In its judgment of 29 March 2012, the General Court (“GC”) confirmed the decision of the Office of Harmonisation for the Internal Market (the “OHIM”) rejecting an application by You-Q BV (“You-Q”) to register the word “BEATLE” as a figurative Community trade mark (“CTM”) for electric mobility aids (Case T-369/10).
On 27 January 2004, You-Q filed an application with the OHIM to register the following figurative sign as a CTM in respect of electric mobility aids:
On 6 May 2005, Apple Corps Ltd, a corporation founded by the members of the rock band The Beatles, (“Apple Corps”) objected to this application before the OHIM on the basis of several earlier trade marks, including the word mark “BEATLES” and the following figurative trade mark:
These earlier trade marks cover a very broad range of goods and services, but not the goods for which You-Q sought to register its CTM.
By decision of 31 May 2010, based on Article 8(5) of Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (the “CTM Regulation”), the OHIM rejected You-Q’s application. The OHIM found that it was probable that You-Q would take unfair advantage of the reputation of Apple Corps’ trade marks in view of the strong reputation of those earlier trade marks, the similarity between the signs at issue and the overlap of the relevant public. According to the OHIM, there was, consequently, an important risk that detriment to Apple Corps’ trade marks would take place.
You-Q lodged an appeal before the GC against the decision of 31 May 2010, arguing that there was no proof that the CTM for which registration was sought would affect the repute of Apple Corps’ trade marks. To find an infringement of Article 8(5) of the CTM Regulation, the GC assessed (i) the reputation of the earlier trade mark; (ii) the level of similarity between You-Q’s sign and the earlier trade marks; (iii) whether there is a link between the signs in question; and (iv) whether the use of the trade mark applied for is liable to take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
The GC sided with the OHIM on the first aspect stating that, in the light of all the documents and information submitted by Apple Corps, the OHIM rightfully found that Apple Corps’ trade marks have an immense reputation for sound recordings, video recordings and films and also have a reputation for merchandising goods.
Second, the GC found that the OHIM was also right to decide that the signs at issue are highly similar from a visual, phonetic and conceptual point of view notwithstanding the fact that the trade mark applied for does not have a final ‘s’.
Further, the GC pointed out that the OHIM was entitled to conclude that there is a link between the signs in question, despite the fact that the goods at issue are not similar. The GC based this finding on (i) the high similarity of the signs at issue; (ii) the immense reputation of Apple Corps’ trade marks; (iii) the fact that persons with reduced mobility (i.e., the relevant public for the CTM applied for) are part of the general public targeted by Apple Corps’ trade marks; and (iv) the distinctive character of those trade marks. With regard to this last element, the GC considered that the general public in both the English-speaking and the non-English-speaking parts of the European Union will immediately associate the words ‘beatles’ and ‘the beatles’ with the music group and their products.
Finally, the GC decided that the OHIM was right to find that it is probable that You-Q would take unfair advantage of the repute of Apple Corps’ trade marks by using the CTM applied for. According to the GC, it is plausible that the relevant public would associate the signs in question, which could lead to a transfer of the values of Apple Corps’ trade marks to the CTM for which registration was sought by You-Q. The GC pointed out that Apple Corps’ trade marks are still, even after 50 years, associated with youth, freedom and mobility, which is very attractive for the relevant public of electric mobility aid products. Moreover, a part of this public belongs to the generation that was familiar with the goods bearing the Apple Corps’ trade marks in the sixties. As a result, the value transfer would give You-Q the possibility to launch its CTM without bearing important costs and risks.
In conclusion, the GC upheld the earlier decision of the OHIM refusing to register the figurative “BEATLE” sign as a CTM.
