Owners of EU trademarks (EU TMs) 'with reputation’ can claim a broader scope of protection than owners of EU TMs without reputation. The recent opposition procedures by ‘APPLE’ against the application of two word/device trademarks with the word element ‘Pear’, as well as the graphic representation of a pear, provide insight into what this broader scope of protection entails. Novagraaf’s Frouke Hekker sets out the key points of this doctrine and rulings.

The registration of a trademark is only the first step in the effective use of a chosen brand, company or product name. In order to ensure valuable marks are protected and enforced, brand owners also need to monitor new applications to ensure that those potential new trademarks don’t infringe or potentially damage their existing rights. Where potential conflicts are identified, owners of earlier marks can raise an opposition (or challenge) to the younger trademark on the basis that it is identical or confusingly similar to their own rights (find out more about the opposition procedure).

To establish whether there is likelihood of confusion, the trademark registry will assess the visual, phonetic and conceptual similarity of the relevant trademarks, account being taken, in particular, of their distinctive and dominant components.

Broader protection for trademarks with reputation EU TMs ‘with reputation’ enjoy a broader level of protection under EU trademark law. Trademark owners that are able to show that their EU TMs are known to a large portion of the public cannot only act against younger identical and confusingly similar trademarks that are used for similar goods or services, but also against younger similar trademarks for goods/services that are not similar.

However, this higher level of protection is only applicable if the use of the allegedly infringing trademark is without due cause and would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier EU TM.

When does a trademark take ‘unfair advantage’ of an earlier (reputed) trademark? EU case law shows that a third party can be said to make unfair advantage of a trademark: “where [it] attempts, through the use of a sign similar to a trademark with a reputation, to ride on the coattails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of its own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark”.

Is it ‘detrimental’ to the earlier mark’s distinctive character or reputation? Detriment to a trademark’s distinctive character – also known as ‘dilution’ – relates to the risk that the third party’s use of the mark or similar marks would negatively impact the earlier trademark. The stronger the earlier mark’s distinctive character and reputation, the easier it will be to prove detriment.

When can a trademark be considered to have reputation? In order to qualify as a mark with reputation, an EU TM owner must be able to show that the mark has a reputation in a substantial part of the EU. In practice, this means that there must be a certain degree of knowledge of the mark among the relevant public; however, EU case law states that this degree of knowledge can not be translated into a specific percentage. Instead, when examining the question of reputation, the relevant facts of the case needed to be taken into consideration; in particular, the market share held by the trademark, the intensity, geographical extent and duration of its use and the size of the investment made by the undertaking in promoting it.

Apples and pears Recently, the European Intellectual Property Office (EUIPO) issued its ruling in two opposition procedures between multinational electronical company APPLE and Pear Technologies of Macau. Pear Technologies had applied for trademark protection for the two word/ device marks pictured, and the owner of the APPLE trademarks opposed on the basis of a number of its trademarks, including its famous device mark (also pictured for comparison).

The EUIPO’s Opposition Division agreed with Apple’s proceedings, and refused the applications. These refusals have now confirmed by EUIPO’s Board of Appeal (BoA). The most important considerations in the rulings are as follows:

  • Visually, there is a remote similarity between the APPLE trademarks and the signs for which Pear Technologies is seeking protection: namely graphic representations of fruits including the stem. The silhouettes are therefore considered similar;
  • From a conceptual standpoint, although apples and pears are two different types of fruit, there is a conceptual similarity as the fruits are closely related to each other;
  • The APPLE trademarks are considered to be highly distinctive, as the trademark enjoys a (high) reputation and the image of a 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 trademarks 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 trademarks and the requested 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 without paying a fee to the owner of the APPLE-trademarks;
  • According to BoA, Pear Technologies would be riding on the coat-tails of the APPLE trademarks as it has chosen to mimic the iconic image of the apple by choosing a character from a fruit that is, in biological respect, most near to the apple, namely: the pear.

In conclusion: the refusal of the Pear-trademarks as applied for by Pear Technologies, is confirmed.

(Click here and here for direct links to the rulings).