On 15 April 2022, the Paris Court of Appeal ruled that the reputation of the famous English group The Beatles cannot be automatically extended to the trademark BEATLES.(1)
In this case, the French National Institute of Industrial Property (INPI) rejected an opposition filed by Apple Corps Limited – on the basis of its EU trademark BEATLES and invoking the reputation of its earlier trademark – against an application for registration of the trademark THE BEATLES filed by an individual in classes 12, 29, 30, 32, 33, 36, 39, 42 and 45.
Apple Corps Limited filed an appealed to have this decision annulled on the ground that its trademark enjoyed a particular reputation and was therefore not subject to the principle of speciality, since the trademark's reputation was sufficient to result in a risk of association between the trademarks.
Article 8(5) of the EU Trademark Regulation(2) provides as follows:
Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Apple Corps Limited, the INPI had erroneously limited the reputation of the trademark BEATLES to "sound recordings" only, whereas previous decisions had recognised the trademark's reputation for other goods and services covered by the registration. Apple Corps Limited justified its claims regarding the trademark's reputation by submitting numerous pieces of content (eg, press articles, the history of the group, music albums and rankings).
The Paris Court of Appeal held that INPI had rightly recognised the reputation of the trademark only with respect to the goods "sound recordings" and that it had not been demonstrated that the trademark enjoyed a high degree of recognition with respect to the other goods and services for which the reputation had been invoked.
The Court considered that the reputation of The Beatles did not automatically extend to the mark BEATLES, and that it had to be proved that it was well known by a large part of the relevant public. The applicant had provided no relevant evidence to assess the degree of knowledge of the mark, including:
- the market share held by the mark;
- the length of time the mark had been used; or
- the amount of investment made to promote it.
Although the practice of derivative products is common to successful musical groups, as the INPI had noted, this did not in any way allow the conclusion that the trademark was known for all the goods and services invoked by the trademark owner.
Consequently, the Court rejected the appeal lodged by Apple Corps Limited and acknowledged that the INPI's decision was justified.
The case demonstrates that it is necessary for owners of reputed trademarks to remain vigilant, since they must demonstrate the acquisition of such reputation for each of the goods and services covered by the trademark registration. On the other hand, the case presents an interesting defence that could be used when an applicant is attacked by the owner of a reputed trademark.
For further information on this topic please contact Emma Brossard at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected]). The INLEX IP Expertise website can be accessed at inlex.com.
(1) Paris Court of Appeal, Pole 5, Second Chamber, 15 April 2022, 21/09159.
(2) EU Regulation 2017/1001 of 14 June 2017 on the European Union trademark.