OPPOSITION No B 2 542 804

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

Erwin Hymer Group AG & Co. KG, Holzstraße 19, 88339 Bad Waldsee, Germany (applicant), represented by Müller Schupfner & Partner Patent- und Rechtsanwaltspartnerschaft MBB, Bavariaring 11, 80336 München, Germany (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 542 804 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 572 251, namely against all the goods and services in Classes 9, 16 and 38 and against part of the services in Classes 35 and 41. 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, telematic; modems; computers; peripherals adapted for use with computers; software; computer programs; video films; electronic publications.

Class 35:                Advertising; online advertising on a computer network; rental of advertising time on all communication and telecommunication media; dissemination of advertisements; presentation of goods on all communication media for retail purposes; brokerage of commercial contacts; management of computer files; news clipping services.

Class 38:                Telecommunication services; rental of access time to global computer networks; communications by fibre optic network; communication by computer terminals; communications by radio; telephone communications; providing access to electronic communication networks; paging services (radio, telephone or other means of electronic communication); transmission of messages; computer aided transmission of messages and images; voice mail services; electronic mail; provision (rental, loan) of telecommunication equipments and apparatus; telecommunication information; providing access to forum (chat room) on communication network; news agency; transmission of despatches; providing access to databases, information and communication technology for data hosting services; television broadcasting on all communication media; radio broadcasting.

Class 41:                Digital imaging services; television services (channels, programs editing and distribution).

Class 42:                Design of software; website hosting by electronic communication and telecommunication networks; transmission of news; provision of search engines for electronic communication networks; electronic data storage services.

The contested goods and services are the following:

Class 9:         Software (apps); electronic publications, downloadable; recorded and unrecorded data carriers, parts thereof included in Class 9; magnetic cards, smart cards, in particular bonus cards and debit cards.

Class 16:         Printed matter; books, magazines, periodicals.

Class 35:         Advertising; merchandising (sales promotion); issuing of data carriers, in particular credit cards and cheque cards, for entering bonus and reward transactions.

Class 38: Telecommunication services, in particular internet-based telecommunications; providing access to information on the internet; providing of internet chat rooms and online forums, providing of access to route planning tools (software) via the internet.

Class 41:         Entertainment; recreation information.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 goods and services assumed to be identical are directed at the public at large, for example books in Class 16, and some are specialised goods and services directed at business customers with specific professional knowledge or expertise, for example advertising in Class 35. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and conditions of the purchased or contracted goods and services.

3. The signs

FREE	FREEONTOUR
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 word mark consisting of the word ‘FREEONTOUR’. 

The earlier mark and the contested sign have no element which could be considered clearly more dominant (visually eye-catching).

The earlier mark, merely consisting of one word, has no element that could be clearly considered more distinctive. 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 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 word ‘FREEONTOUR’ of the contested sign, does not belong to the category of words that a significant part of the relevant public would be familiar with, nor will the public dissect the sign. It is unlikely that the element ‘FREE’ would be isolated from the remaining part ‘-ONTOUR’, as it would be artificial to split marks and the contested sign is, therefore, meaningless. Consequently, the contested sign has no element which is clearly more distinctive.

Visually, the marks coincide in the letters ‘F-R-E-E’. However, the earlier mark is a word mark consisting of four letters, while the contested sign is composed of ten letters. The marks differ in the letters ‘-O-N-T-O-U-R’, after the letters ‘F-R-E-E’; this element is not present in the earlier mark.

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 all of its single 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 consists only of four letters and is, therefore, a short mark versus ten letters in the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the syllable /FREE/, present identically in both signs. It is, however, in the earlier mark pronounced as the only syllable in contrast to the contested sign in which the element /FREE-/ is followed by two syllables /-ON-TOUR/, being also different to the earlier mark. The marks also have a different intonation and rhythm. Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The meaning of the word ‘FREE’ in the earlier mark has been explained above. The word ‘FREEONTOUR’, as a whole, as the latter will not be split in parts, does not have any meaning in French, as also mentioned above. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for a part of the public. For another part of the French public, that has no knowledge of the English language, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for the remaining part of the relevant public.

As the signs have been found similar to a low degree 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’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The contested goods and services are assumed to be identical and the attention of the public varies from average to above average.

The signs have been found to be visually and aurally similar to a low degree; conceptually, the marks are not similar or the conceptual aspect does not influence the assessment of the similarity of the signs.

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). However, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use/reputation, the Opposition Division is of the opinion that there is no likelihood of confusion for the reasons explained below.

In the present case, the Opposition Division is of the opinion that, due to the low visual and phonetic similarity, it is not enough to lead, in any case, to a likelihood of confusion. This is because the visual and aural coincidences are not strong enough. Although both signs coincide in the sequence of letters ‘F-R-E-E’, the marks contain significant visual and aural differences. The earlier mark is a short word of four letters and the contested sign contains ten. Also is the earlier mark pronounced in one syllable, while the contested sign has three in French. In addition, the contested sign ‘FREEONTOUR’ will not be dissected and as a whole it has no meaning, whereas, the earlier mark is perceived by the public as having a meaning or it is meaningless for the French consumer that has no knowledge of English.

The marks, taken as a whole, show overall more differences than similarities and the minor visual and phonetic similarities are not strong enough to induce the public to believe that the goods and services that are sold or offered under the signs come from the same or from economically-linked companies, even taking into account an average level of attention of the relevant public, as this public is more vulnerable for confusion.

In the present case, the outcome is no likelihood of confusion, even assuming that the goods and services are identical.

Considering all of the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public, including a likelihood of association. Therefore, the opposition must be rejected as far as based on Article 8(1)(b) EUTMR.

The opponent has also based its opposition on some other earlier marks, namely:

• French trade mark registration No 1 734 391 for the word mark ‘FREE’ for services in Class 38.

• French trade mark registration No 99 785 839 for the figurative mark  for goods and services in Classes 9 and 38.

However, since Article 8(1)(b) EUTMR fails for earlier French trade mark registration No 4 037 814 for the word mark ‘FREE’, it cannot apply to the other earlier trade marks of the opponent, as it is either identical to the one which has been examined (No 1 734 391), and regarding the figurative mark (No 99 785 839) even more different to the contested sign than the one which has been examined, since the latter also contains further figurative elements in the form of the fancy typeface, the colours blue and red and the device of a human being, which have no counterparts in the contested sign.

The opponent also refers to several decisions, including the letters ‘FREE’. However, for example in case B 1 829 426 ‘FreeView’ (figurative); B 2 2097 049, R116/2014-2 ‘FreeDesign’ (figurative), B 1 706 319 ‘FreeCook’ (figurative), B 2 162 413 ‘FREEPOWER’ (figurative) and B 2 385 790 ‘Free Ink Shop’, the letters ‘FREE’ are clearly separated from the following part(s), due to a capital letter, a partially different colour or a space between the words, while in the case at hand, the element ‘FREE’ is not separated, as it is written all together as one word. As regards, for example, ‘FREEZONE’, ‘FREENOM’, ‘FREELOUNGE’, ‘FreeDesign’ (FIGURATIVE), it could be that the French consumer would dissect the marks into two elements as both have a clear meaning for the French consumer, namely ‘FREE’ and ‘ZONE’, ‘FREE’ and ‘NOM’, ‘FREE’ and ‘LOUNGE’ or ‘FREE’ and ‘DESIGN’, which is not applicable in the case at hand. In addition, these elements could also be perceived as elements that have a lower degree of distinctiveness for the relevant goods and services, as they refer, for example, to a zone or design.

Regarding the remaining cases that are mentioned by the opponent, the Opposition Division points out the following: While it is true that the Office has a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect for legality. It must also be emphasised that examination must be undertaken in each individual case. The outcome of a particular case depends on specific particular criteria, which are applicable in the factual circumstances of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, it must be pointed out that a party before the Office cannot rely, to its advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. It follows that even if it is acknowledged that the previous decisions submitted before the Opposition Division present some factual similarities to the case dealt with in the present proceedings, they cannot secure, considering the above mentioned principles, the same outcome.

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

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to French trade mark registration No 4 037 814 for which the opponent claimed reputation in France for goods and services in Classes 9, 38, 41 and 42.

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 shall 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 of 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: the 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)        The signs

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

The marks are only visually and phonetically similar to a low degree. Conceptually, the signs are not similar or the conceptual aspect does not influence the assessment of the similarity of the signs.

b)        Reputation of the earlier trade mark

According to the opponent the earlier trade mark has a reputation in France for goods and services in Classes 9, 38, 41 and 42.

Reputation implies a knowledge threshold which 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.

The contested trade mark was filed on 15/12/2014. 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 this date. The evidence must, furthermore, show that the reputation was acquired in respect of the goods and services in connection with which reputation has been claimed by the opponent.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier mark ‘FREE’ does have a reputation for all the goods and services on which the opposition is based.

c)        The ‘link’ between the signs

As seen above, the earlier mark is assumed to have a reputation and the signs are similar to a certain extent. 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 types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas-Salomon and Adidas Benelux, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C-252/07, EU:C:2008:655,  Intel Corporation, § 57, 58 and 66).

The earlier mark is assumed to have a reputation in France in relation to the following goods and services:

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

Class 38:                Telecommunication services; rental of access time to global computer networks; communications by fibre optic network; communication by computer terminals; communications by radio; telephone communications; providing access to electronic communication networks; paging services (radio, telephone or other means of electronic communication); transmission of messages; computer aided transmission of messages and images; voice mail services; electronic mail; provision (rental, loan) of telecommunication equipments and apparatus; telecommunication information; providing access to forum (chat room) on communication network; providing access to databases, information and communication technology for data hosting services; television broadcasting on all communication media; radio broadcasting.

Class 41:                Television services (channels, programs editing and distribution).

Class 42:                Website hosting by electronic communication and telecommunication networks; provision of search engines for electronic communication networks; electronic data storage services.

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 opponent points out the following: the ‘FREE’ trade mark possesses a reputation in a wide range of sectors, notably in the field of communications and telecommunications (including as an internet access provider and in the areas of television and telephony) but also, and increasingly, in other fields such as advertising, information about training, games, education, high-tech, sport, culture, entertainment services and the presentation of numerous products and services through communication media for retail purposes. The similarity between the conflicting signs is such that the public could very easily associate them and wrongly believe that the goods and services covered are provided by related companies.

The Opposition Division is of the opinion that the coincidences between the elements ‘FREE’ and ‘FREEONTOUR’ 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 resumed below, that make it unlikely that the opponent’s mark would come to consumers’ minds when they see the contested sign, thus making the products or services labelled with the contested sign more attractive to consumers. Even assuming that the contested goods and services are identical to those of the opponent, no mental link will be made between the two marks, due to these important differences.

First of all, visually, only the letters ‘F-R-E-E’ are reproduced in the contested sign and the contested sign is much larger ending with the letters ‘-O-N-T-O-U-R’, which have no counterpart in the earlier mark. Furthermore, the earlier mark is a short one in contrast to a large contested sign.

Phonetically, even though the earlier mark is pronounced in the contested sign, the latter has two more syllables, consisting of the last syllables /*-ON-TOUR/ that are not pronounced in the earlier mark.

Conceptually, neither of the marks do have any meaning for a part of the French public and for another part of the public only the earlier mark has a meaning.

Therefore, when encountering the contested sign ‘FREEONTOUR’, the opponent’s mark ‘FREE’ would not come to mind when confronted with the contested goods and services and the consumer would not make any mental link with the ‘FREE’ mark which has been assumed to be reputed for the goods and services in Classes 9, 38, 41 and 42, despite the fact that the contested goods and services are also assumed identical. The marks are perceived in a too different way to make this link, as required under Article 8(5) EUTMR.

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, 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.

The opponent has also claimed reputation for the remaining earlier trade marks, which have already been mentioned above under the ground of Article 8(1)(b) EUTMR, which are either identical or even more different to the one which has been compared and, therefore, the outcome cannot be different as in the present case.

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

1. 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 identical or similar 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. The same is applicable with regard to Article 8(1)(b) EUTMR, as explained in that section.

When comparing the mark ‘FREE’ (word mark) with the contested sign ‘FREEONTOUR’ (word mark), 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 Article 8(5) and 8(1)(b) EUTMR, due to their overall visual and aural differences. Therefore, the marks in conflict are deemed to be sufficiently different overall.

As seen above, the abovementioned 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, since the signs at issue show overall more differences than similarities and the similarities are not strong enough or very limited, there can be no risk of confusion between the earlier signs and the contested mark, irrespective of the identity or similarity between the goods and services. 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 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Inés GARCÍA LLEDÓ

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.