The decision of the General Court on the use of the word “BEATLE” in relation to electric mobility aids confirms that the owners of a famous trade mark can prevent other businesses seeking to use the same brand, even in completely different markets and where there is no suggestion of any confusion on the part of consumers.
Handicare Holding BV applied to register “BEATLE” as a Community Trade Mark (“CTM”) in respect of electric mobility aids. Apple Corps opposed that application relying on its existing trade mark registrations for “BEATLES” and “THE BEATLES” (You-QBV (formerly Handicare Holding BV) v OHIM Case T 369/10). The General Court considered that Handicare’s application should not be granted because it was likely that their use of the mark “BEATLE” would take unfair advantage of the repute and the consistent selling power of the earlier trade marks owned by Apple Corps.
This case, whilst not a ground-breaking decision, provides a useful summary of the factors to be taken into account when considering whether the use of a trade mark applied for would, or would be likely to, take unfair advantage of, or be detrimental to, the distinctive character or the repute of an existing trade mark registration. It shows the strength of trade mark protection, where the trade mark in question is regarded as a “superbrand”, to prevent other businesses seeking to use the same brand, even in completely different markets and where there is no suggestion of any confusion on the part of consumers.
Apple Corps’ challenge to Handicare’s application depended on Apple Corp being able to show (cumulatively) that:
- their earlier “BEATLES” trade marks had a reputation;
- the Handicare application was identical or similar to their earlier trade marks; and
- there was a risk that the use, without due cause, of the CTM applied for, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier “BEATLES” marks.
The General Court upheld the decision of the Board of Appeal, based on specific information which included (i) details of the sales of substantial numbers of sound recordings sold under the “BEATLES” mark; (ii) sales figures for goods bearing the mark manufactured under licence; (iii) the facts that the earlier “BEATLES” marks have an enormous reputation for sound recordings, video records and films; and (iv) that the reputation of those marks in relation to other merchandising products is (at least) substantial to the public at large.
Similarity to earlier mark
The General Court confirmed that the signs in issue were very similar visually (the omission of the final “S” in the mark applied for did not make it dissimilar from the earlier marks), phonetically (the signs would be pronounced in the same way) and conceptually (the marks in issue shared the same semantic content).
The link to the earlier mark
Even if there was no confusion between the mark applied for and the earlier marks, there would be an infringement if the “relevant public” (meaning the part of the public that the goods in question would be directed at) made a connection between the two signs in issue. In terms of establishing whether such a connection exists the following factors should be considered:
- the degree of similarity between the signs at issue;
- the nature of the goods or services for which the marks are registered (including the extent to which those goods or services are similar or dissimilar and the relevant section of the public);
- the strength of the earlier mark
- the degree of the earlier mark’s distinctive character; and
- the existence of the likelihood of confusion by the relevant section of public.
Taking each of these factors in turn, the General Court considered that the “BEATLE” marks in issue were very similar. The goods covered by the marks were not similar. However, there was an overlap between the public at large (at which the goods sold by reference to the name of the pop group were directed) and the section of the public interested in electric mobility aids (since those with reduced mobility also form part of the public at large). In relation to the strength of the mark, the earlier “BEATLES” marks had an enormous reputation in respect of sound records, video records and films and a significant reputation in respect of certain other goods.
The General Court considered that the marks “THE BEATLES” and “BEATLES” were distinctive per se but that they had also acquired a distinctive character so that the public at large would immediately think of the eponymous group when/where either mark was used.
Even in the absence of confusion, the General Court confirmed that, in the light of the other considerations, there was a link between the two marks.
The General Court confirmed that the relevant public, although not confused, could associate the goods bearing the mark applied for with those earlier marks and that the image portrayed by the earlier marks is “still synonymous with youth and a certain counter-culture of the 1960’s… an image which is still positive and which could specifically benefit the goods covered by the mark applied for”. Handicare would, if its application were accepted, be able to introduce its “BEATLE” mark on the market without incurring any great risk or the costs of launching a new mark. This was deemed to constitute, in principle, taking unfair advantage of the repute and the consistent selling power of the marks owned by Apple Corps.