CANCELLATION No 27 122 C (INVALIDITY)

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

a g a i n s t

SwitchEasy Limited, Rm. 314, Sing Win Factory Bldg. No. 15-17 Shing Yip Street Kwun Tong Kowloon, Hong Kong Special Administrative Region of the People's Republic of China (EUTM proprietor).

On 09/07/2019, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 11 781 101 is declared invalid for all the contested goods, namely:

Class 9: Electronic and non-electronic user interface and interactive devices, namely, user input and output devices, protective cases, carrying cases, data cables, electrical and non-electrical couplings, electrical and non-electrical adaptors, converters, stands and docking stations; all being accessories for use with particular personal electronic devices, namely, with portable computing devices, portable digital data storage media and devices, handheld personal electronic devices, namely, digital media player devices, audio and video players, personal digital assistant, handheld wireless devices, cellular handsets, and handheld digital audio and/or video capture devices; computer user interface accessories, namely, keyboards, display monitors, cursor pointing devices, namely, mice.

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

Class 17: Rubber insulating sleeves and/or sheaths for protecting parts of machines; waterproof packings for protecting electronic devices from damage; stuffing composed of rubber or plastic for merchandise packagings; cushioning of rubber or plastic in the nature of stuffing; rubber bags, envelopes, and/or pouches for merchandise packagings.

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

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods of European Union trade mark No 11 781 101 for the word mark ‘FreeRunner’, namely against all the goods in Class 9. The application is based on, inter alia, French trade mark registration No 4 037 814 for the word mark ‘FREE’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the earlier trade mark ‘FREE’ is widely reputed in France for telecommunication goods and services, including internet services (since 1999), television and landline phone services (since 2003) and mobile phone services (since 2012). To support its statements, it submitted a number of documents (as listed and assessed below). It further argues that there is a likelihood of confusion since the contested sign ‘FreeRunner’ is similar to the earlier marks ‘FREE’ and covers identical or similar goods. The applicant refers to previous decisions regarding the element ‘FREE’ and also to decisions where the contested signs contain the element ‘RUNNER’. Regarding Article 8(5) EUTMR, the applicant argues that given the similarity between the signs, the extensive reputation of the earlier trade marks in France for IT and telecommunication goods and services and the link between the signs, use of the contested sign would take unfair advantage of the repute and the distinctive character of the earlier mark or would be detrimental to the distinctive character of the earlier marks. These arguments will be further considered below.

The EUTM proprietor did not submit any observations in reply.

REPUTATION — ARTICLE 60(1)(a) IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Cancellation Division will first examine the application for invalidity in relation to French trade mark registration No 4 037 814 for the word mark ‘FREE’.

According to Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, a European Union trade mark must be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where there is an earlier mark as referred to in Article 8(2) EUTMR and the conditions set out in paragraph 5 of that Article are fulfilled (that is, where the contested trade mark is identical with, or similar to, the earlier trade mark and it is registered for goods or services that 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 European 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 applicant’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark and still exist at the time of the application for invalidity; it must exist in the territory concerned and for the goods and/or services on which the application 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 application 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 application may still fail if the EUTM proprietor establishes due cause for the use of the contested trade mark.

In the present case, the EUTM proprietor has not claimed explicitly 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.

a) Reputation of the earlier trade mark

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

Class 9: Telecommunication and communication apparatus and equipment for telephony, radio, telematics.

Class 38: Telecommunication services; communications by computer terminals; telephone communications; cellular telephone communication; provision (rental, loan) of telecommunication equipment and apparatus; television broadcasting on all communication media.

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

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 30/04/2013. However, the contested trade mark has a priority date of 02/11/2012. Therefore, the applicant was required to prove that the trade mark on which the application is based had acquired a reputation in France prior to that date. In addition, the reputation must subsist until the decision on the application for invalidity is taken.

On 03/09/2018 the applicant submitted, inter alia, the following evidence:

1) Excerpt from the Registry of Commerce and Companies for FREE SAS.

2) Excerpt from the Registry of Commerce and Companies for ILIAD.

3) Excerpt from the Registry of Commerce and Companies for FREE SA.

4) Excerpt from the merger agreement between FREE and FREE TELECOM dated 23/09/2002, as filed before the Commercial Court of Paris.

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

6) Extract from Wikipedia, dated 22/09/2016, 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 ‘xDSL’ or ‘FTTH’ modem, but is defined by the company ‘FREE’ as an electronic device serving as an interface between the computer and/or audiovisual equipment of the internet user and the ‘FREE 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 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, for example version 1 on 18/09/2002 and version 6 on 14/12/2010.

7) Excerpt from free.fr, dated 20/05/2010, 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.

8) Affidavit about 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’ subscribers get access to all the television services through the TV decoder box that 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.

9) Excerpts from free.fr dated 15/05/2013.

10) Extract from www.universfreebox.com, dated 27/03/2013, on the assessment of the TV offers of the internet service provider. It concludes that ‘FREE’ offers the wider selection of TV channels and replay. Reference is made to the 11th edition of the 2013 digital channel guide, published by ‘CSA’, which compares the different TV offerings 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.

11,12) Excerpt from digital channel guides of March 2013 and February 2011.

13) 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’.

14) 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 fourth mobile phone operator in France.

15) 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.

16) Press release from Iliad, dated 15/05/2018, indicating an increase of more than 7% in mobile services revenues with 130.000 new subscribers during the quarter and nearly 250.000 more subscribers on the Free Mobile Unlimited.

17) Press release dated 10/03/2015 in relation to the Free Mobile Plan.

18) Press release from Iliad, dated 18/05/2012, indicating that the consolidated revenues of the first-quarter of 2012 went up by 29% to EUR 656 million.

19) 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’.

20) Press release from Iliad dated 28/02/2013 about 2012 revenues (group revenues of EUR 3.153 million, an increase of almost 50%, 5,2 million mobile subscribers, almost 8% of the French mobile market).

21) Press release from Iliad dated 10/03/2014 about 2013 annual results (13,7 million subscribers).

22) Press release from Iliad dated 12/03/2015 about 2014 results (16 million subscribers, mobile business: 15% market share just three years after launch).

23) Press release from Iliad dated 10/03/2016 about 2015 results (nearly 2 million new subscribers in 2015, mobile business: 17 % market share).

24) Press release from Iliad dated 07/03/2017, about 2016 results, mentioning ‘Free becomes the leading alternative Broadband and Ultra-Fast Broadband operator ahead of SFR and remains the leading recruiter of mobile subscribers for the 20^th quarter in a row’.

25) Press release from Iliad dated 13/03/2018, about 2017 results, mentioning ‘Free Mobile is France’s leading recruiter of mobile subscribers for the sixth year in a row, with nearly one million net adds in 2017’.

26) Article from www.freenews.fr, dated 08/08/2011, stating that there are more than 15 million email boxes ‘Free.fr’.

27) Excerpt from the website Médiamétrie.fr mentioning that Médiamétrie was created in 1985 for internet audience rating in France and that its independence is guaranteed.

28) Press release, dated 31/10/2000, from Agence France Presse Mondiales, 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 once during the given period.

29, 30) Excerpt from www.journaldunet.com relative to Nielsen/Net Ratings, July 2001 and October 2002 internet audience ratings of the website ‘free.fr’.

31-34) Excerpts from www.01net.com dated 2003-2006, for example an excerpt dated 21/04/2006, relating to ‘Médiamétrie/Net internet audience ratings’, shows ‘FREE’ in the third position.

35) Press release dated 14/05/2007 showing the most visited websites in France in March 2007, with ‘FREE’ in fourth position having 14.097.000 unique visitors per month.

36) Excerpt from www.generation-nt.com dated 15/08/2008 relative to Médiamétrie/Net Ratings June 2008 internet audience ratings, with ‘FREE’ in fourth position having 14.59 million French internet users.

37-46) Ten press releases relating to ‘Médiamétrie/Net Ratings’ (internet audience ratings), dated 2009-2018, for example an excerpt of 25/05/2012 shows the most visited websites in France in April 2012, with ‘FREE’ in eighth position having 17.921.000 unique visitors per month; an excerpt of 23/03/2017 shows the most visited websites in February 2017, with ‘FREE’ in tenth position having 12.733.000 unique visitors per month.

47) Figures for advertising campaigns recorded by SECODIP-TAYLOR NELSON SOFRES MEDIA INTELLIGENCE - KANTAR MEDIA from 1999 to 2017, indicating for example, EUR 5.501.624 for 1999, EUR 78.141.000 for 2012 and EUR 113.014.000 for 2017. There are also pictures of ‘FREE’ advertisement campaigns including the box.

48) Pictures of FREE’s advertisement campaigns including the box.

49) Survey from Que Choisir, dated March 2018, conducted in December 2017 among 19,536 people. It mentions ‘with 9 out of 10 satisfied customers, FREE comes first, in particular thanks to its quality of service and efficiency of its customer service.’

50) Comparative study from Capital, dated November 2017.

51) Comparative study from 60 Millions de consommateurs, dated November 2016, mentioning ‘FREE is unquestionably the consumer’s favourite operator’ with 95% satisfied subscribers.

52) IFOP-Terre de Sienne Ranking dated September 2016 relating to the top 20 companies that are most useful. ‘FREE’ is considered useful by 77% and has a good image for 70%.

53) Forbes ranking of the world’s top 100 most innovative companies, dated September 2015. Iliad (‘FREE’) is in the 49^th position.

54) Challenges survey, dated January 2015. In the telecommunication field, the trade mark ‘FREE’ is in the first position.

55) 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 if only by name, and that ‘FREE’ is even more well known by people under 50, working and with children.

56) Comparative study by the consumer association UFC Que choisir of 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), on the quality and on the network extent, on 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.

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

58) 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 satisfies the highest percentage of its subscribers. Furthermore, only 11.5% of its clients admit to having had a problem with their internet access and it has reached the highest satisfaction level on record, satisfying 85% of its subscribers, ahead of ‘Numericable’ and ‘Orange’.

59) Survey from 01NET, dated 10/06/2013, indicating that the mark ‘FREE’ is among the trade marks that symbolise the internet the most. It is mentioned that ‘FREE’ revolutionised the sector in 2002 by launching the first box that enabled access to triple-play services.

60) 60 Millions de consommateurs survey, dated October 2012, indicating 95% consumer satisfaction with ‘FREE’ services (the highest percentage in the survey). It mentions that ‘FREE’ has the image of a precursor, innovator and price-cutter.

61) 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’.

62) 60 Millions de consommateurs survey, dated August 2012.

63) 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, only 13.8% of FREE clients in 2012 admit to having had a problem with their internet access and 77.3% in 2012 would recommend this internet service provider to their relatives.

64) Press article from Capital, dated 01/07/2011, entitled ‘Les marques préférées des français …, 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 sixth position, just behind some very famous international trade marks.

65) 60 Millions de consommateurs survey, dated October 2007. FREE obtained the best rating, with 93% of satisfaction.

66) 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’ to be the new provider.

67) 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 88% among internet users.

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

69) Report, dated 07/04/2006, of the Organisation 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 applicant was the first company in France to introduce multiple-play services, particularly video, voice and data over ADSL.

70-85) Numerous press excerpts dated from 2000-2018 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.

86) Excerpt from the website ciscoliveawards.com regarding the 2005 ‘CISCO innovation awards’. In 2005, ‘FREE’ won a ‘CISCO innovation award’ in the category ‘Best Service Provider IP Infrastructure’.

87-89) EUIPO decisions recognizing the extensive reputation of ‘FREE’.

90-103) Numerous French judgments confirming the reputation of ‘FREE’ in France.

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 marketing expenditure and market share given in 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.

In particular, the excerpts relating to internet audience ratings (Médiamétrie/NetRatings, Nielsen/Net Ratings) show that the website free.fr was among the most visited sites in France throughout the whole period from 2000 to 2018. For instance, an excerpt dated 25/05/2012 shows that the website free.fr is in eighth position with 17.921.000 unique visitors per month.

‘FREE’ was, in March 2013, the number two French operator in electronic communications (document No 19). From the press releases and surveys, it can be established that a large number of customers subscribed to the internet, landline and mobile services provided under the mark ‘FREE’. On 28/02/2013, FREE counted around 5,2 million mobile subscribers (document No 20) and in August 2011, there were around 15 million free.fr email boxes (document No 26). The numerous press articles show not only the reputation of ‘FREE’ but also the high level of consumer’ satisfaction and the positive images of efficiency, quality, innovation and price-cutting associated with the trade mark ‘FREE’.

A Survey from GFK, published on 16/01/2012 (document No 15), indicates that 97% of the interviewed persons have heard of the ‘FREE’ mobile phone offer and more than a half (56%) know it in detail. The Press article from Capital, dated 01/07/2011, entitled ‘Les marques préférées des français …’ (document No 64), contains a survey showing that, in the fields of telecommunications and high technology, ‘FREE’ was the French people’s favourite French trade mark, in sixth position, just behind some very famous international trade marks such as MICROSOFT, APPLE, SAMSUNG.

Finally, the annual amounts spent on advertising featuring the ‘FREE’ mark from 1999 to 2017 are substantial, ranging from EUR 5.501.624 in 1999 to EUR 113.014.000 in 2017, as recorded by ‘Secodip-Taylor Nelson Sofres Media Intelligence, Kantar Media’ (document No 47).

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, before the priority date of the contested trade mark and that this reputation persisted after that date and existed at the time of this decision.

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

2. The signs

FREE	FreeRunner
Earlier trade mark	Contested trade mark

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, bearing in mind 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 also a word mark consisting of the word ‘FreeRunner’, written in a standard typeface in lower-case letters except for the letters ‘F’ and ‘R’ that are in upper case.

Since both signs are word marks, it is irrelevant whether they are written in upper-, lower-case letters or in a combination thereof.

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 a basic English word that is widely used (and used in French also in expressions such as ‘free-lance’, ‘free style’ and ‘duty free’).

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 ‘not limited or controlled’, ‘unlimited access to services relating to the Internet’ (not necessarily free of charge) (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] (04/02/2014, T-127/12, Freevolution, EU:T:2014:51, § 41). However, the earlier mark 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.

Regarding the contested sign, 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 Cancellation Division considers that the entire public will dissect the contested sign into the elements ‘Free’ and ‘Runner’ because of the meaning of these elements. The latter element is a word commonly used in France, by at least a significant part of the public. The use of upper- and lower-case letters also contributes to visually separating the elements ‘Free’ and ‘Runner’.

In the contested sign, the element ‘FREE’ has the same meaning, as explained above, as in the earlier mark (referring to freedom or free of charge) and has a weak distinctive character for the relevant goods in Class 9. Due to the common use in France of the word ‘running’ to designate the activity of moving fast on foot, especially as a sport (the English word ‘running’ being widely used as a synonym to the French word ‘course à pied’), the word ‘Runner’ will be understood by at least a significant part of the public, as referring to the person who runs, especially for sport or pleasure. Whether or not this word is understood, since it has no particular relationship as regards the goods at stake, it is normally distinctive.

Visually and aurally, the signs are similar to the extent that they coincide in the letters ‘F-R-E-E’ and the sounds of these letters. The whole earlier mark is included at the beginning of the contested sign where it plays an independent role. 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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. The fact that the signs coincide in the first part of the contested sign is relevant for the comparison. The marks differ in the element ‘Runner’, pronounced /ru-ner/, which falls at the end of the contested sign, where the consumer focuses less of their attention, and which is not shared by the earlier mark. Therefore, taking all the aforementioned into account, the signs are visually and 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 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 ‘Runner’ is also perceived as having a concept for at least a significant part of the public, and will add a further meaning to the contested sign. Therefore, the signs are conceptually similar to, at least, a low degree.

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.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are visually, aurally and conceptually similar to, at least, 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 a low degree of inherent 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 application is directed against the following goods:

Class 9: Electronic and non-electronic user interface and interactive devices, namely, user input and output devices, protective cases, carrying cases, data cables, electrical and non-electrical couplings, electrical and non-electrical adaptors, converters, stands and docking stations; all being accessories for use with particular personal electronic devices, namely, with portable computing devices, portable digital data storage media and devices, handheld personal electronic devices, namely, digital media player devices, audio and video players, personal digital assistant, handheld wireless devices, cellular handsets, and handheld digital audio and/or video capture devices; computer user interface accessories, namely, keyboards, display monitors, cursor pointing devices, namely, mice.

The term ‘namely’, used in the list of the EUTM proprietor’s goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The contested goods encompass accessories for use with particular personal electronic devices and computer user interface accessories. There is a clear link between the reputed telecommunication services in Class 38 and all these contested goods in Class 9 which are accessories of IT and electronic devices. It is not unusual for the provider of the applicant’s services, to also manufacture and sell, for example all kinds of cables, converters, electrical and non-electrical couplings and adaptors, stands and docking stations, protective cases for, inter alia, telecommunication equipment and these will be offered through the same distribution channels to the same consumers. All this kind of equipment belongs to neighbouring market sectors and they target the same public.

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 relationship between the conflicting goods and services, the Cancellation Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier mark, 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).

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.

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

The applicant 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 marks.

Unfair advantage (free-riding)

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

The applicant bases its claim, inter alia, on the following:

 The earlier mark ‘FREE’ possesses a particular reputation in France for IT and telecommunication goods and services.

 All conflicting goods and services are identical or at least similar and it is natural that companies extend their brands to cover identical or at least neighbouring markets. In view of its special attractiveness, the earlier mark may be exploited even outside its natural market sector.

• Previous decisions have recognised a link between the signs in relation to the contested goods in Class 9.

• The similarity between the signs is such that there is a likelihood of confusion including a likelihood of association.

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

 In such a situation, the EUTM proprietor would take unfair advantage of the reputation of the earlier mark ‘FREE’.

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, 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

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

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

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 neighbouring markets, it is concluded that the relevant public will make a connection between the marks, an association that will produce a commercial benefit for the EUTM proprietor. There is a high probability that the use of the contested mark 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 applicant to achieve that reputation. The contested sign could take unfair advantage of the image of the earlier trade mark and the message conveyed by it, that is, that its goods have identical characteristics to the services of the applicant, namely that they are innovative, efficient, reliable, and of high quality with affordable prices. The use of the contested trade mark could also lead to the perception that the EUTM proprietor is associated with or belongs to the applicant and, therefore, could facilitate the marketing of the contested goods.

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

Other types of injury

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

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 application for invalidity 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 Cancellation Division has already concluded that the contested trade mark would take unfair advantage of the 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 application for invalidity is well founded under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the application for invalidity is entirely successful under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the application for invalidity was based.

COSTS

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

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

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

The Cancellation Division

Jessica LEWIS

Frédérique SULPICE

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