, particularly video, voice and data over ADSL.

• ‘60 millions de consommateurs’ survey, dated October 2012, indicating 95% consumer satisfaction with ‘FREE’ services (the highest percentage in the survey). The survey also includes a recommendation by the authors to use ‘FREE’ services for internet access, telephone and television.

• A press release, dated 13/01/2009, titled: ‘17 new destinations included in the Freebox flat rate package’ and mentioning: ‘Unlimited calls to 87 destinations with Free’s offering’, ‘True to its strategy of continuously expanding its level of service for an unchanged price (EU 29.99 per month)’.

• Excerpt of ‘free.fr’, dated 20/05/2010, and mentioning: ‘FREEBOX, the box that is more than one step ahead. Free is the inventor in 2001 of the concept of ‘box’, multi services box that gives access to internet and offers telephony services and television. The ‘Freebox’ is an upgradable ADSL modem easy to set up, with numerous features, that enables a multimedia convergence inside the household’. The logo appears on top of the website. Several pictures of the ‘FREEBOX’ are also displayed.

• An excerpt of the ‘free.fr’ website, dated 29/04/2014, referring to the logiciel freeplayer.

• Press release, dated 14/12/2010, titled ‘Free launches the Freebox Revolution’ displaying several pictures of the ‘freebox player’ and ‘freebox server’, together with a description and the price of these per month.

• Press article from ‘Capital’, dated 01/07/2011, entitled ‘Les marques des français … et préférées les moins aimées’, containing a survey showing that, in the fields of telecommunications and high technology, ‘FREE’ is the French people’s favourite French trade mark. It is in 6^th position, just behind some very famous international trade marks.

• An article from ‘www.freenews.fr’, dated 08/08/2011, stating that there are more than 15 million email boxes ‘Free.fr’.

• Survey from ‘GFK’, published on 16/01/2012, indicating that 97% of the interviewed persons have heard of the ‘FREE’ mobile phone offer and more than a half (56%) know it in detail.

• An article from ‘www.kantorworldpanel.com’, dated 25/04/2012, mentioning the following: ‘Free Mobile gains 4.6% of the market. On a period of 4 weeks from February 20th to March 18th, 2012, the market share of ‘Free’ mobile was of 4.6%, calculated on the number of clients, whereas four weeks before, the market share was of 1.8% for our first period of measurement.’

• Survey from ‘Que Choisir’, dated 07/05/2012, indicating that 89.4% in 2011 and 92.3% in 2012 were globally satisfied with their internet service provider ‘FREE’. Furthermore, for ‘FREE’ only 13.8% of their clients in 2012 admit to have had a problem with their internet access and 77.3% in 2012 would recommend this internet service provider to their relatives.

• An extract from ‘channelbiz.fr’, dated 20/09/2012, mentioning: ‘Apple and Free, the French are faithful to those marks more than any others (…) In the telecommunications operator’s 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’.

• ‘60 millions de consommateurs’ survey, dated October 2012, and a comparative study of November 2016. The survey of 2012 indicates, for example, 95% consumer global satisfaction with ‘FREE’ services (the highest percentage in the survey, being ahead of Orange, the second, with more than seven points). The survey also includes a recommendation by the authors to use ‘FREE’ services for internet access, telephone and television.

• An article from ‘Competition Authority’, notice no. 13-A-08 of 11/03/2013, mentioning ‘Twelve months after the launch of the offer, Free Mobile succeed to gain 5.2 millions of subscribers and to grant near of 8% of the market’.

• An article from ‘JDN Journal du Net’, dated 03/06/2013, mentioning the following: ‘On March 31st 2013, Orange is the first operator of the high speed and very high speed internet market with 41.1% of the subscriptions (9.9 million of subscribers). Then ‘Free’ (22.54%, 4.46 million of subscribers), ‘SFR’ (21.2%, 5.13 million of subscribers) and ‘Bouygues’ (7.81%, 1.89 million of subscribers) are following’.

• Survey from ‘01NET’, dated 10/06/2013, indicating that among the trade marks that symbolise the most the internet is the mark ‘FREE’ with 15%.

• Survey from ‘Que Choisir/’ISP Barometer’, dated 16/07/2013, indicating that 89.3% of the internet users that answered are satisfied with their internet service provider services. ‘FREE’ is the one that is satisfying the most its subscribers. Furthermore, for ‘FREE’ only 11.5% of their clients admit to have had a problem with their internet access and it has reached the highest satisfaction level on record and satisfies its subscribers the most: 85% ahead from ‘Numericable’ and ‘Orange’.

• Extract from ‘Wikipedia’, dated 01/10/2013, about the ‘Freebox’, according to which the ‘Freebox’ is an electronic device provided by the French internet service provider ‘FREE’ to its broadband subscribers. This device is mainly an ‘ADSL’ or ‘FTTH’ modem, but it is defined by the company ‘FREE’ as an electronic device serving as an interface between the computer equipment and/or audiovisual of the internet user and ‘FREE’s’ network. It is not only an interface between a computer and the internet, but also enables ‘FREE’ to provide auxiliary services using the network, such as IP television or IP phone, currently known under the name of ‘triple play’. The ‘Freebox’ can also be used as a router and as a point of access for a wireless network. A picture is displayed of the so-called ‘FREEBOX’. Furthermore, according to ‘Wikipedia’, many versions of the ‘FREEBOX’ were launched, version 1 in 18/09/2002 and version O 2 A in September 2011.

• ‘Taylor Nelson Sofres’ survey dated February 2014 (sample of 1004 persons interviewed), indicating that ‘FREE’ is known in relation to internet, landline and mobile services to 96% of the persons interviewed, even only by name, and that the notoriety of ‘FREE’ is even more important for people under 50, working and people having children.

• Excerpt from ‘Strategies’ (survey ‘IPSOS’), dated 06/03/2014, titled ‘Innovation at the heart of influence’ and ‘Influent trade marks (Top 10 per item)’ showing that ‘FREE’ is the number 10 in ranking as the most ‘innovative trade mark’, number 5 as ‘launch of new trend’ and 6th position as ‘step ahead’.

• Extract from ‘www.universfreebox.com’, dated 27/03/2013, on the assessment of the TV offers of the internet service provider. It is concluded that ‘FREE’ offers the wider offer of TV channels and replay. Reference is made to the 9^th edition of the 2011 (February) digital channel guide and the 11th edition of the 2013 digital channel guide, published by ‘CSA’. This guide compared the different TV offers of the ADSL operators. According to this study, ‘FREE’ offers 463 channels, whereas ‘SFR’ offers 170 channels, ‘Orange’ 160 channels and ‘Bouygues’ Telecom 179 channels.

• A press release, dated 16/01/2014, titled: ‘Free enhances its “Discovery” themed offering with three new premium channels included in the basic ‘Freebox’ TV package, ‘National Geographic Channel’, ‘Nat Geo Wild’, ‘Voyage’.

• A comparative study of consumer association ‘UFC Que choisir’ of the internet access providers, dated 20/11/2014, mentioning: ‘All the offers of the internet access providers are not the same. Depending on the technologies they use (ADSL, optical fibre, wire), of the quality and of the network extent, of the services they propose on their box and their modem, some of the internet service providers are better than others. To that, it must be added other elements such as the reliability of the services, the quality of the assistance or the honesty of the contracts. It is on the base of all these elements that we have established the following price list. It will guide you in your choices of a new internet service provider. You can, for each of them, accede to the details of the offers and find the more adapted package depending on your needs. Because the choice of an internet service provider is not something you do without thinking’. The earlier mark ‘FREE’ is mentioned, it has a score of 15 out of 20 and the global judgement is good.

• A document about the general terms of subscription, dated 10/01/2012, showing that the ‘Iliad-Free Group’ launched its mobile phone offer under the trade marks ‘FREE’ and that it became the 4^th mobile phone operator in France.

• Press excerpts dated from 2000-2012 referring to the mark ‘FREE’, for example, from ‘L’Internaute’, dated May 2000; ‘Le Figaro’, dated 09/12/2000; ‘CB News Communication’, dated December 2000; ‘Le Figaro Economie’, dated May 2012; ‘Le Monde’, dated February 2013; ‘Les Echos’, dated 29/04/2014; ‘UFC Que Choisir’, dated May 2014, ‘Industrie et Technologies’, dated 30/08/2014; ‘Cite World’, dated 31/07/2014.

• A press release dated 18/05/2017 indicating that on 31/12/2016, the number of subscribers to the mobile offer was of 12.700.000 and a press release, dated 01/09/2017, that to date, ‘FREE’ federates more than 13.140.000 individuals that subscribed to ‘FREE’s’ mobile offer.

• A press release from ‘Iliad’, dated 18/05/2017, and indicating that the revenues of the first-quarter of 2017 went up with 7% to EUR 1,224 million.

• A press release from ‘Iliad’, dated 01/09/2017, and indicating that 440.000 new subscribers were added, making ‘Free Mobile’ the leading recruiter of mobile subscribers for the 22^nd consecutive quarter, reaching a first-half revenue by over 7% to EUR 2,464 million.

• Excerpts of ‘free.fr’, with several dates, such as 22/12/2009, 15/05/2013, 16/07/2013, 30/11/2012, 18/10/2012, 03/11/2014, 16/10/2013, 02/02/2017 showing various offers of internet + telephone + television for EUR 29.99 per month and showing a picture of the ‘FREEBOX’.

• Press releases, dated 2012-2017, showing the number of broadband, landline and mobile subscribers, and giving market shares. For example, a press release of 2015 shows the following figures for ‘FREE’: 17 million subscribers; 390 000 new mobile subscribers during the quarter, raising the market share to above 16%; 91 000 new broadband and ultra-fast broadband subscribers making ‘FREE’ the operator with the second largest number of net adds in France; third-quarter consolidated revenues up by 8%; third-quarter landline revenue growth coming in at 1.4%; continued rapid rollout of the network with 657 new 4G sites opened during the quarter.

• Figures for advertising campaigns recorded by ‘Secodip-Taylor Nelson Sofres Media Intelligence - Kantar Media’ from 1999 to 2016, indicating for example, the following amounts, EUR 5.501.624 for 1999 and EUR 119.667.000 for 2016. There are also pictures of ‘FREE’s’ advertisement campaigns including the box.

• Numerous French judgements confirming the reputation of ‘FREE’ in France: for example, Judgment of the High Court of Nanterre of 04/11/2002, 23/02/2004, 17/11/2005 and 07/07/2016; Judgment of the High Court of Paris of 12/11/2002, 29/01/2003, 20/03/2007, 05/03/2008, 25/06/2009, 11/03/2010, 29/10/2010, 14/01/2011, 16/11/2012, 12/02/2015, 28/10/2016; Judgment of the Commercial Division of the Court of Cassation of 07/07/2004; Judgment of the Court of Appeal of Paris of 28/01/2004, 14/03/2014, 09/09/2014 and 16/10/2015.

It is clear from the evidence that the earlier trade mark ‘FREE’ has been subject to long-standing and intensive use in France and is generally known in the telecommunications market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources (several surveys, press articles and judgements of French courts). The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

The excerpts relating to internet audience ratings (Médiamétrie/NetRatings, Nielsen/Net Ratings) show that the site ‘free.fr’ was among the most visited sites in France throughout the whole period from 2000 to 2016.

According to the ‘Taylor Nelson Sofres’ survey, dated February 2014, the earlier mark ‘FREE’ is known to 96% of the persons interviewed in relation to internet, landline and mobile services.

From the press releases it can be established that a high number of customers subscribed to the internet, landline and mobile services provided under the mark ‘FREE’, this is also clear from the surveys and the different references in the press. ‘FREE’ was, in March 2013, the number two French operator in electronic communications (JDN Journal du Net, dated 03/06/2013). Regarding the mobile phone market, in a short period, there has been a significant increase of the market share having reached after three years already a market share of more than 16% (press release dated 12/11/2015).

Finally, the annual amounts spent on advertising featuring the ‘FREE’ mark from 1999 to 2016 are substantial, as they range from EUR 5.501.624 in 1999 to EUR 119.667.000 in 2016, as recorded by ‘Secodip-Taylor Nelson Sofres Media Intelligence, Kantar Media’.

Taking into account the above, it is concluded that the earlier mark ‘FREE’ obtained a strong reputation in France at least for telecommunication services in Class 38.

For reasons of procedural economy, the Opposition Division will not analyse the evidence with respect to the remaining goods and services in Classes 9 and 38 for which the opponent also claimed to have obtained a reputation. The Opposition Division will, therefore, proceed on the basis of reputation for the aforementioned services in Class 38.

For the sake of completeness, the contested goods and services are the following:

Class 9: Computer software; application software for social networking services via internet; computer software applications, downloadable; software applications for mobile telephones, digital tablets and other mobile devices; databases (electronic); electronic notice boards; downloadable promotional vouchers for exchange in physical shops; computer e-commerce software.

Class 35: Systemization of information into computer databases; sales promotion and promotions for others; computerised file management; providing information about products and services via telecommunication networks for advertising and sales purposes; compilation of information into computer databases; providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; advertising; providing of online sales space for sellers of goods and services.

Class 38: Providing access to databases; providing access to e-commerce platforms on the internet; electronic communications services; telecommunications; electronic and computerised bulletin boards; communications by cellular phones; message sending and receiving services; communication services via computer networks and the internet; transmission of digital files.

2. The signs

FREE
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark consisting of the word ‘FREE’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57). The contested sign is a figurative mark consisting of the word ‘Freeboo’, written in a fairly standard beige typeface in title case. On top appears a figurative element in the form of five interconnected red squares. All these elements are placed inside of a black rectangular frame.

With regard to the term ‘FREE’ of the earlier mark, while the General Court has already held that part of the French public understands the meaning of the word ‘FREE’ as the English equivalent of ‘libre’ or ‘gratuit’, other members of the French public will not perceive any message in that word (27/10/2010, T-365/09, Free, EU:T:2010:455, § 41). However, it is considered that the part of the French public that will completely disregard the meaning of the term ‘FREE’ is in the minority (05/07/2017, R 298/2017‑2, FREEVOLT / FREE et al.). The General Court has also held that the word ‘FREE’ is widely used not only among the English-speaking public, but also among all other persons with a basic knowledge of the English language who form part of the relevant public, which, in the present case, consists of average French consumers (04/02/2014, T-127/12, Freevolution, EU:T:2014:51). Therefore, ‘FREE’ is considered as a basic English word which is widely used (in expressions used in French also, such as ‘free-lance’, ‘free style’, ‘duty free’, for example).

Taking into account the above, the term ‘FREE’ has an inherently weak distinctive character in France where the relevant public (average consumers and professionals) understands it to mean ‘libre’ [free], in the sense of unlimited access to goods and services relating to the Internet (see, in that regard, decisions of 19/12/2013, R 1133/2013-2, LIVE FREE/FREE, § 24; 03/07/2013, R 393/2012-2, PRICEFREE / FREE, § 43; 25/01/2012, R 437/2011-2, FREELOUNGE/FREE, § 20; 31/01/2007, R 349/2006-2, BFREE/FREE; 16/06/2014, R 956/2013-2, FREE, § 48) or even ‘gratuit’ [free of charge]. However, regarding the earlier mark it has an inherent weak distinctive character, but it has become reputed, at least for some of the goods and services, namely some of the services in Class 38, as pointed out and proven above already.

Regarding the contested sign, it should be pointed out that the Court has held that, 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 which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Consumers naturally look for a meaning when reading a word and in light of the above judgment, the Opposition Division considers that the whole public will dissect the elements ‘Free’ and ‘boo’, respectively.

In the contested sign the element ‘Free’ has the same meaning, as explained above, as in the earlier mark and has a weak distinctive character for the relevant goods and services in Classes 9, 35 and 38. The element ‘boo’ has no particular meaning for the goods and services at stake and is normally distinctive. The figurative element in the form of five interconnected red squares does not refer to anything in particular either and is normally distinctive for the relevant goods and services. The figurative element in the form of a rectangular frame is more of a decorative nature and the public will not pay as much attention to this weak element and it has less impact on the overall impression.

Visually, the signs are similar to the extent that they coincide in the letters ‘F-R-E-E-’ with the only difference that in the contested sign they appear in a slightly different, albeit fairly standard, typeface. The whole earlier mark is included in the contested sign at the beginning of it. The marks differ in the figurative elements, as explained above, which are not shared by the earlier mark, of which the rectangular frame is weak.

Regarding the typeface in which the verbal element of the contested sign is written, this stylisation is fairly standard and it will not lead the consumer’s attention away from the element it embellishes.

Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is even more the case regarding the rectangular frame that is a weak element.

Therefore, taking all the aforementioned into account, the signs are visually similar to a low degree, because the coincidence occurs in weak elements.

Aurally, the pronunciation of the signs coincides in the syllable /FREE/, present identically in both signs. The pronunciation differs in the sound of the additional syllable /boo/ of the contested sign, which is normally distinctive.

Therefore, the marks are aurally similar to a low degree, as they coincide in weak elements.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘FREE’, included in both signs, will be associated by the relevant public with the meaning explained above, which has a weak degree of distinctive character. The element ‘boo’ has no particular meaning, nor do the figurative elements in the form of five interconnected red squares in the contested sign. However, although the coinciding words ‘FREE’ will evoke a concept, as these elements are weak, they will have a limited impact on the relevant public.

Therefore, the signs are conceptually similar to a low degree, as they coincide in weak elements.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are visually, aurally and conceptually similar to a low degree. 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 earlier mark has an inherent low degree of distinctiveness, but it enjoys a high degree of recognition and has proven to be highly reputed in the relevant territory in relation to, at least, telecommunication services in Class 38.

The contested goods and services are the following:

Class 9: Computer software; application software for social networking services via internet; computer software applications, downloadable; software applications for mobile telephones, digital tablets and other mobile devices; databases (electronic); electronic notice boards; downloadable promotional vouchers for exchange in physical shops; computer e-commerce software.

Class 35: Systemization of information into computer databases; sales promotion and promotions for others; computerised file management; providing information about products and services via telecommunication networks for advertising and sales purposes; compilation of information into computer databases; providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; advertising; providing of online sales space for sellers of goods and services.

Class 38: Providing access to databases; providing access to e-commerce platforms on the internet; electronic communications services; telecommunications; electronic and computerised bulletin boards; communications by cellular phones; message sending and receiving services; communication services via computer networks and the internet; transmission of digital files.

There is a link between all the contested goods in Class 9, since these goods, broadly speaking, belong to the computer science, technology and/or information technology sectors, which are nowadays closely related to the telecommunications sector. The goods, for example digital tablets and other mobile devices; electronic notice boards very often require the opponent’s telecommunication services, in the form of internet or mobile phone services, in order to function properly and are used in all kinds of telecommunication apparatus and equipment. With respect to the various kinds of contested software products, this software is linked to the earlier services in the sense that it could be software in the field of telecommunications and that it is used for the telecommunications equipment to work. All these goods have a certain link with the opponent’s services, since they overlap in public, can be marketed and offered through the same distribution channels and are all in some way to connect the end users to a global network and allow them to communicate through this network. Consequently, all kinds of technological apparatus, information technology equipment, hardware, software, peripheral devices and components used in computers, etcetera are made to acquire, store, process and transmit information, this through telecommunications.

There also exists a certain link between the contested services in Class 35, such as sales promotion and promotions for others; providing information about products and services via telecommunication networks for advertising and sales purposes; providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; advertising; providing of online sales space for sellers of goods and services, which are closely related to the telecommunications sector. These services, belong, broadly speaking, to the publications and advertising sectors and are provided to process and transmit information in the form of, for example, advertisements. These services often require the opponent’s telecommunication services, in the form of internet or mobile phone services, in order to function properly. All these areas of activity interact in the rendering of telecommunication and IT-services and in making connections accessible to users. The telecommunication, advertising, creation and updating of websites and publishing industries were until fairly recently quite separate, as for example advertising was primarily conducted through the medium of the printed or spoken word, in newspapers and magazines, radio and TV commercials. However, these services have rapidly converged and nowadays it is difficult to draw a clear line between them. Many telecommunication and IT-companies offer their clients advertising services, creation and updating of websites, including the lay-out and texts for these sites and advertising space through their own websites. Indeed, renting advertising space on websites is a rapidly growing trend and electronic communications operators’ websites, such as the opponent’s are now being extensively used as an advertising medium for businesses, through various forms of advertising, from traditional text-based ads and banner ads to more imaginative ways, such as technology-savvy word-of-mouth-techniques sharing articles, videos and applications.

Furthermore, undertakings in the telecommunications field provide statistics to clients on how often their websites are visited. Consequently, it is not uncommon for companies to offer, under the same or similar brands, both telecommunications services, such as internet access, and a wide range of auxiliary services, such as the technical planning of telecommunication facilities, market research and analysis, creation and updating of websites, advertising through world-wide networks to reach the highest number of potential buyers, all kinds of IT-services, etc. However, there is another fact to take into account when assessing the likelihood of consumers making a mental link between the marks concerned: any large business organisation which has managed to establish a substantial reputation for the trade mark under which it markets and sells its goods and services will, in the mind of the consumer, be associated with successful business management, organisation and marketing expertise (including, for example, the sales promotion and promotions for others; advertising in Class 35). Therefore, it is a short mental step to link the name of a famous business organisation with the kinds of activities covered by these contested services.

The remaining contested services in Class 35, such as systemization of information into computer databases; computerised file management; compilation of information into computer databases also belong, again broadly speaking, to the computer science, technology and information technology sectors, which are also nowadays closely related to the telecommunications sector and are all needed to provide these services, as already pointed out above. Furthermore, these services might be provided by internet, mobile phone services and/or telecommunication providers, since it is not unusual for telecommunication companies to offer their services to new potential clients via call centres, to look for new subscribers and to process their data in the companies’ databases.

Finally, all the contested services in Class 38 are various kinds of telecommunication services. Therefore, they are identical or similar to the opponent‘s reputed telecommunication services in Class 38.

The providers of integrated telecommunication and the abovementioned contested goods and services in Classes 9, 35 and 38, direct their marketing not only at corporate entities and organisations, but also at individuals. In many cases, they will be able to provide their clients with a full package of integrated solutions comprising a whole series of auxiliary goods and services designed to allow the user to access the telecommunications network and benefit from the possibilities offered by an interactive environment. Therefore, the above mentioned goods and services can be considered to be in neighbouring markets, and the services of a telecommunication and internet provider should be considered to have a connection to the above mentioned goods and services, as all the above mentioned goods and services may be provided or sold via telecommunication services.

For all the above mentioned goods and services, at least an association with the earlier mark remains, therefore, possible, taking into account the similarities between the marks and in particular the strong reputation acquired by the earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, and in particular the strong reputation of the earlier mark, the similarities between the signs and the close relationship between the conflicting goods and services, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. 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).

It is important to mention, however, that the applicant argues that the mark ‘‘FREEBOO’ is basically an app for gifts. At the moment, its sphere of action is local and it is reduced to the city of Alicante, as well as bordering areas such as San Vicente del Raspeig. Hundreds of companies have put their gift in FREEBOO. In FREEBOO you can find direct gifts and gifts with a small condition of all kinds’. However, the comparison of goods and services or a possible link between them must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison or any eventual link, since this comparison or link is part of the assessment of likelihood of confusion or for establishing a link in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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 opposition 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’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent 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 opponent 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.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

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 opponent bases its claim, inter alia, 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 opponent and the applicant 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 and services;

• 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.)

The relevant public is the public at large and a more professional public and the degree of attention will vary from average to above average, depending on the price, (specialised) nature and conditions of the purchased goods and services.

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 applicant’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 opponent, 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’.

Taking into account the strong reputation of the earlier mark, the similarities between the marks 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 applicant. There is a high probability that the use of the mark applied for may lead to free-riding, 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 opponent 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 and also services have identical characteristics to the services of the opponent, namely that they are of ‘high quality’, ‘fast’ and ‘stable’. The use of the trade mark applied for could also lead to the perception that the applicant is associated with or belongs to the opponent and, therefore, could facilitate the marketing of the goods and services for which registration is sought.

On the basis of the above, the Opposition 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.

Other types of injury

The opponent also argues that use of the contested sign would be detrimental to the distinctive character of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground and earlier rights on which the opposition was based.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Richard BIANCHI

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.