Apple Inc. has recently been successful in two Board of Appeal decisions against Pear Technologies Limited. Pear filed two stylised Pear logo marks as EUTMs:
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Both marks were filed for goods and services in Class 9 (laptop computers, personal computers, handset and tablet mobile digital electronic devices), Class 35 (providing consultancy on digital marketing) and Class 42 (maintenance and updating of computer software, providing information concerning computer software via the Internet).
Apple was successful both at the Opposition Division stage and at the Board of Appeal on the basis of their reputation in their famous logo:
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When the Board of Appeal assessed the similarity of the marks, they found, in relation to the first mark (without the squares), that the marks are visually similar to the extent that they contain a large, sleek, rounded object, on top of which there is an oblong shape (a leaf or a stalk) leaning to one side. The abstract stylisations of the silhouette are similar. Conceptually, they found that the two fruits are related, and that pears are a common alternative to apples. The Board of Appeal concludes that there is clear visual and conceptual similarity between the Apple logo mark and Pear’s cartoon-like pear mark.
In relation to the second mark, with square shapes within the pear silhouette, the Board of Appeal noted that both marks contain the depiction of a piece of fruit including a stalk/leaf. They placed particular emphasis on the stalk/leaf, noting that it is placed in the same position in both marks and that they are both at the same 45-degree angle pointing to the right and clearly detached from the fruit. The Board of Appeal agreed with the Opposition Division, finding that because of the visual similarities of the marks, the contested sign would call to mind the earlier reputed mark . In terms of the conceptual link, they say that ‘a conceptual link between the signs cannot be denied’. They note that although apples and pears are two distinguishable fruits, they are both types of fruit that are closely related in a biological sense (such as the origin, size, colour and texture) and that apples and pears are associated in many ways throughout the relevant territory. On that basis, they do find that there is a visual and conceptual similarity between the marks.
This is an interesting decision on many levels, noting the signs in question. Practically speaking, it seems that Apple may not necessarily be opposed to another technology company trying to use a fruit as a brand. Pear Technologies successfully registered the word mark PEAR as an EUTM in 2015, and there are many companies in the tech sector which use other fruits as a brand, e.g. “Orange” and “Blackberry”. It seems here that Apple is more concerned about the use of an image of a fruit, especially a fruit which biologically resembles an apple. We wonder if Apple would be similarly opposed to other fruits, which may not be biologically similar to an apple, but which may be represented in a way which may be similar to an apple, e.g. strawberries or blackberries.
This decision is a useful reminder to brand owners that it is one thing to own a trade mark registration, but another to enforce it when appropriate.