Apple prevents registration of figurative PLUSH APPLE mark for Class 28 goods
On November 11 2014 the Appeal Division of the State Patent Bureau held that the figurative mark PLUSH APPLE was invalid for goods in Class 28 of the Nice Classification on the ground that there was a likelihood of confusion with Apple Inc’s apple logo mark.
On February 28 2014 Apple filed an opposition (No PTZ-130) with the Appeal Division of the State Patent Bureau requesting that the latter refuse to extend protection to Lithuania of the international registration for the figurative trademark PLUSH APPLE (International Registration No 1182538), owned by Hermon Marketing Limited:
Apple based the opposition on its figurative Community trademark representing an apple (CTM No 009784299), registered for Class 28 goods, among other goods and services:
The opposition was based on Article 7(1)(2) of the Law on Trademarks of the Republic of Lithuania, which provides that a trademark registration should be declared invalid if it is identical, or misleadingly similar, to an earlier registered mark or application covering identical or similar goods and/or services.
The Appeal Division upheld the opposition and decided not to extend protection of the registration for PLUSH APPLE to Lithuania.
In its decision, the Appeal Division followed the EU courts’ practice, as well as the national Methodical Guidelines on the Assessment of Similarity and Identity of Trade and Services Marks. The Appeal Division assessed the marks in question as a whole, taking into account their components and the position of each component within the marks, and evaluated the visual, phonetic and conceptual similarities between the marks.
In assessing the overall impression created by the marks, the Appeal Division stated that the sole dominant element in the opponent’s mark was the picture of an apple, while the distinctive character of the opposed trademark was determined by the picture of the apple and the words ‘plush apple’.
The Appeal Division agreed with the opponent’s argument that the word ‘plush’ was descriptive in relation to some goods in Class 28, as it describes the kind of the goods and the material from which they are made. In addition, the word ‘apple’ described the figurative element of the mark. It was thus evident that the graphic and word elements both described the same object. Therefore, the overall perception of both marks was based on the graphic element representing an apple, which was accentuated by the word ‘apple’ in the opposed trademark. Further, the apple in the opposed mark was represented in such a way that it resembled the opponent’s earlier trademark. Both marks were represented in the same scale of colours - black and white. The Appeal Division thus found that the marks were similar visually.
Semantically, the marks were found to be similar as they both represented an apple. The word element ‘plush apple’ in the opposed trademark described the visual element, and thus did not significantly change the meaning of the mark.
Based on the above, the Appeal Division concluded that the marks were confusingly similar.
With regard to the similarity of the goods, the Appeal Division observed that both marks covered goods in Class 28 which were of the same nature, could be manufactured by the same manufacturer and sold in the same shops or departments, and were intended for the same end users.
Due to the similarity of the marks and the similarity or identity of the goods, the Appeal Division found that there was a likelihood of confusion.
The Appeal Division also noted that, based on the evidence submitted by the opponent, the opponent’s word and figurative APPLE marks had a higher degree of distinctiveness and were popular and well known among Lithuanian consumers. Due to the higher distinctive character of the opponent’s mark, the risk that consumers might be misled as to the origin of the goods was even greater.
Based on the aforesaid, the Appeal Division decided to uphold the opposition in its entirety.
Aušra Pakėnienė, AAA Law, Vilnius
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