THURSDAY, 28 JULY 2011
OHIM Boards of Appeal: an APPLE Logo a day, takes the reputation of your word mark APPLE away
On the basis of its word trademark APPLE (Community trademark registered in the Classes 9, 16, 20, 28, 35, 36, 41), in April 2006 Apple Inc. opposed the registration of the Community trademark PINAPPLE applied for by Pinapple Holdings Ltd. for the goods and services in classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 35, 36 and 41.
The Opposition Division had rejected the opposition for all the contested goods.
The Court of Appeal (case R-1588/2009-4) found that there was a likelihood of confusions with the opponent’s earlier word trademarks only in respect to a selected list of goods and services in Class 16, 28, 35, 41, considered to be identical or similar to an average degree to the opposing goods and services.
The appeal remained unsuccessful for all the remaining goods and services, which have been judged similar to a law degree, or dissimilar, to those covered by the earlier trademarks.
In respect to the ground of opposition based on Art. 8 (5) CTMR invoked by Apple Inc., the Board judged that the contested trademarks are similar and that the trademark APPLE does have a reputation for some of the goods and services in class 9 and 42.
However, to the question if the applicant’s use, without due cause, of the sign PINEAPPLE in connection with the interested goods would take unfair advantage of, or be detrimental to, the distinctive character or to the reputation of the opponent’s repute trademark APPLE, the Board of Appeal gave a negative answer.
The injuries referred to in Art. 8 (5) CTMR are the consequence of a certain degree of similarity between the conflicting trademarks, by virtue of which the relevant public establishes a link between them.
According to the Board, however, it is unlikely that such a link between the conflicting trademarks APPLE and PINEAPPLE exists: the two signs at issue are not identical, but only similar to an average degree, and the goods and services covered by PINAPPLE are rather far removed from the goods and services for which the earlier trademark has reputation.
Interestingly, the Board noted that “the reputation of the word trademark APPLE goes hand in hand with the reputation of the APPLE Logo”: if the reputation for the word mark APPLE can not be denied, the reputation of the APPLE Logo appears to be much stronger.
“It is the APPLE Logo which may have a reputation which goes beyond the relevant public as regards the goods and services for which the trademarks APPLE are used, and not the word APPLE as such, the exposure of which is less visible and more modest than the exposure of the APPLE Logo”.
In the absence of the required link between the signs, the use of the contested trademark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trademark APPLE.
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