OPPOSITION No B 2 681 966

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

Shenzhen DBK Electronics Co., Ltd, 1-5/F, Block 1, Jinyuan Company Shenzhen  518129, People’s Republic of China (applicant), represented by Katarzyna Binder-Sony, First Floor 3, More London Riverside, London SE1 2RE, United Kingdom (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 966 is upheld for all the contested goods, namely:

Class 9:         Audio speakers; audio-frequency transformers; batteries; batteries and battery chargers; battery chargers; battery packs; calculators; cell phone straps; cell phones; cellular phones; computer hardware and computer peripherals; computer peripherals; digital media streaming devices; earphones; earphones and headphones; GPS navigation device; hands free kits for phones; media players; monitoring devices for monitoring battery performance characteristics; portable computers; remote control transmitter for radio-controlled devices; smartphones; portable media players; electronic monitoring devices; audio transmitters.

2.        European Union trade mark application No 14 896 492 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 896 492, namely against some of the goods in Class 9. The opposition is based on, inter alia, French trade mark registration No 4 037 814, in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, and on the earlier signs used in the course of trade for ‘FREE’ and ‘free.fr’, 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 4 037 814.

1. The goods and services

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

Class 9:         Apparatus and equipment for recording, transmission, reproduction and the process of sound, images or data; telecommunication and communication apparatus and equipment for telephony, radio, telematics; modems; computers; peripherals adapted for use with computers.

Class 38:         Telecommunication services; communications by computer terminals; communications by radio, telephone communications, cellular telephone communication; computer aided transmission of messages and images; provision (rental, loan) of telecommunication equipments and apparatus.

The contested goods are the following:

Class 9:         Audio speakers; audio-frequency transformers; batteries; batteries and battery chargers; battery chargers; battery packs; calculators; cell phone straps; cell phones; cellular phones; computer hardware and computer peripherals; computer peripherals; digital media streaming devices; earphones; earphones and headphones; GPS navigation device; hands free kits for phones; media players; monitoring devices for monitoring battery performance characteristics; portable computers; remote control transmitter for radio-controlled devices; smartphones; portable media players; electronic monitoring devices; audio transmitters.

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

Contested goods in Class 9

The contested audio speakers; audio-frequency transformers; remote control transmitter for radio-controlled devices; audio transmitters are included in the broad category of the opponent’s apparatus and equipment for recording, transmission, reproduction and the process of sound in Class 9. Therefore, they are identical. 

The contested computer peripherals (mentioned twice); computer hardware are identically contained in both lists of goods (including synonyms).

The contested cell phones; cellular phones; earphones; earphones and headphones; hands free kits for phones; smartphones; cell phone straps are included in the broad category of the opponent’s telecommunication and communication apparatus and equipment for telephony in Class 9, since the opponent’s goods, broadly speaking, also include various accessories. Therefore, they are identical.

The contested portable computers are included in the broad category of the opponent’s computers in Class 9. Therefore, they are identical.

The contested digital media streaming devices; GPS navigation device; media players; monitoring devices for monitoring battery performance characteristics; portable media players; electronic monitoring devices are included in the broad category of the opponent’s apparatus and equipment for recording, transmission, reproduction and the process of data in Class 9. Therefore, they are identical. 

When comparing the contested batteries; batteries and battery chargers; battery chargers; battery packs with the opponent’s telecommunication and communication apparatus and equipment for telephony in Class 9, these are considered similar, since it is usual for the manufacturer of such goods to also manufacture and sell, for example, battery chargers. It also has to be considered that, for example, battery chargers are not only sold together with the goods as a package, but can also be purchased independently to cover a multitude of situations (compatible or adaptable chargers for use whilst travelling, solar chargers and so forth). Thus they coincide in their origins, distribution channels and targeted consumers. Moreover, they are complementary to each other.

The contested calculators are similar to a low degree to the opponent’s computers in Class 9. These goods have the same purpose and they target the same relevant public.

2. 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 relevant goods found to be identical or similar (to various degrees) are partly directed at the public at large, for example audio speakers in Class 9, and partly at business customers with specific professional knowledge or expertise, for example electronic monitoring devices in Class 9. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and conditions of the purchased goods.

3. 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’. The contested sign is a figurative mark, composed of the elements ‘FREE’ and ‘MAN’, written in a slightly fancy bold italic white typeface, with in the middle a figurative element in the form of a curved line with a dot. These elements are placed inside of a green rectangular frame. 

The earlier mark, merely consisting of one word, has no element that could be clearly considered more distinctive or dominant (visually eye-catching). The word ‘FREE’ has no meaning in French. However, since it is a basic English word, which is also frequently used in the market (see for example the expressions ‘free lance’, ‘free shop’, ‘duty free’, ‘free ride’ or ‘free style’), it may be understood by consumers with a basic knowledge of English as meaning ‘not limited or controlled’ or as ‘at no cost, gratis’. However, even those French consumers able to understand the meaning of this English word might interpret it in different ways (as either ‘libre’ or ‘gratuit’). This ambiguity leads to the conclusion that it has no direct and unequivocal meaning in relation to the relevant goods and services and, therefore, possesses a normal degree of distinctiveness. Furthermore, the word ‘FREE’ has no meaning for at least another part of the relevant public.

The contested sign has no element that could be clearly considered more dominant (visually eye-catching) than other elements.

Regarding the contested sign, the public would split it into several elements; ‘FREE’ and ‘MAN’, since these are clearly separated by the figurative element in the form of a curved line with a dot. The first element ‘FREE’ has the same meaning as explained above in the earlier mark, and the word ‘MAN’, belonging to the basic English vocabulary, refers to ‘an adult male human being’ (see Collins English Dictionary online). Neither the word ‘MAN’, nor the figurative element in the middle has any meaning in relation to the goods and are, therefore, distinctive elements. The figurative element in the form of a frame is not such an uncommon element and more of a decorative nature. The public will not pay as much attention to this weak element, as to the other more distinctive elements of the mark, namely the verbal elements ‘FREE’, ‘MAN’ and the figurative element in between.

Visually, the signs coincide in the letters ‘F-R-E-E’, with the only difference the slightly fancy typeface in which these letters are written in the contested sign. It means that the whole earlier mark, which is distinctive, is included in the contested sign at the beginning, also being a distinctive element. However, they differ in the additional word ‘MAN’, the figurative element in the form of a curved line and a dot and a figurative element in the form of a rectangular frame in the contested sign, the latter being a weak element.

It is also important to mention that the first parts of the conflicting marks coincide, ‘FREE’, which means that the whole earlier mark is included in the contested sign at the beginning. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Regarding the figurative elements in the contested sign, the Opposition Division points out the following: when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is even more applicable in the case at hand, since one of the elements, namely the rectangular frame, also has a weak character, as pointed out above.

Regarding the slightly fancy typeface in which the verbal elements of the contested sign are written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllable /FREE/, present identically in both signs. The pronunciation differs in the sound of the word ‘MAN’; this differentiating element is placed at the end of the contested sign, where the consumer usually focuses less. The marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having a similar meaning for the French-speaking public with a basic knowledge of English, to the extent that they both include the elements ‘FREE’, the signs are conceptually similar to an average degree. The remaining part of the contested sign, namely the word ‘MAN’, refers to the concept explained above and gives it an additional meaning. For another part of the French public, as explained above, for which the words ‘FREE’ have no meaning and the word ‘MAN’ has a concept, the marks are not conceptually similar.  

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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

The contested goods have been found to be identical or similar (to various degrees) and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually and conceptually similar to an average degree, the latter for a part of the public and for another part they are not conceptually similar, and phonetically they are similar to a high degree.

In the light of the foregoing, the degree of similarity between the marks at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the identical or similar (to various degrees) goods bearing the contested sign, come from the same undertaking or from economically-linked undertakings as those bearing the earlier mark ‘FREE’.

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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

Therefore, the opposition is well-founded on the basis of the opponent’s French trade mark registration No 4 037 814. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, French trade mark registration No 4 037 814, for ‘FREE’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Vita VORONECKAITE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.