20 April 2017

Apples and Pears

This battle of the fruits began when the multinational electronics company APPLE filed opposition to two trade marks filed by Pear Technologies of Macau consisting of devices of pears. The EUIPO’s Opposition Division agreed with APPLE’s proceedings, and refused the applications. These refusals have now been confirmed by the EUIPO’s Board of Appeal (BoA).

It should be pointed out that EUTMs ‘with reputation’ enjoy a broader level of protection under EU trade mark law. Trade mark owners that are able to show their EUTMs are known to a large portion of the public cannot only act against younger identical and confusingly similar trade marks that are used for similar goods or services, but also against younger similar trade marks for goods/services that are not similar. However, this higher level of protection is only applicable if the use of the allegedly infringing trade mark is without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier EUTM.

The most important considerations in the rulings are as follows:

  • There are some visual and conceptual similarities between the marks – while apples and pears are different fruits, they are closely related to each other;

  • The APPLE trade marks are considered to be highly distinctive, as the trade mark enjoys a high reputation and the image of an edible fruit is, in relation to the relevant products and services – technologically-advanced electronic devices and IT services – wholly arbitrary and therefore, highly distinctive;

  • As a result of this highly distinctive character, it is likely that the consumer will establish a link between the APPLE trade marks and the signs as applied for by Pear Technologies;

  • The BoA found that, because of Apple’s undeniable high reputation and assuming that the consumer will establish a link between the APPLE trade marks and the applied for Pear signs, Pear Technologies would gain unfair advantage from their registration. Since APPLE is known as a provider of high technology products, it is likely that this link would benefit Pear Technologies;

  • According to the BoA, Pear Technologies would be riding on the coat-tails of the APPLE trade marks as it had chosen to replicate the iconic image of the apple by choosing a fruit that is, in biological respect, most near to the apple, namely the pear.

These decisions illustrate the fact that owners of EUTMs 'with reputation’ can claim a broader scope of protection than owners of EUTMs without reputation. This point should be considered when adopting new trade marks to ensure that they do not encroach on trade marks that enjoy a high reputation.

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