OPPOSITION No B 2 399 080

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

Busch-Jaeger Elektro GmbH, Freisenbergstr. 2, 58513 Lüdenscheid, Germany (applicant), represented by ABB AG/GF-IP Andreas Siegfried Hermann Müller, Wallstadter Str. 59, 68526 Ladenburg, Germany (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 399 080 is upheld for all the contested goods and services, namely: 

Class 9:                 Electrotechnical and electronic switching apparatus and instruments; network controlling apparatus; monitors; software; electronic apparatus and instruments; electrotechnical installation material, namely switches; flush-mounted insets, namely audio loudspeakers; displays; display equipment; software; all the aforesaid goods being exclusively for installation in houses or buildings.

Class 42:         Software design and development; software design and development.

2.        European Union trade mark application No 12 762 993 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 762 993, namely against some of the goods and services in Classes 9 and 42. 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.

Class 37:         Installation, maintenance and repair of telecommunication and communication apparatus and equipments.

Class 38:         Telecommunication services; rental of access time to global computer networks; communications by fibre optic network; communications by computer terminals; communication by radio; telephone communications; paging services (radio, telephone or other means of electronic communication); cellular telephone 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 databases; information and communication technology for data hosting services; television broadcasting on all communication media; radio broadcasting.

Class 42:         Websites hosting by electronic communication and telecommunication networks; electronic data storage services.

The contested goods and services are the following:

Class 9:         Electrotechnical and electronic switching apparatus and instruments; network controlling apparatus; monitors; software; electronic apparatus and instruments; electrotechnical installation material, namely switches; flush-mounted insets, namely audio loudspeakers; displays; display equipment; software; all the aforesaid goods being exclusively for installation in houses or buildings.

Class 42:         Software design and development; software design and development.

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

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

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 network controlling apparatus; all the aforesaid goods being exclusively for installation in houses or buildings is included in the broad category of the opponent’s telecommunication and communication apparatus and equipment for telephony, radio, telematic in Class 9. Therefore, they are identical.

The contested electronic apparatus and instruments forms a broad category including, for example, the opponent’s apparatus and equipment for transmission of data in Class 9. The Office cannot dissect ex officio the broad category of the contested goods and these are considered, therefore, identical.

The contested monitors; displays; display equipment; all the aforesaid goods being exclusively for installation in houses or buildings are included in the broad category of the opponent’s apparatus and equipment for reproduction of images in Class 9. Therefore, they are identical.

The contested flush-mounted insets, namely audio loudspeakers; all the aforesaid goods being exclusively for installation in houses or buildings are included in the broad category of the opponent’s apparatus and equipment for reproduction of sound in Class 9. Therefore, they are identical.

When comparing the contested software; all the aforesaid goods being exclusively for installation in houses or buildings (mentioned twice) with the opponent’s computers in Class 9, these are similar. These goods are complementary, have the same distribution channels, target the same public and are normally manufactured by the same kinds of undertakings.

When comparing the contested electrotechnical and electronic switching apparatus and instruments; electrotechnical installation material, namely switches; all the aforesaid goods being exclusively for installation in houses or buildings with the opponent’s modems in Class 9, they are similar. From a physical perspective a modem, router and a switch all look very similar, even though there are key differences between them internally and each are used for different purposes on a network. They have a similar nature, purpose and distribution channels. These goods may be manufactured by the same kinds of undertakings.

Even though the contested sign includes the sentence ‘all the aforesaid goods being exclusively for installation in houses or buildings’, this would not change the outcome of identity or similarity of the goods, as also the opponent’s goods could be used in houses or buildings.

Contested services in Class 42

The contested software design and development (mentioned twice) is similar to the opponent’s websites hosting by electronic communication and telecommunication networks in Class 42. These services have the same distribution channels, target the same public and are normally provided by the same kinds of undertakings.

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 and services found to be identical or similar are partly directed at the public at large, for example audio loudspeakers in Class 9, and partly at business customers with specific professional knowledge or expertise, for example software design and development in Class 42. 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	free@home
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 also a word mark, composed of the elements ‘free’ and ‘home’ and separated by the symbol ‘@’. Both signs at issue are word marks. This means not only that they do not claim any particular figurative element or appearance but also that differences in the use of lower or upper case letters are immaterial.

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).

Regarding the contested sign, the public would split it into several elements; ‘free’ and ‘home’, since these are clearly separated by the symbol ‘@’. The first element ‘free’ has the same meaning as explained above in the earlier mark. The symbol ‘@’ in the middle is nowadays commonly used in email transmissions throughout the world and can be considered a weak element. The element ‘home’, being a word that belongs to the basic English vocabulary, refers to ‘the house or flat where someone lives’ (see Collins English Dictionary online) and refers to the fact that the contested goods and services are to be used ‘at home’. The word ‘free’ of the contested sign could clearly be considered more distinctive than the other elements.

Visually, the signs coincide in the letters ‘F-R-E-E’. It means that the whole earlier mark, which is distinctive, is included in the contested sign at the beginning and is also the most distinctive part of it. However, they differ in the additional symbol and element ‘@home’ at the end of the contested sign, which are weak.

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.

Therefore, the signs are visually similar to a high 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 symbol ‘@’ and the word ‘home’; all these differentiating elements are not only placed at the end of the contested sign, but they are also weak elements. 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 element ‘FREE’, the signs are conceptually similar to a high degree, since the elements ‘@home’ are weak. For another part of the French public, as explained above, the earlier mark has no meaning, while the elements ‘@home’ are understood. For this part of the public, the marks are not conceptually similar. However, the impact of these meaningful elements is limited, as they are weak.

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 goods and services at issue have been found to be partly identical or similar 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, phonetically and conceptually similar to a high degree, the latter for the French public that has a certain knowledge of English, and the marks are conceptually not similar for the rest of the public. 

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 and similar goods and services bearing the contested sign, come from the same undertaking or from economically-linked undertakings as those bearing the earlier mark ‘FREE’, even in case the level of attention is above average.

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 and services.

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 and services 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.