In a Community Trade Mark Appeal in Case T-369/10, the EU General Court pronounced on whether Handicare Holding BV could register a mark including the word BEATLE as a CTM for electric mobility aids. How could the “relevant public” for Beatles “sound records” and wheelchairs possibly overlap? Emma Percival reports.
Topic: Brands
Who: You-Q BV (formerly Handicare Holding BV); Apple Corps Ltd.
When: March 2012
Where: UK
Law stated as at: 29 March 2012
What happened:
The General Court of the European Union has upheld OHIM's decision to allow an opposition by Apple Corps Ltd ("Apple"), owners of the trade marks BEATLES and THE BEATLES, against a Community Trade Mark ("CTM") application for registration of a figurative sign composed of the word "BEATLE" in respect of wheelchairs. The General Court agreed that it is likely that, by using the mark, the applicant would take unfair advantage of the repute and consistent selling power of the marks BEATLES and THE BEATLES.
The applicants
Handicare Holding BV ("Handicare") was established in 1986 in the Netherlands. In April 2011, Handicare established You-Q BV ("You-Q") to take over the production, distribution and sales of its range of power wheelchair models. You-Q sells electrically powered wheelchairs in Europe under the brand names ALEX, XP and BEATLE.
The opponents
Apple Corps Ltd, informally known as Apple (not to be confused with Apple Inc. the computer software company), is a multimedia corporation based in London. The company was founded in January 1968 by the members of The Beatles to replace their earlier company, Beatles Ltd. Following the break-up of the Beatles, ownership and control of the company remains with Paul McCartney, Ringo Starr and the estates of John Lennon and George Harrison.
Apple is the owner of various Community and national trade marks and non-registered trade marks used in the course of trade, including the word mark for "BEATLES" and several figurative marks composed of the word "BEATLES" or "THE BEATLES" in relation to goods and services in numerous classes of the Nice Classification, but not including goods under class 12.
The dispute
In January 2004, Handicare applied to OHIM for registration of a figurative sign composed of the word ‘BEATLE’ as a CTM in respect of electric mobility aids for persons with reduced mobility under class 12.
Apple opposed registration of the mark applied for under Article 8(5) of the Community Trade Mark Regulation (207/2009).
This provision allows a proprietor of an earlier trade mark to oppose an application for a Community trade mark where the earlier mark has a reputation, the mark applied for is identical or similar to the earlier mark (but is not applied for in respect of goods and/or services identical or similar), and there is a risk that use without due cause of the mark applied for would be detrimental to the distinctive character or repute of the earlier mark.
On 31 May 2010, the Board of Appeal allowed the opposition by Apple, annulling the decision of the Opposition Division which initially allowed Handicare's application for registration.
Handicare appealed to the General Court to overturn the Board of Appeal's decision.
Decision of the General Court
The General Court upheld the Board of Appeal's decision to reject the application made by Handicare (now You-Q). Their decision was based on the following findings:
• The Board were correct in finding that visually, phonetically and conceptually, the marks at issue were very similar;
• The evidence submitted, in particular the sales of the Beatles’ records, demonstrated that the earlier marks "THE BEATLES" and "BEATLES" have an extensive reputation for the purposes of Article 8(5). The earlier marks conveyed qualities and values synonymous with 1960s culture, such as youth and freedom, which gave the marks an inherent economic value independent from that of the good and services for which they were registered;
• There is an overlap between the two sections of the public targeted by the marks at issue, since persons with reduced mobility are also part of the wider general public targeted by the earlier marks;
• The earlier marks owned by Apple have a distinctive character so that, when faced with them, the public at large will immediately link the You-Q goods to The Beatles band, their products and the values and qualities conveyed by them, even though there is no likelihood of confusion;
• The positive image of youth and freedom portrayed by the earlier marks would transfer to the goods provided by You-Q allowing them to benefit from the earlier marks' reputation without incurring any of the great risk or costs, in particular advertising costs, connected with launching a newly created mark.
You-Q did not argue before the Board of Appeal that they had due cause to use the BEATLE mark (in the context of Article 8(5)) and so it was not considered by the General Court.
The Court therefore concluded that the Board of Appeal was correct in finding that it is likely that, by using the mark applied for, You-Q would take unfair advantage of the repute and the consistent selling power of Apple's trade marks under Article 8(5).
Why this matters:
This decision is a reminder of the extensive protection that marks which have built up a significant reputation can enjoy, even in cases where the goods and services applied for are not similar to those covered by the earlier marks and where no likelihood of confusion exists.
