Action brought on 22 March 2012 - Free v OHIM - Noble Gaming (FREEVOLUTION TM)

(Case T-127/12)

Language in which the application was lodged: French

Parties

Applicant: Free (Paris, France) (represented by: Y. Coursin, lawyer)

Defendant: Office for Harmonisation in the Internal Market (Trade Marks and Designs)

Other party to the proceedings before the Board of Appeal: Noble Gaming Ltd (Prague, Czech Republic)

Form of order sought

annul the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 13 December 2011 in Case R 2326/2010-2;

hold that the earlier marks relied on and in particular the French word mark FREE No 1734391 are similar to the mark at issue 'FREEVOLUTION' within the meaning of Article 8(1)(b) and all the more so within the meaning of Article 8(5) of Regulation No 207/2009;

hold that the application for registration of the mark at issue must be rejected on the basis of Article 8(1)(b) and all the more so in accordance with Article 8(5) of Regulation No 207/2009; and

order the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings, both before the General Court and the OHIM.

Pleas in law and main arguments

Applicant for a Community trade mark: Other party to the proceedings before the Board of Appeal.

Community trade mark concerned: Figurative mark containing the word element 'FREEVOLUTION' for goods and services in Classes 9, 41 and 42 - Community trade mark applied for No 8206443.

Proprietor of the mark or sign cited in the opposition proceedings: The applicant.

Mark or sign cited in opposition: French figurative mark 'free LA LIBERTÉ N'A PAS DE PRIX' No 99785839 for goods and services in Classes 9 and 38; French word mark 'FREE' No 1734391; French word mark 'FREE MOBILE' No 73536224 for goods in Class 9; Trade name 'FREE' used in business in France; domain name 'FREE.FR' used in business.

Decision of the Opposition Division: Rejection of the opposition in its entirety.

Decision of the Board of Appeal: Dismissal of the appeal.

Pleas in law: Infringement of Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 in so far as there is a distinction between how the similarity of the signs should be assessed under each of those provisions; infringement of Article 8(1)(b) of Regulation No 207/2009 in so far as there is indeed a likelihood of confusion with regard to the trade marks at issue; and, infringement of Article 8(5) of Regulation No 207/2009 in so far as there is a link between the marks 'FREE' and 'FREEVOLUTION' such that the mark with a reputation 'FREE' is prejudiced by the existence of the trade mark at issue.

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