by Alina Trapova
Pear Technologies Limited applied to register as an EUTM for computers, software, maintenance of computer software, etc. in Classes 9, 35 and 42. Apple Inc. opposed the application based on, inter alia, EUTM No. 9 784 299 , registered for the unsurprisingly long list of goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45. Importantly, reputation was claimed for, among others, goods/services in the here contested Classes 9, 35 and 42. The grounds of opposition were those laid down in Articles 8(1)(b), 8(4) and 8(5) EUTMR, whereby Article 8(5) was the focal point of analysis for both EUIPO instances.
EUIPO’s Opposition Division upheld the opposition based on Article 8(5) EUTMR. Apple’s reputation, the identity/similarity of the goods and services and the potential harm in the form of unfair advantage were far from problematic to prove here. What is more intriguing is the signs’ comparison analysis.
One must be recalled that for an Article 8(5) reputation-based opposition the threshold for signs’ similarity is lower than the one required for confusing similarity oppositions under Article 8(1)(b). In the present case, similarity leading to association is sufficient. In those lines, according to the Opposition Division, the signs were similar for the purpose of Article 8(5) as “the figurative element of the pear in the contested sign has graphical features which are similar to those of the earlier mark, and it will be associated with the concept of a pear, which is related to the concept of an apple.”
The 5th Board of Appeal in a decision of 18 January 2017 (R 860/2016-5) was not sympathetic to Pear Technology Limited and dismissed its appeal action. Apple’s overwhelming reputation is indisputable, so the numerous exhibits substantiating its strong market position are rather uninteresting from a trade mark perspective. The same goes for the comparison of the goods and services as it was rather straightforward for the Board to establish identity/similarity.
It was the comparison of signs which was rather more noteworthy.
Having reinstated the principles related to Article 8(5) the Board emphasised once more that “where there is no similarity between the marks at issue, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient grounds for finding that there is a likelihood of confusion between the marks at issue or that the relevant public will make a link between them”. So, key here was to determine whether some similarity existed between the two signs.
In the Board’s view, visually the two signs depict a piece of fruit including a stalk/leaf. The differences are acknowledged, namely the word ‘PEAR’, the missing ‘bite’ taken out of the contested sign and the various black rectangular shapes within the contested sign. However, the following similarities hinted to the outcome the Board was headed for:
- A leaf, even though different in shape, is placed in a similar position on both signs and is in fact in both signs oriented right at 45% and clearly detached from the fruit.
- The figurative elements in the contested sign, positioned centrally, are dominant as the word “PEAR” is smaller, in a faded font and therefore considered secondary. Besides, it reinforces the figurative elements and creates a semantic unit.
- Both signs depict sleek rounded silhouettes of a fruit, whereby “the abstract stylisations of the silhouettes are similar.”
Conceptually, a pear and an apple even though two distinguishable fruits, will be associated to one another.
Eventually, the Board acknowledged that the marks are only slightly similar and that “admittedly, there are some mental steps involved in the perception of the consumer”, but “because of the uniqueness and high reputation of the earlier mark the contested sign’s allusive, somewhat mocking image of the ‘pear’ will trigger and establish a mental ‘link’ with the earlier ‘Apple’ logo”
As a result, the contested sign can be associated with the earlier mark and in view of the identity of the goods and services it is capable of taking unfair advantage of Apple’s well-established reputation and the considerable investment undertaken by Apple to achieve that reputation.
Reputation, reputation, reputation. These are the words that echo even when one reads parts of the decision on entirely different norms, such as the comparison of signs. The decision should be approached with caution and in that sense looked at with the following peculiarity in mind – the opponent was not just anyone, but Apple Inc. and that should not be taken lightly by competitors.
Alina Trapova LL.M. (QMUL)