OPPOSITION No B 3 092 331

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

Freebo Group Oy, Vesalantie 2, 90410 Oulu, Finland (applicant).

On 30/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 331 is upheld for all the contested goods and services, namely:

Class 9: Apparatus and instruments for accumulating electricity from the renewable energy sources; downloadable electronic reports concerning renewable energy solutions; electronic publications recorded on computer media concerning renewable energy solutions; computer software for managing renewable energy solutions.

Class 16: Journals in the field of energy management and consumption; handbooks and user manuals in paper form for renewable energy solutions.

Class 38: Electronic transmission of electricity meter-reading data.

Class 42: Design, maintenance, development and updating of computer software for managing renewable energy solutions; hosting services and software as a service and rental of software for managing renewable energy solutions; installation, maintenance and updating of computer software for managing renewable energy solutions.

2. European Union trade mark application No 18 042 011 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent initially filed an opposition against some of the goods and services of European Union trade mark application No 18 042 011 for the figurative mark , namely against some of the goods and services in Classes 9, 16, 38, 42 and 45. However, on 26/11/2019, the applicant limited the list of goods and services in Classes 9, 16, 38 and 42 and deleted Class 45. Therefore, the opposition is now directed against these goods and services only. The opposition is based on, inter alia, French trade mark registration No 3 679 804 for the word mark ‘FREE’, for which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. The opposition is also based on three further trade mark registrations, for which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR, as well as on three earlier signs used in the course of trade, for which the opponent invoked Article 8(4) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 3 679 804 for the word mark ‘FREE’.

a) The goods and services

The goods and services on which the opposition is based are the following:

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; peripherals adapted for use with computers; software; electronic publications.

Class 37: Installation, maintenance and repair of telecommunication and communication apparatus and equipments.

Class 38: Telecommunication, communication services; communications by computer terminals; transmission of messages; computer aided transmission of messages and images; electronic mail; provision of telecommunication equipment and apparatus; telecommunication information; information and communication technology for data hosting and storage services.

Class 41: Providing electronic publications; publication of texts other than publicity texts.

Class 42: Design of software; websites hosting by electronic communication and telecommunication networks; assistance services relating to telecommunications; protection of property.

The contested goods and services are, after the limitation by the applicant on 26/11/2019, the following:

Class 9: Apparatus and instruments for accumulating electricity from the renewable energy sources; downloadable electronic reports concerning renewable energy solutions; electronic publications recorded on computer media concerning renewable energy solutions; computer software for managing renewable energy solutions.

Class 16: Journals in the field of energy management and consumption; handbooks and user manuals in paper form for renewable energy solutions.

Class 38: Electronic transmission of electricity meter-reading data.

Class 42: Design, maintenance, development and updating of computer software for managing renewable energy solutions; hosting services and software as a service and rental of software for managing renewable energy solutions; installation, maintenance and updating of computer software for managing renewable energy solutions.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested downloadable electronic reports concerning renewable energy solutions; electronic publications recorded on computer media concerning renewable energy solutions are included in the broad category of the opponent’s electronic publications. Therefore, they are identical.

The contested computer software for managing renewable energy solutions is included in the broad category of the opponent’s software. Therefore, they are identical.

The contested apparatus and instruments for accumulating electricity from the renewable energy sources are similar to the opponent’s apparatus and equipment for recording, transmission, reproduction and the process of sound, images or data. These goods are complementary, coincide in distribution channels and target the same relevant public. Multimedia electronic devices nowadays combine the functionalities of a video camera, mobile phone, mobile computing platform etc. Batteries (instruments for accumulating electricity) and chargers are indispensable for the use of these devices

Contested goods in Class 16

The contested journals in the field of energy management and consumption; handbooks and user manuals in paper form for renewable energy solutions are similar to the opponent’s publication of texts other than publicity texts in Class 41. These goods and services are complementary and may be produced or provided by the same kinds of undertakings.

Contested services in Class 38

The contested electronic transmission of electricity meter-reading data is included in the broad category of the opponent’s telecommunication, communication services. Therefore, they are identical.

Contested services in Class 42

The contested design and development of computer software for managing renewable energy solutions are included in the broad category of, or overlap with, the opponent’s design of software. Therefore, they are identical.

The contested hosting services and software as a service are included in the broad category of, or overlap with, the opponent’s websites hosting by electronic communication and telecommunication networks. Therefore, they are identical.

The contested maintenance and updating of computer software for managing renewable energy solutions; rental of software for managing renewable energy solutions; installation, maintenance and updating of computer software for managing renewable energy solutions are similar to the opponent’s design of software. These services coincide at least in distribution channels, relevant public and provider.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, for example in the IT, telecommunication and publishing sectors.

The degree of attention is considered to vary from average to above average depending on the price, frequency of purchase, (specialised) nature and conditions of the provided goods and services.

c) 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 the word mark ‘FREE’. The contested sign is a figurative mark composed of the verbal element ‘Freebo’ written in an orange title case typeface. On top of the letter ‘F’ are some short orange and yellow lines in the form of a fan.

While the General Court has already held that part of the French-speaking public understands the meaning of the word ‘FREE’ of the earlier mark as the English equivalent of ‘libre’ or ‘gratuit’, other members of the French-speaking public will not perceive any message in that word (27/10/2010, T‑365/09, Free, EU:T:2010:455, § 41). However, the part of the French-speaking public that will completely disregard the meaning of the word ‘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 amongst the English-speaking public, but also among all other people with a basic knowledge of English, including the average French consumer, who forms a part of the relevant public (04/02/2014, T‑127/12, Freevolution, EU:T:2014:51). Therefore, ‘FREE’ is considered a basic, widely used English word. It is also used in French expressions such as ‘free-lance’, ‘free style’, and ‘duty free’.

Therefore, the word ‘FREE’ has an inherently weak degree of distinctiveness 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, or even ‘gratuit’ (free of charge) (19/12/2013, R 1133/2013‑2, LIVE FREE / FREE et.al., § 24; 03/07/2013, R 393/2012‑2, PRICEFREE / FREE et. al., § 43; 25/01/2012, R 437/2011‑2, FreeLounge / FREE et.al., § 20; 31/01/2007, R 349/2006‑2, BFREE / FREE et. al.; 16/06/2014, R 956/2013‑2, FREE, § 48). The earlier mark has an inherent weak degree of distinctiveness. However, it has acquired a strong enhanced distinctiveness/reputation for at least some of the goods and services, namely some of the services in Class 38 (telecommunication, communication services), as shown below.

Regarding the contested sign, 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). Consumers naturally look for a meaning when reading a word. Therefore, the whole public will dissect the contested sign into the elements ‘Free’ and ‘bo’, because of the meaning of the element ‘Free’.

The element ‘Free’ of the contested sign has the meaning explained above for the earlier mark and has a weak degree of distinctiveness for the relevant goods and services in Classes 9, 16, 38 and 42. The remaining element ‘bo’ is a meaningless term and distinctive. The figurative element in the form of some short lines on top of the letter ‘F’ in the contested sign merely serves a decorative purpose. Consequently, it will have a very limited impact on the overall impression. Furthermore, the contested sign has no elements that are more dominant than others.

Visually, the signs are similar to the extent that they coincide in the letters ‘Free’. Therefore, the whole earlier mark is included at the beginning of the verbal element of the contested sign, where it occupies four out of six letters.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left (the initial part) the one that first catches the attention of the reader. The fact that the element ‘Free’ occurs at the beginning of both marks is relevant to the comparison.

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, because the public will more easily refer to the signs by their verbal element (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 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 applicable to the figurative element on top of the letter ‘F’ in the contested sign, especially since it merely serves a decorative purpose.

The marks differ in the last two letters ‘bo’ of the contested sign, which have no counterpart in the earlier mark, and in the figurative element, as described above. The marks also differ in the typeface and colours of the contested sign, which, being fairly standard, will not draw consumers’ attention away from the verbal element.

Therefore, and taking into account the distinctiveness issue and the fact that the coincidence occurs in a weak element, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘FREE’, present identically in both signs. The pronunciation differs only in the sound of the additional letters ‘bo’ of the contested sign, which have no counterpart in the earlier mark.

Therefore, and taking into account the distinctiveness issue and the fact that the coincidence occurs in a weak element, the signs are aurally similar to at least a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The word ‘FREE’, included in both signs, will be associated by the relevant public with the meaning explained above, which has a weak degree of distinctiveness. Furthermore, the element ‘bo’ is meaningless, and the figurative element does not refer to any particular concept.

Therefore, and taking into account the distinctiveness issue and the fact that the coincidence occurs in a weak element, the signs are conceptually similar to at least a low degree.

As the signs have been found similar to at least a low degree in all three aspects of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has a reputation and enjoys a high degree of distinctiveness as a result of its long standing and intensive use in France in connection with the goods and services in Classes 9 and 38. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In the present case, the contested trade mark was filed on 28/03/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation or an enhanced distinctiveness in France prior to that date.

The opponent was initially requested to file further facts, evidence and arguments before 23/01/2020. For various reasons this deadline was extended several times. On 22/04/2020, within the deadline for the opponent to submit further facts, evidence and arguments, the opponent submitted the following evidence.

 A 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, or 33.6 %, had visited the website free.fr at least once during the given period;

 Some excerpts from ‘Médiamétrie/Net Ratings’, an independent company specialised in measuring audience ratings for the principal audiovisual media (television, radio, internet) showing the most visited websites in France for ‘FREE’, dated between 2007 and 2019. For example, an excerpt of 14/05/2007 for March 2007 shows ‘FREE’ in 4^th place with 14 097 000 different visitors; an excerpt of 01/07/2015 for May 2015 shows ‘FREE’ in 10^th place with 15 645 000 different visitors; an excerpt of 30/01/2017 for December 2016 shows ‘FREE’ in 10^th place with 13 848 000 different visitors; an excerpt of 27/03/2017 for February 2017 shows ‘FREE’ in 10^th place with 12 733 000 different visitors; an excerpt of 23/05/2018 for March 2018 shows ‘FREE’ in 28^th place with 15 525 000 different visitors; and an excerpt from 29/04/2019 for March 2019 shows ‘FREE’ in 35^th place with 14 049 000 different visitors (all visitor totals relate to the stated month.

 An excerpt from the website Médiamétrie.fr stating that Médiamétrie was created in 1985 for measuring internet audience ratings in France and that its independence is guaranteed.

 An excerpt dated June 2019 from ‘Brand Finance’, an annual report about the strongest and most valued French brands in 2019, showing ‘FREE’ in 2^nd place.

 An affidavit dated 23/04/2015 and 24/04/2015 for the website ‘free.fr’, mentioning, for example, that ‘FREE’ offers television services, including TV channels, personal TV channels, video on demand and radio. ‘FREE’ subscribers get access to all television services through a decoder box connected to the TV that interacts with a ‘Freeplugs’ server box. More specifically, it is a television service that subscribers watch on their television screens and not on their computers.

 Some excerpts dated 2001-2006 from www.01net.com and www.jounaldunet.com.. For example, an excerpt dated July 2001 on internet audience ratings showing ‘FREE’ in 2^nd place, and an excerpt dated 21/04/2006 on ‘Médiamétrie/Net internet audience ratings’ showing ‘FREE’ in 3^rd place.

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

 A ‘Taylor Nelson Sofres’ survey dated November 2004 for the mark ‘FREE’ (1 000 people interviewed) indicating that ‘FREE’ has total recognition rates of 66 % among the general public and 88 % among internet users.

 A ‘Benchmark-Journal du Net’ survey dated 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. It states that 44.1 % of those who were thinking of changing their access provider would prefer ‘FREE’ as their new provider.

 An excerpt published in COMMUNIQUÉ, dated 15/09/2016, entitled: ‘Terre de Sienne’ in which ‘FREE’ was considered useful, according to 77 % of the consumers, and ranked in 19^th place.

 An excerpt dated 06/09/2015 from www.silicon.fr stating, inter alia, the following: ‘Little surprise which allows us to push a (little) cock-a-doodle-do, Iliad (Free) joins the first half of the ranking in 49^th place. Xavier Niel’s company is better placed than the only other French company in the FORBES ranking, namely Dassault Systems (76^th place) and, mostly, than Orange main element missing of the list’.

 A ‘Challenges’ survey dated 29/01/2015 entitled ‘Les marques préférées des Français’ (the favorite trade marks of the French people). It shows that the trade mark ‘FREE’ has a sectoral aspect index of 100 % and is ranked first before ‘Orange’ with 94 % and ‘SFR’ with 69 %.

 An excerpt from www.ciscoliveawards.com regarding the 2005 ‘CISCO Innovation Awards’. In 2005, ‘FREE’ won the ‘CISCO Innovation Awards’ in the category ‘Best Service Provider IP Infrastructure’.

 A 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 states that the opponent was the first company in France to introduce multiple-play services, particularly video, voice and data over ADSL.

 A press release dated 13/01/2009 entitled ‘17 new destinations included in the Freebox flat rate package’. It mentions ‘[u]nlimited calls to 87 destinations with Free’s offering … [t]rue to its strategy of continuously expanding its level of service for an unchanged price (EUR 29.99 per month)’.

 An excerpt from the website free.fr dated 20/05/2010, stating: ‘FREEBOX, the box that is more than one step ahead. Free was the inventor in 2001 of the concept of ‘box’, the multi services box that gives access to the 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 at the top of the website. Several pictures of the ‘FREEBOX’ are also displayed.

 An excerpt from the website free.fr dated 29/04/2014 referring to a ‘freeplayer’ application.

 A press release dated 14/12/2010 entitled ‘Free launches the Freebox Revolution’. It displays several pictures of the ‘freebox player’ and ‘freebox server’, together with a description and monthly prices.

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

 An article from www.freenews.fr dated 08/08/2011 stating that there were more than 15 million email boxes on free.fr;

 A survey from ‘GFK’ published on 16/01/2012 indicating that 97 % of those interviewed had heard of the ‘FREE’ mobile phone offer and more than half (56 %) knew of it in detail.

 An article from www.kantorworldpanel.com dated 25/04/2012, stating

Free Mobile gains 4.6% of the market. In a period of four weeks from February 20th to March 18th, 2012, the market share of ‘Free’ mobile was 4.6 %, calculated on the number of clients, whereas four weeks before, the market share was 1.8 % for our first period of measurement.

 A survey from ‘Que Choisir’ dated 07/05/2012 indicating that 89.4 % of consumers in 2011 and 92.3 % in 2012 were globally satisfied with their internet service provider ‘FREE’. Furthermore, only 13.8 % of ‘FREE’ clients in 2012 admitted to having had a problem with their internet access. In 2012, 77.3 % would recommend this internet service provider to their relatives.

 A survey from ‘Que Choisir’ conducted via questionnaire in December 2017 among 19 536 people and published on 28/03/2018. It indicates that 83 % of consumers in 2018 were satisfied with their internet service provider ‘FREE’, thanks particularly to its quality of service and the efficiency of its customer service.

 An extract from www.channelbiz.fr dated 20/09/2012, stating:

‘Apple and Free: the French are faithful to these marks more than any others … Among telecommunications operators, internet as well as mobile, Free established itself in 2012 as the most powerful trade mark. The one that is often presented in the ‘major media’ as the French ‘APPLE’ … is positioning itself in the internet services market’.

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

 An article from Competition Authority, notice No. 13-A-08 of 11/03/2013, stating: ‘Twelve months after the launch of the offer, Free Mobile succeeds in gaining 5.2 million subscribers and nearly 8 % of the market’.

 An article from JDN Journal du Net dated 03/06/2013 stating

On March 31st 2013, ‘Orange’ is the first operator in the high speed and very high speed internet market, with 41.1 % of subscriptions (9.9 million subscribers), followed by ‘Free’ (22.54 %, 4.46 million subscribers), ‘SFR’ (21.2 %, 5.13 million subscribers) and ‘Bouygues’ (7.81 %, 1.89 million subscribers).

 A survey dated 10/06/2013 from ‘01NET’ indicating that the trade mark that most symbolises the internet is the mark ‘FREE’, with 15 %.

 A 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. ‘FREE’ is the provider considered most satisfactory by its subscribers. Furthermore, only 11.5 % of ‘FREE’ clients admit to having had a problem with their internet access. It has reached the highest satisfaction level on record, satisfying 85 % of its subscribers, ahead of both ‘Numericable’ and ‘Orange’.

 An extract dated 01/10/2013 from ‘Wikipedia’, 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 ‘FREE’ as an electronic device serving as an interface between the internet user’s computer equipment and/or audiovisual media and ‘FREE’s’ network. It is not only an interface between a computer and the internet, but it also enables ‘FREE’ to provide auxiliary services via the network, such as IP television or IP phone, currently known as ‘triple play’. The ‘Freebox’ can also be used as a router and as an access point for a wireless network. Furthermore, according to ‘Wikipedia’, many versions of the ‘FREEBOX’ were launched, version 1 on 18/09/2002 and version O 2 A in September 2011.

 A picture from ‘Wikipedia’ of the ‘FREEBOX’.

 A ‘Taylor Nelson Sofres’ survey dated February 2014 (1004 people interviewed) indicating that ‘FREE’ is known for internet, landline and mobile services by 96 % of people interviewed, if only by name. This is especially the case for people under 50, working and people with children;

 An excerpt from ‘Strategies’ (‘IPSOS’ survey) dated 06/03/2014 entitled ‘Innovation at the heart of influence’ and ‘Influential trade marks (Top 10 per item)’. It shows that ‘FREE’ is ranked 10th in ‘most innovative trade mark’, fifth in ‘launch of new trend’ and sixth in ‘step ahead’.

 An extract dated 27/03/2013 from www.universfreebox.com assessing internet service providers’ TV offers. It concludes that ‘FREE’ offers the widest range of TV channels and replay. It refers 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 compares the different ADSL operators’ TV offers. 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 entitled ‘Free enhances its ‘Discovery’ themed offering with three new premium channels included in the basic ‘Freebox’ TV package, ‘National Geographic Channel’, ‘Nat Geo Wild’, and ‘Voyage’’.

 A comparative study of internet access providers dated 20/11/2014 from the consumer association ‘UFC Que choisir’, stating that

Not all the internet access providers’ offers are the same. Depending on the technologies they use (ADSL, optical fibre, wire), the quality, the network extent, and the services they offer on their box and modem, some internet service providers are better than others. To that 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 basis of all these elements that we have established the following price list. It will guide you in your choice of a new internet service provider. You can, for each of them, view the details of the offers and find the most appropriate package for your needs – because the choice of an internet service provider is not something you make without thinking.

The earlier mark ‘FREE’ is mentioned with a score of 15 out of 20 and the global judgment ‘good’.

 A document dated 10/01/2012 concerning general terms of subscription. It shows that the ‘Iliad-Free Group’ launched its mobile phone offer under the trade mark ‘FREE’, and that it became the fourth mobile phone operator in France.

 Some press excerpts dated 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; and 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 12 700 000, and a press release dated 01/09/2017, indicating that up to that date ‘FREE’ had federated more than 13 140 000 subscribers to their mobile offer.

 A press release from Iliad dated 18/05/2017 indicating that revenues in the first quarter of 2017 went up by 7% to EUR 1.224 million.

 A press release from Iliad dated 01/09/2017. It indicates 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 of EUR 2.464 million – an increase of over 7 %.

 Some excerpts from the website 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, and 02/02/2017. They show various internet, telephone and television offers for EUR 29.99 per month and a picture of the ‘FREEBOX’;

 Some 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 gives 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 of 1.4 %; and continued rapid rollout of the network with 657 new 4G sites opened during the quarter.

 Some figures for advertising campaigns recorded by ‘Secodip-Taylor Nelson Sofres Media Intelligence - Kantar Media’ (an independent company) from 1999 to 2017, indicating, for example, the following amounts: EUR 5 501 624 for 1999, EUR 119 667 000 for 2016 and EUR 113 014 000 for 2017. There are also pictures of ‘FREE’s’ advertising campaigns including the box.

 Numerous French court judgments confirming the reputation of ‘FREE’ in France. For example, judgments of the High Court of Nanterre of 04/11/2002, 23/02/2004, 17/11/2005 and 07/07/2016; judgments 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 and 06/04/2018; a judgment of the Commercial Division of the Court of Cassation of 07/07/2004; and judgments of the Court of Appeal of Paris of 28/01/2004, 14/03/2014, 09/09/2014 and 16/10/2015.

Preliminary observations on the evidence

Enhanced distinctiveness requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

The opponent claims that the market share held by a brand is decisive in appraising its reputation or enhanced distinctiveness. In the broadband market, ‘FREE’ was, in March 2013, the second French operator in electronic communications after ‘ORANGE’, which benefits from its position as historical operator. In 2018, ‘FREE’ was still in second place. The increase can be seen in the following table submitted by the opponent:

Period	Market share
December 2012	8 %
December 2013	12 %
December 2014	15 %
December 2015	17 %
December 2016	18 %
December 2017	19 %

Therefore, in the mobile phone market, FREE is the fourth operator, but it has already won more than 19% of the market.

Furthermore, the opponent submitted a table drawn up by ‘Secodip-Taylor Nelson Sofres Media Intelligence - Kantar Media’ with the following figures for advertising campaigns:

1999	5 501 624
2000	28 332 000
2001	13 321 000
2002	20 187 000
2003	18 332 000
2004	21 906 000
2005	21 725 000
2006	33 990 000
2007	46 695 000
2008	93 356 000
2009	83 778 000
2010	61 268 000
2011	70 237 000
2012	78 141 000
2013	91 720 000
2014	105 565 000
2015	105 666 000
2016	119 430 000
2017	113 014 000

Conclusion regarding enhanced distinctiveness/reputation

It is clear from the evidence that the earlier trade mark ‘FREE’ has been subject to long-standing and intensive use in France. It 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 French court judgments). The sales figures, marketing expenditure and market share shown by the evidence, and the various press references to its success, all unequivocally show that the mark enjoys a high degree of recognition among the relevant public going back to at least 1999/2000.

The excerpts relating to internet audience ratings (Médiamétrie/Net Ratings) show that the website free.fr was among the most visited websites in France throughout the period from 2000 to 2019. Furthermore, the opponent submitted a table summarising the audience ratings for free.fr site since 2000. This shows the number of visitors per month in the most recent years before the filing of the contested mark: for example, 15 645 000 in May 2015, 13 848 000 in December 2016, 12 733 000 in February 2017, 15 525 000 in March 2018 and 14 049 000 in March 2019.

According to the ‘Taylor Nelson Sofres’ surveys dated 2000 and 2004, 88 % of internet users were aware of the mark ‘FREE’ as an internet service provider. This number went up, and in February 2014 the earlier mark ‘FREE’ was known by 96 % of the people interviewed in relation to internet, landline and mobile services. The survey from ‘60 millions de consommateurs’ dated 2012 indicates 95 % global consumer satisfaction with ‘FREE’ services, ahead of ‘Orange’ by more than 7 points. According to a survey dated 2015 from ‘Challenges’ concerning the the French people’s favourite trade marks, ‘FREE’ was ranked in 1^st place, ahead of ‘Orange’, with 94%. Another survey from ‘GFK’ dated 2012 indicates that 97 % of those interviewed had heard of the ‘FREE’ mobile phone offer and that more than half (56 %) knew of it in detail. The surveys from ‘Que Choisir’ dated 2012 and 2017 indicate that 89.4 % of consumers in 2011, 92.3 % in 2012 and 83 % in 2018 were globally satisfied with their internet service provider ‘FREE’, thanks particularly to its quality of service and the efficiency of its customer service. Finally, the excerpt from ‘Brand Finance’ dated 2019 shows that ‘FREE’ was the second strongest and most valued French brand in that year.

The press releases establish that a large number of customers subscribe to internet, landline and mobile services provided under the mark ‘FREE’. This is also clear from the abovementioned surveys and the various references in the press. In 2011, ‘FREE’ was the French people’s favourite French trade mark, ranked in 6^th place just behind some very famous international trade marks (Capital, 01/07/2011). In addition ‘FREE’ was, in March 2013, the second French operator in electronic communications (JDN Journal du Net, 03/06/2013). In 2018, ‘FREE’ was still second (JDN Journal du Net, 04/04/2019). In 2014, ‘FREE’ was ranked in 10^th place for ‘most innovative trade mark’, ranked 5^th for ‘launch of new trend’ and ranked 6^th for ‘step ahead’ (Strategies, 06/03/2014). Furthermore, ‘FREE’ was considered useful by 77 % of consumers, ranking in 19^th place in 2016 (COMMUNIQUÉ, 19/09/2016).

The annual amounts spent from 1999 to 2017 on advertising featuring the ‘FREE’ mark are very impressive, ranging from EUR 5 501 624 in 1999 to EUR 119 667 000 in 2016 and EUR 113 014 000 in 2017, as recorded by ‘Secodip-Taylor Nelson Sofres Media Intelligence - Kantar Media’. The figures in the table submitted by the opponent total approximately EUR 1 132 194 624 for advertising campaigns.

Taking into account all the above, the earlier mark ‘FREE’ has a strong reputation and subsequently strong enhanced distinctiveness in France, at least for telecommunication, communication 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 enhanced distinctiveness or to have obtained a reputation. The Opposition Division will, therefore, proceed on the basis of reputation for the aforementioned services in Class 38.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs are visually, aurally and conceptually similar to at least a low degree.

The contested goods and services are partly identical or similar to the opponent’s goods and services. They target the public at large and a more professional public, whose degree of attention varies from average to above average.

The earlier mark initially had an inherently low distinctive character. However, evidence was filed to prove a higher degree of distinctiveness, successfully as seen above in section d) of this decision. Therefore, the earlier mark is now deemed to have a strong reputation and subsequently strong enhanced distinctiveness in France, at least for telecommunication, communication services in Class 38. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In the present case, there is a likelihood of confusion, including a likelihood of association, after considering all the circumstances and all other factors of the case. Even though the earlier mark has an inherently weak distinctive character, it has gained a strong reputation and subsequently strong enhanced distinctiveness. Furthermore, the contested sign includes the whole earlier mark at its beginning, to which the consumer usually gives more attention. The signs only differ in the last two letters of the contested sign, ‘bo’. In addition, the figurative element serves a merely decorative purpose, and the typeface is rather fairly standard. Therefore, the very few differences in only two letters at the end of the contested sign are not sufficient to counteract the overall similarities. The identity or average degree of similarity between the goods and services (the interdependence principle mentioned above) must also be taken into account. The relevant public, even when paying an above average degree of attention, may think that the contested sign is a variation, a new line of goods and services, coming from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 679 804 for the word mark ‘FREE’. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, French trade mark registration No 3 679 804 for the word mark ‘FREE’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and Article 8(5) EUTMR.

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, 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

Marta GARCÍA COLLADO

Chantal VAN RIEL

Michal KRUK

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.