OPPOSITION No B 2 924 002

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

Social and Beyond, S.L., Avda. Josep Tarradellas 38, 6º, 1ª, 08029 Barcelona, Spain (applicant), represented by Barroso Hernández, Calvet 5, 2º, 2ª, 08021 Barcelona, Spain (professional representative).

On 25/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 924 002 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 478 505 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. The opposition is also based on a further trade mark registration in relation to which the opponent also invoked Articles 8(1)(b) and 8(5) EUTMR, as well as three earlier signs used in the course of trade, in relation to 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 134 037 814, which is not under use obligation, has the broadest protection with respect to the services on which it is based and is registered as a word mark.

a) The services

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

Class 35: Advertising; on-line advertising on a computer network; rental of advertising time on all communication and telecommunication media; dissemination of advertisements; brokerage of commercial contacts.

Class 38: Telecommunication services; telephone communications.

The contested services are the following:

Class 35: Advertising, marketing and business management, in particular consultancy relating to advertising, marketing and business management via the internet, provided via digital networks and online websites.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘in particular’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Contested goods in Class 35

The contested advertising is identically contained in the opponent’s list of services in Class 35.

The contested marketing includes, as a broader category, the opponent’s advertising in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services they are considered identical to the opponent’s services.

When comparing the contested business management, in particular consultancy relating to advertising, marketing and business management via the internet, provided via digital networks and online websites with the opponent’s advertising in Class 35, these services are similar to a low degree. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Business management services and the like are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. When comparing business management with advertising, advertising is an essential tool in business management, because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in his or her advice, because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.

For the sake of completeness, when comparing the contested services in Class 35, of which a detailed explanation has been given above, with the opponent’s services in Class 38, which consist of services allowing at least one person to communicate with another by a sensory means, these are considered dissimilar. These services have a different nature and purpose. They are not complementary neither are they in competition. These services target a different public, have different distribution channels and are normally provided by different types of undertakings.

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 services found to be identical or similar to a low degree are rather directed at business customers with specific professional knowledge or expertise in, for example, the advertising, marketing and business management fields.

The level of attention is expected to be above average for the services in Class 35, since they usually have a clear impact on a company’s commercial strategy and on its results.

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 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 words ‘i like’, written in a black bold and lowercase typeface with the dot on top of the letter ‘i’ in blue and some wifi signals on top of the second letter ‘i’. On the right side appears a blue speech bubble with inside the words ‘FREE’ and ‘WIFI’, on two horizontal lines in blue, fairly standard capital letters.

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 also 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).

Regarding the contested sign, the word ‘FREE’ has the same meaning as in the earlier mark. However, even though this word is placed independently from the word ‘WIFI’, these two words are still both situated inside of the speech bubble, are normally used together and this combination of words forms a commonly used informative and clear message that the wifi (in an establishment) can be used for free and can often be found to refer to hotspots where free wifi is offered. The wording ‘i like’ will also be understood by the French consumer, since it is formed by basic English words. The whole expression ‘i like FREE WIFI’, together with the wifi signals on top of the second letter ‘i’ and the speech bubble, which merely forms either a decorative element or it can be associated with services in the field of communication, will be perceived as referring to the fact that consumers like hotspots where free wifi is offered. The whole contested sign is distinctive, although it is formed by words and figurative elements that individually have a very limited impact due to their weaker or non-distinctive character for the relevant services in Class 35.

Furthermore, the contested sign has no element which could be considered clearly more dominant (visually eye-catching). It is considered that all the elements have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant than the others.

Visually, the signs are similar to the extent that they coincide in the element ‘FREE’ with the only difference that in the contested sign it appears in a different, albeit fairly standard, typeface and it will not lead the consumer’s attention away from the element(s) it embellishes. The whole earlier mark is included in the contested sign, but it is placed in a totally different position, being the third word. The marks differ entirely in the first words ‘i like’ and the word ‘WIFI’ of the contested sign versus the only element ‘FREE’ of the earlier mark. Furthermore, the marks also differ in the figurative elements of the wifi signals and the frame in the form of a speech bubble, elements that are not particularly distinctive on their own.

Furthermore, 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. In the present case, the fact that the first word(s) of the signs do not coincide at all is relevant for the comparison.

Finally, it is also important to mention that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive each of its individual elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The earlier mark is relatively short, being composed of four letters, whereas the contested sign is composed of four verbal elements ‘i’, ‘like’, ‘FREE’ and ‘WIFI’, with in total thirteen letters. The marks only share four letters/one word occupying entirely different positions in the marks.

Therefore, taking all the aforementioned into account, the signs are visually similar to a very low degree, also because the coincidence occurs in weak or non-distinctive elements.

Aurally, the pronunciation of the signs coincides in the sound of the word /FREE/, present identically in the signs under comparison, but being entirely placed in different positions; the first and only position in the earlier mark versus the third one in the contested sign. The pronunciation differs in the sound of the two first words /i/ and /like/ and the last word /WI-FI/ of the contested sign, which have no counterparts in the earlier mark. Furthermore, the earlier mark is pronounced in only one syllable /FREE/ versus /i/ /like/ or /li-ke/, /FREE/ and /WI-FI/, (either in five or even in six syllables), having both a different rhythm and intonation.

Therefore, taking all the aforementioned into account, the signs are aurally similar to a very low degree, also because the coincidence occurs in weak or non-distinctive 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. However, due to the fact that the word ‘FREE’ of the contested sign is commonly used in combination with the word ‘WIFI’, the word ‘FREE’ has not only a slightly different meaning as in the earlier mark, but most of all it has a much clearer meaning. Furthermore, the contested sign also contains the concepts of ‘i like’, which are not shared by the earlier mark. However, although the coinciding words ‘FREE’ will evoke a concept, as these elements are weak or non-distinctive, they will have a limited impact on the relevant public.

Therefore, taking all the aforementioned into account, the signs are conceptually similar to a very low degree, not only because the coincidence occurs in weak or non-distinctive elements, but also because the additional concepts of the contested sign give the whole sign a rather different meaning when compared to the earlier mark.

As the signs have been found similar to a very low degree in all 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.

The opponent did not explicitly claim that its earlier mark is particularly distinctive by virtue of intensive use or reputation for the services in Class 35. Consequently, the assessment of the distinctiveness for these services will rest on its distinctiveness per se. In the present case, for the above mentioned reasons, its distinctiveness must be seen as low for the services in this class, as stated above in section c) of this decision.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection for the services in Class 38. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness for the services in Class 38.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a

single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon,

EU:C:1998:442, § 28).

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 which 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).

The contested services in Class 35 have been found to be partly identical or similar to a low degree to the opponent’s services in Class 35, while they are dissimilar to the opponent’s services in Class 38, they are directed at a more specialised public and the level of attention is above average.

The earlier mark has a low degree of distinctiveness for the services in Class 35, for the reasons explained above in section d) of this decision and for which no claim of reputation or enhanced distinctiveness has been filed. The claim that the earlier mark obtained an enhanced distinctiveness for the opponent’s services in Class 38 is not relevant when assessing the opposition under Article 8(1)(b) EUTMR, as all the contested services were found to be dissimilar to the opponent’s services in Class 38. Considering all the aforementioned, as similarity of goods and services is a requirement under Article 8(1)(b) EUTMR, the opposition based on this article and based on the services of Class 38, directed against the services of Class 35, cannot be successful, since these services are dissimilar. Consequently, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use or reputation for the services in Class 38, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use or reputation in this part of the decision, but it will be examined below under the ground of Article 8(5) EUTMR.

For the sake of clarity, the Opposition Division points out that when comparing the contested services in Class 35 with the opponent’s services in Class 38, for which an enhanced distinctiveness has been assumed, these were found dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The marks have been found visually, phonetically and conceptually similar to a very low degree. Although the signs coincide in one word/concept, comparing the marks in overall terms, the Opposition Division finds that there are sufficient differences in the additional words and figurative elements, even though these, on an individual basis, are also weak or non-distinctive, to outweigh the few similarities between the signs, since also these weaker or non-distinctive elements will help the relevant public to distinguish between the marks.

The Opposition Division is of the opinion that, notwithstanding a certain, albeit very low, similarity between the signs, this will not cause consumers to confuse them. Even considering the identity and low similarity of the contested services in Class 35 with the opponent’s services (Class 35), there will be no likelihood of confusion in respect of such services. This is also the case, because the earlier mark merely consists of one word versus a much more complex mark, consisting of several verbal, figurative and colorful elements, some of them placed inside of a speech bubble. Also conceptually, the contested sign, because of the additional words and devices, would be perceived as having some additional meanings that are not shared by the earlier mark alone and the French public would perfectly understand all the additional meanings and see that these are not shared by the earlier mark. Moreover, it is also important to indicate that the level of attention of the public is above average and that the public is a more professional one that is less vulnerable to confusion. Last, but not least, the earlier mark has a lower degree of distinctiveness for the services in Class 35.

Considering all the above and even taking into account that some of the services are identical or similar to a low degree, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

 French trade mark registration No 997 85 839 for the figurative mark for advertising in Class 35 and telecommunications in Class 38.

Since this mark is even less similar than the one that has been compared and covers a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services. Neither is it necessary to examine the proof of use for this earlier mark, as it would not change the outcome.

As the opposition has to be rejected as far as it is based on Article 8(1)(b) EUTMR, the Opposition Division will now examine the opposition on the ground of Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claims reputation in France in relation to, inter alia, earlier French trade mark registration No 134 037 814 for the word mark ‘FREE’ for services in Class 38 (as above mentioned).

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.

a) Reputation of the earlier trade mark

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

Class 38: Telecommunication services; telephone communications.

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 16/03/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in France prior to that date.

The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation.

The opponent submitted on 12/12/2017, inter alia, the following evidence to support this claim of reputation:

 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 for all the services of the earlier mark, namely telecommunication services; telephone communications in Class 38.

For the sake of completeness, the contested services are:

Class 35: Advertising, marketing and business management, in particular consultancy relating to advertising, marketing and business management via the internet, provided via digital networks and online websites.

b) The signs

The signs have already been compared above under the ground of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The marks are visually, phonetically and conceptually similar to a very low degree.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed for telecommunication services; telephone communications in Class 38 and the signs are visually, aurally and conceptually similar to a very 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 by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 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 reputation in France in relation to the following services:

Class 38: Telecommunication services; telephone communications.

The opposition is directed against the following services:

Class 35: Advertising, marketing and business management, in particular consultancy relating to advertising, marketing and business management via the internet, provided via digital networks and online websites.

The Court established in the judgment of 12/03/2009, C-320/07 P, ‘NASDAQ/NASDAQ’, § 43, that the types of injury referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, it establishes a link between them, although it does not confuse them. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. According to § 45 of the same judgment, the existence of the link must be subject to an overall assessment taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue, the nature of the goods or services for which the marks at issue are registered, the relevant section of the public, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character.

The Opposition Division is of the opinion that the coincidences between the elements ‘FREE’ and ‘i like FREE WIFI’ (FIGURATIVE)‘ are too vague and that there are important differences between the opponent’s mark and the contested sign, explained above under the section of likelihood of confusion, c) The Signs, and e) Global Assessment, that make it unlikely that the opponent’s mark would come to consumers’ minds when they see the contested sign on the contested services in Class 35, thus making the services labelled with the contested sign more attractive to consumers. When the marks are placed side by side, the initial reaction is to wonder where any similarity is supposed to reside, such are the contrasts between the marks.

Furthermore, it is important to mention that the inherent distinctiveness of the earlier mark is low and that the public pays a higher degree of attention and is a more professional one and this public will even better be able to not establish any link between the marks. In addition, the terms ‘FREE WIFI’ in the contested sign will be seen in this combination as a descriptive, non-distinctive or weak expression commonly used to say that gratis wifi is offered at hotspots. The relevant public will not see it as a very distinctive element and will only grasp it with the informative, descriptive meaning; the word ‘FREE’ will thus not be perceived as an indicator of origin of the contested sign and, therefore, it will not be linked to the earlier mark. For all the above mentioned reasons, it is highly improbable that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR. It is very unlikely that, when purchasing the services under the contested sign, it would remind the consumer of the earlier mark, reputed for the services mentioned in more detail before.

Reputation is a requirement for succeeding in an opposition based on Article 8(5) EUTMR, but it is not enough on its own. Even the most famous of brands must submit to the additional requirement that the marks in question be sufficiently similar that consumers are likely to make a connection between the younger mark and the older, reputed mark. Owing to the significant differences between the marks on the visual and aural levels, but also conceptually, the Opposition Division is not persuaded that consumers will make the necessary connection in this case.

Therefore, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as far as based also on this ground.

The opponent has also claimed reputation for the remaining earlier trade mark, which has already been mentioned above under the ground of Article 8(1)(b) EUTMR, which is even more dissimilar to the one which has been compared and has a narrower scope of protection and, therefore, the outcome cannot be different as in the present case.

The opponent, in its observations, also refers to several previous decisions of the Office to support its arguments. However, it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The opponent refers to previous decisions of the Office to support its arguments of likelihood of confusion or the risk of injury, namely versus (R 2606/2014-4); ‘FREE’ versus and versus ‘WI-FREE NH’ (R2607/2014-4).

The previous cases referred to by the opponent are not that relevant to the present proceedings for the following reasons: The word ‘FREE’ in , and ‘WI-FREE NH’ is clearly perceivable, only preceded by the letters ‘Wi’ and the marks are less complex than the contested sign in the present case. Furthermore, as pointed out in the relevant decisions, the word ‘WI-FREE’ as such does not exist, while in the present case the words ‘FREE WIFI’ are commonly used, have a clear concept and are weak or non-distinctive elements. For all the aforementioned reasons, the Opposition Divisions finds that the decisions are not comparable with the case at hand.

As the opposition has to be rejected as far as it is based on Articles 8(1)(b) and 8(5) EUTMR, the Opposition Division will now examine the opposition on the ground of Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE (ARTICLE 8(4) EUTMR)

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The grounds of refusal of Article 8(4) EUTMR are, therefore, subject to the following requirements:

 The earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 Pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark.

 The conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) CTMR cannot succeed.

The opponent claimed Article 8(4) EUTMR in respect of the following earlier signs used in the course of trade:

- French trade name ‘FREE’ used for any provision of services in communication field, in telecommunications, notably such as operator in fixed and mobile telecommunications, and as access provider for networks like internet and hosting provider of contents attainable through an electronic means of communications; Any activity related to the study, the conception, the financing, the realisation, the exploitation and the maintenance of communication, telecommunication and videocommunication networks; The establishing, the programming, the broadcasting, the marketing and the developing of service offers of audiovisual communication of any kind, notably of any TV channel or of any combination of TV channels or any audiovisual content whatever the means of broadcasting is, transmitted by digital or analogical mode.

- French company name ‘FREE’ used for any provision of a service in communication field, in telecommunications, notably such as operator in fixed and mobile telecommunications, and as access provider for networks like internet and hosting provider of contents attainable through an electronic means of communication; Any activity related to the study, the conception, the financing, the realisation, the exploitation and the maintenance of communication, telecommunication and videocommunication networks. The establishing, the programming, the broadcasting, the marketing and the developing of service offers of audiovisual communication of any kind, notably of any TV channel or of any combination of TV channels or any audiovisual content whatever the means of broadcasting is, transmitted by digital or analogical mode.

- French domain name ‘free.fr’ used for any provision of services in communication field, in telecommunications, notably such as operator in fixed and mobile telecommunications, and as access provider for networks like internet and hosting provider of contents attainable through an electronic means of communications; Any activity related to the study, the conception, the financing, the realisation, the exploitation and the maintenance of communication, telecommunication and videocommunication networks; The establishing, the programming, the broadcasting, the marketing and the developing of service offers of audiovisual communication of any kind, notably of any TV channel or of any combination of TV channels or any audiovisual content whatever the means of broadcasting is, transmitted by digital or analogical mode.

a) The right under national law

Trade names are the names used by enterprises to identify the enterprise as such.

A corporate name or company name is the official designation of an undertaking, in most cases registered in the relevant national commercial register.

According to the information provided by the opponent, a domain name is defined by French case-law as ‘a unique business identifier on the internet’.

In the present case, according to Article L-711-4(c) of the French IP code, rights in a trade name (‘non commercial’), company name or domain name are acquired from its first use in trade and provided that the sign is known throughout the French national territory. As for the scope of protection, the owner of the trade name may prohibit the use of a subsequent trade mark where there is a risk of confusion in the mind of the public.

As is clear from the wording of the relevant legal texts governing the signs, one of the requirements for granting protection against subsequent rights is the risk/likelihood of confusion in the mind of the public. Consequently, trade names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity of the signs, identity or similarity of the goods or services, and the presence of likelihood of confusion. In these cases, the criteria developed by the courts and by the Office for applying Article 8(1) EUTMR may easily be applied to Article 8(4) EUTMR.

In the present case, the opponent’s trade name, company name and domain name, ‘FREE’ and ‘free.fr’, used in the course of trade, are similar to a very low degree to the earlier French trade mark, which has been examined under Article 8(1)(b) EUTMR and discussed in that part, and under Article 8(5) EUTMR. The signs have already been assessed under Article 8(1)(b) EUTMR, with the only difference that one of the earlier signs also contains the ending ‘.fr’, which is not shared by the contested sign.

When comparing the mark ‘FREE’ (word mark) with the contested sign ‘i like FREE WIFI’ (FIGURATIVE), it was concluded that the marks have been considered to be sufficiently different not to make a link under Article 8(5) EUTMR and not to produce any likelihood of confusion under Article 8(1)(b) EUTMR. All this has been fully explained in the course of the present proceedings in the sections above on Articles 8(5) and 8(1)(b) EUTMR, and it has also been stated that the relevant section of the public is unlikely to establish a link or to find any likelihood of confusion between the trade marks in dispute, due to their overall visual, aural and conceptual differences. Therefore, the marks in conflict are deemed to be sufficiently different overall. For the sake of completeness, it has also to be pointed out that when comparing the contested services in Class 35 with the services for which the earlier signs are reputed (Class 38), these are considered dissimilar.

As seen above, the above mentioned earlier signs used in the course of trade are protected in France against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity of the signs, identity or similarity of the goods or services, and the presence of likelihood of confusion.

In the present case, there can be no risk of confusion between the earlier signs and the contested mark, as explained in much detail above under the section of likelihood of confusion. As a consequence, one of the criteria of French national law is not fulfilled (namely, there is no risk of confusion in the mind of the public).

Since one of the cumulative conditions set out above, namely ‘the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of

the contested trade mark’, is not satisfied, the opposition is not well founded under Article 8(4) 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Victoria DAFAUCE MENENDEZ

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.