OPPOSITION No B 2 796 996

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 Highest Electronics Co, Ltd., Room 301, Floor 2-6, Building 12 (Block B), Huachuangda Culture and Technology Industrial Park, Hedong Commercial City, Zone 49, Xin'an Street, Bao'an District, Shenzhen City, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal 421, 2º, 08008 Barcelona, Spain (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 796 996 is upheld for all the contested goods, namely 

Class 9:         Battery chargers; accumulators, electric; batteries for mobile phones; accumulators [batteries]; anode batteries.

2.        European Union trade mark application No 15 696 453 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 15 696 453, namely against some of the goods in Class 9, for the figurative mark. The opposition is based on, inter alia, French trade mark registration No 4 037 814 for the word mark ‘FREE’, in relation to which the opponent invoked Article 8(1)(b) and 8(5) 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.

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

The contested goods are the following:

Class 9:         Battery chargers; accumulators, electric; batteries for mobile phones; accumulators [batteries]; anode batteries.

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

When comparing the contested battery chargers; accumulators, electric; batteries for mobile phones; accumulators [batteries]; anode batteries 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, accumulators and batteries for mobile phones. It also has to be considered that, for example, battery chargers and batteries for mobile phones 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.

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 similar are directed at the public at large. 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 word ‘FREEGO’, written in a fairly standard typeface in capital bold letters. 

Regarding the earlier mark, 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 Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Regarding the contested sign, a part of the public would also split it into two elements ‘FREE’ and ‘GO’. The first element ‘FREE’ has the same meaning as explained above in the earlier mark. The element ‘GO’, even though it is an English word, it belongs to the basic English vocabulary and will be understood by at least a part of the French public as ‘to move or proceed, especially to or from a point or in a certain direction; to depart; to start’ (see Collins English Dictionary online). The contested sign is normally distinctive for the goods at stake.

Visually, the signs are similar to the extent that they coincide in the element ‘FREE’, meaning that the whole earlier mark is included in the contested sign at the beginning. However, they differ in the additional letters ‘GO’ of the contested sign.

It is also important to mention that the first parts of the conflicting marks coincide, ‘FREE’. 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 typeface in which the contested sign is written, this stylisation is fairly standard and it will not lead the consumer’s attention away from the element 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 syllable ‘GO’, which is placed at the end of the contested sign. The marks are aurally similar to an average 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 element ‘GO’, refers to the concept explained above and gives it an additional meaning. 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.

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 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 similar and the level of attention varies from average to above average. The earlier mark has an inherent normal degree of distinctiveness.

The marks have been found visually, phonetically and conceptually similar to an average degree, the latter for a part of the public, and for another part, the conceptual aspect does not influence the assessment of the similarity of the signs.

It is probable that the consumer, that has a basic knowledge of English and will attribute a meaning to ‘FREE’ and maybe also to ‘GO’, will consider the conflicting marks as having the same commercial origin, for example, that the contested sign with its additional element ‘GO’ represents a new line or a parallel line of the opponent’s goods (05/09/2007, T-220/06, JAKO-O Möbel und Spielmittel für die junge Familie GmbH, EU:T:2007:244). It is not unusual that manufacturers put several lines of products or services on the market under different sub-brands. In the present case, the consumer could perceive the contested sign as a sub-brand of the opponent.

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

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.