Michalakopoulou Ktimatiki Touristiki v OHMI - Free (FREE) (Intellectual property) [2010] EUECJ T-365/09 (27 October 2010)

Judgment Background to the dispute On 21 October 2003, Eidikes Ekdoseis AE filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)). Registration as a mark was sought for the word sign FREE. The goods in respect of which registration was sought are in Class 16 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘publications, magazines, posters, newspapers, books, photographs except for [the] banking sector’. The Community trade mark application was published in Community Trade Marks Bulletin No 5/2005 of 31 January 2005. On 25 April 2005, the intervener, Free SAS, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for in respect of the goods referred to at paragraph 3 above. The opposition was based on: – the national word mark FREE, registered as French trade mark No 1734391 for services in Class 38 of the Nice Agreement, corresponding to the following description: ‘telematic services, general public, user-friendly messaging, classified advertisements, services for storing, receiving and sending messages’; – the figurative mark reproduced below, registered as French trade mark No 99785839 for services in Classes 35 and 38 of the Nice Agreement, corresponding to the following description: ‘advertising; newspaper subscription services for third parties; electronic mail services and electronic distribution of information particularly for internet-type worldwide communication networks; communication by computer terminals, information system and telephone communications, telecommunications, computer-aided transmission of messages and images, electronic message service, telecommunication information’: – the company name FREE; – the trade name FREE; – the domain name ‘free.fr’. The grounds put forward in support of the opposition were, as regards the earlier marks, that referred in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) and, as regards the other grounds, those set out in Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009). The opposition was directed against all the goods covered by the Community trade mark application. By decision of 21 July 2008, the Opposition Division rejected the opposition in its entirety. On 18 September 2008, the intervener filed a notice of appeal at OHIM against the decision of the Opposition Division, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009). By decision of 11 July 2009 (‘the contested decision’), the First Board of Appeal of OHIM upheld the opposition, in so far as it was based on Article 8(1)(b) of Regulation No 207/2009, and rejected the application for registration of the trade mark applied for. In particular, the Board of Appeal considered, first, that there was some similarity between, on the one hand, newspaper subscription services, electronic distribution of information via the internet and the forms of communication covered by the earlier figurative mark free LA LIBERTÉ N’A PAS DE PRIX and, on the other, publications and printed material such as posters and photographs, which are the goods covered by the Community trade mark application. Next, the Board of Appeal considered that the relevant public consisted of French-speaking consumers looking for information, in particular online. Lastly, the Board of Appeal took the view that there was a striking degree of similarity between the national trade marks relied on in support of the opposition and the mark applied for from a visual, aural and conceptual point of view and a likelihood of confusion was therefore established, in spite of the low degree of similarity between the goods and services in question. By decision of the Prefect of Athens (Greece) of 30 June 2009, registered with the registry of public limited companies on the same day, the merger of the applicant, Michalakopoulou Ktimatiki Touristiki AE, and Eidikes Ekdoseis was approved, the latter being taken over by the former. By letter of 16 September 2009, the applicant informed OHIM that the trade mark applied for by Eidikes Ekdoseis had been transferred into its name. The transfer was recorded in OHIM’s register on 2 October 2009. Forms of order sought by the parties The applicant claims that the Court should: – annul the contested decision; – reject the opposition; – order OHIM to pay the costs; – order the intervener to pay the costs of the proceedings before the Board of Appeal. OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. The intervener contends that the Court should: – uphold the contested decision and dismiss the action, together with the Community trade mark application in its entirety; – order the applicant to pay the costs of the proceedings before the General Court and before OHIM. Law The applicant essentially relies on two pleas in law. In its first plea, the applicant submits that the Board of Appeal failed to state reasons in support of its finding concerning the similarity between the goods covered by the earlier word mark FREE and those covered by the mark applied for. In its second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant submits firstly that, contrary to the conclusions of the Board of Appeal, there is no similarity either between those two product areas or between the services covered by national figurative mark free LA LIBERTÉ N’A PAS DE PRIX and the goods covered by the mark applied for. Secondly, the applicant challenges the Board of Appeal’s assessment concerning the similarity of the conflicting signs and, therefore, the finding that there was a likelihood of confusion. OHIM raises a preliminary question concerning the date of registration of the transfer of the Community trade mark application, since it postdates the date on which the present application was lodged. It should be noted, first, that, as is apparent from the case-file, the applicant merged with Eidikes Ekdoseis by taking over that company. The effect of that transaction, according to Article 75(1)(a) of Law No 2190/1920 on public limited companies (FEK A’ 37), in force at the time of the merger, is that from the date of registration of the transaction, the applicant takes the place ipso jure of Eidikes Ekdoseis without any further formalities and the transfer in question operates as a universal succession. Next, it should be noted that an action for annulment brought by the addressee of a measure can be pursued by the transferee of all the latter’s business, particularly in the case of the death of a natural person or in the case of a legal person ceasing to exist, when all its rights and obligations are vested in a new person. In such a situation, the transferee of the entire business is necessarily substituted by operation of law for its predecessor as addressee of the contested measure (see Joined Cases T-67/00, T-68/00, T-71/00 and T-78/00 JFE Engineering and Others v Commission [2004] ECR II-2501 , paragraph 46 and the case-law cited). The same applies with regard to the right to bring an action, which can be exercised by the transferee of the entire business where the latter is substituted for its predecessor as addressee of the contested measure, as in the present case. It follows that the action is admissible. The first plea, alleging infringement of the obligation to state reasons With regard to the alleged failure to state reasons concerning the similarity of the goods covered by the national word mark FREE in Class 38 and those covered by the mark applied for in Class 16, there is no assessment of that question in the contested decision. As is apparent from paragraphs 15 to 22 of the contested decision, the Board of Appeal simply assessed the similarity of the goods covered by the mark applied for and the services covered by the earlier figurative mark free LA LIBERTÉ N’A PAS DE PRIX. It is true that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, OHIM decisions must state the reasons on which they are based. Nevertheless, whether a statement of reasons satisfies those requirements is a question to be assessed by reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (Case T-304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 44). As regards the legal rules in question, it should be noted that, as is clear from Article 42(5) of Regulation No 207/2009, the examination of an opposition is intended to establish whether there is, in relation to all or part of the relevant goods or services in respect of which the trade mark application is disputed, any ground for refusal of registration which warrants the rejection of the trade mark application. OHIM is therefore not required to adjudicate on all the grounds for refusal of registration put forward in support of the opposition, on the basis of which a trade mark application could be rejected (Order in Case T-194/05 TeleTech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL) [2006] ECR II-1367, paragraphs 26 and 27). It is therefore clear that failure to compare the relevant goods and/or services covered by a trade mark relied on in support of opposition proceedings with those that are the subject of the mark applied for does not mean that the Board of Appeal’s decision is vitiated by a failure to state reasons or inadequate reasoning in that connection, if it has upheld the opposition after making the comparison in question by reference to another mark that is also relied on in support of the opposition. In the present case, as is not in any event disputed, the Board of Appeal set out the grounds which led it to consider that the goods covered by the trade mark applied for and the services covered by the figurative mark free LA LIBERTÉ N’A PAS DE PRIX were similar and it follows that the contested decision is not vitiated by a failure to state reasons. The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009 With regard to the validity of the Board of Appeal’s assessment of the similarity of the goods and services in question, the applicant submits that the purpose of the publication of magazines, newspapers and books covered by the Community trade mark application cannot be regarded as being similar to that of the services covered by the national mark free LA LIBERTÉ N’A PAS DE PRIX, such as the distribution of information by telecommunication networks and internet. The effect of such an approach, it is argued, would be to reserve to the holder of a trade mark the right to prevent any other person from distributing information under the same or a similar mark, irrespective of the nature, purpose or means by which the information in question was to be distributed and, ultimately, to monopolise the distribution of a wide range of information, to the detriment of the public. Moreover, information services fall within a number of classes of the Nice Agreement, according to the subject matter of the information in question, so that, in order for the various types of information distributed to be regarded as similar, such similarity must be based on common uses or users and on similar purposes or channels of distribution. Lastly, the applicant is of the view that the services offered by the intervener are not in any way connected with the distribution of information to be found in a magazine or newspaper but solely with information relating to internet links and telecommunications. The information covered by the earlier figurative mark free LA LIBERTÉ N’A PAS DE PRIX, which is distributed as a service, may take a great variety of forms, so that it cannot be accepted that such services are similar to the goods covered by the Community trade mark applied for. Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services (Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS) [2003] ECR II-2821 , paragraphs 30 to 33 and the case-law cited). With regard to the applicant’s argument that the definition of the services covered by the earlier mark free LA LIBERTÉ N’A PAS DE PRIX is too broad, it should be noted that the comparison of the goods or services must relate to those covered by the registration of the trade marks in question and not to those for which the earlier trade mark has in fact been used unless, following an application made under Article 42(2) and (3) of Regulation No 207/2009, it is apparent that the earlier mark has been used in relation to part only of the goods or services for which it was registered. In that case, for the purposes of consideration of the opposition, the earlier mark is deemed registered only for that part of those goods or services (Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891 , paragraph 35). Therefore, if the applicant considered that, notwithstanding the registration of the national mark free LA LIBERTÉ N’A PAS DE PRIX for services that are too broadly defined, the intervener’s use of that mark is confined to services which are not similar to the goods covered by its Community trade mark application, it should have submitted a request for proof of use of the national mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009. However, the applicant has made no such request, so that the comparison of the goods and services covered by the conflicting signs must be made on the basis of their wording, as it appears in the Community trade mark application and the registration of the national mark. With regard to that comparison, first, as the Board of Appeal pointed out, the relevant public consists of average French-speaking consumers. Next, the Board of Appeal clearly did not err in considering that the printed publications covered by the contested Community trade mark application have the same purpose as the online information distribution service covered by the national mark free LA LIBERTÉ N’A PAS DE PRIX. Moreover, the Board of Appeal was also correct in considering that the differences in the nature and distribution channels of the goods and services at issue are not sufficient to cancel out their similarity, since, for the persons at whom the publications and services in question are directed, what matters is to obtain the desired information, which is very often available in both written form and online, whereas the medium by which that information is provided is of secondary importance. It follows that the Board of Appeal correctly concluded that there was some similarity between the goods covered by the Community trade mark application and the services covered by the earlier mark free LA LIBERTÉ N’A PAS DE PRIX. With regard to the comparison of the signs, the applicant considers that, contrary to the Board of Appeal’s assessment, the dominant element in the earlier mark free LA LIBERTÉ N’A PAS DE PRIX is not the word ‘free’, even though it occupies an obviously more important position within the mark in question. By contrast, that mark creates the impression of an indivisible whole, composed of the word ‘free’, the slogan ‘la liberté n’a pas de prix’ (freedom has no price) and a leaping silhouette and it is not possible to regard the latter two elements as negligible. That argument is, in the applicant’s view, supported by the fact that the relevant public would pay more attention to the slogan written in its native tongue and that the word ‘free’ is a common word which needs the slogan not only in order to give the mark in question a distinctive character but also to enable the mark to fulfil its advertising function. Moreover, the word ‘free’ in the earlier mark is not the same as that in the mark applied for, since it is written in minute italics, accompanied by the promotional slogan and the leaping silhouette, which, together, form a whole that is visually different from the trade mark applied for. The presence of that slogan also rules out any aural similarity with the mark applied for. Conceptually, the earlier mark evokes freedom of movement and economic freedom, unlike the mark applied for, which evokes individual freedom. The applicant concludes that, in those circumstances, the Board of Appeal erred in finding that there is a likelihood of confusion in the present case. According to established case-law, a complex trade mark may be regarded as being similar to another trade mark which is identical or similar to one of the components of the complex mark where that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public retains, with the result that all the other components of the mark are negligible within the overall impression created by it. With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (see Case T-364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II-757, paragraph 97 and the case-law cited). It must also be observed that, since the Board of Appeal did not carry out an assessment as to the similarity of the goods covered by the mark applied for and those covered by the national word mark FREE in Class 38, the latter mark cannot be taken into account for the purpose of assessing whether there is a likelihood of confusion. As regards the comparison of the trade mark applied for and the earlier mark free LA LIBERTÉ N’A PAS DE PRIX, the word ‘free’ forms the dominant element within the overall impression created by that mark. First, that word has a much more distinctive character than the slogan ‘la liberté n’a pas de prix’, a promotional slogan that is not immediately perceived as an indication of the commercial origin of the services in question. Next, the word ‘free’ dominates the visual impression created by the mark of which it forms part, because it is considerably bigger than the other components and, in addition, is much easier to remember and pronounce than the slogan in question. Lastly, it is that visual domination which confers on the leaping silhouette a sense of the context of the mark, namely that of freedom. First, the word ‘free’ is widely used not only among the English-speaking public but also among all other persons with a basic knowledge of the English language who form part of the relevant public, which consists in the present case of average French consumers. Second, the silhouette in question does not have any particularly striking characteristics which might detract attention from the element ‘free’. It follows that the Board of Appeal was correct to conclude that the conflicting marks are visually and aurally similar, since the average consumer will read, pronounce and remember principally the word ‘free’ in the earlier mark. The Board of Appeal was also correct in finding that the marks at issue are conceptually the same, by taking account of members of the relevant public who understand the meaning of the word ‘free’, when those who are unaware of the meaning will not perceive any message in that word. Moreover, the applicant’s argument cannot be accepted that the relevant public will associate, first, the word ‘free’ in the earlier mark with freedom of movement and economic freedom, due to the leaping silhouette and the word ‘prix’ (price) in the slogan forming part of the mark, and, second, the same word which constitutes the mark applied for with individual freedom. Since the average consumer will retain only an imperfect recollection of a mark and will rarely have the opportunity to make a direct comparison of different marks, it cannot be concluded that he is capable of making such a subtle distinction – which is not at all obvious – as to the conceptual content of the two signs at issue. The Board of Appeal did not therefore err in finding that the signs at issue are very similar. As regards the global assessment of the likelihood of confusion, the Board of Appeal rightly observed that the low degree of similarity between the goods and services concerned is offset by the high degree of similarity between the signs at issue, so that the relevant public might be led to believe that the applicant’s publications and the information distribution services offered on line and via telecommunication networks by the intervener have the same commercial origin. Since the Board of Appeal did not, contrary to what is claimed by the applicant, commit any error in finding that there is, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the second plea must be rejected. It follows that the action must be dismissed in its entirety. Costs Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs of OHIM and of the intervener, in accordance with the forms of order sought by those parties. With regard to the intervener’s request that the applicant be ordered to pay the costs of the proceedings before OHIM, it is clear that, since the action is dismissed, that question is governed by the section of the operative part of the contested decision dealing with the costs of those proceedings. On those grounds, THE GENERAL COURT (Seventh Chamber) hereby: 1. Dismisses the action; 2. Orders Michalakopoulou Ktimatiki Touristiki AE to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Free SAS in the proceedings before the Court. Forwood Moavero Milanesi Schwarcz Delivered in open court in Luxembourg on 27 October 2010. [Signatures] * Language of the case: English. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII