BEATLE for wheelchairs would take unfair advantage of BEATLES

European Union

In You-Q BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-369/10, March 29 2012), the General Court has upheld a decision of the Second Board of Appeal of OHIM in which the latter had found that the figurative mark BEATLE would take unfair advantage of the repute and the consistent selling power of the earlier BEATLES marks.

In January 2004 Dutch company You-Q BV, formerly Handicare Holding BV, applied for registration as a Community trademark (CTM) of the figurative sign depicted below for, among other things, “wheelchairs electric, wheelchairs not-electric” in Class 12 of the Nice Classification:

Apple Corps Ltd UK opposed the application based on various earlier marks, including the word mark BEATLES and the figurative mark depicted below:

The earlier marks included CTMs and national marks, as well as an earlier well-known mark, an earlier non-registered mark and an earlier mark used in the course of trade. The earlier marks covered a wide range of goods and services, but not explicitly goods in Class 12. The opposition was based on Article 8(1)(b) (likelihood of confusion) and Article 8(5) (unfair advantage taken of the distinctive character or reputation of the earlier marks) of the Community Trademark Regulation (207/2009).

The Opposition Division rejected the opposition on the grounds that:

  • the goods covered by the parties' marks were different (Article 8(1)(b)); and
  • Apple Corps had failed to prove that the public would perceive a link between the marks, given the dissimilarities between the goods and services (Article 8(5)).

Upon appeal by Apple Corps, the Second Board of Appeal annulled the decision of the Opposition Division based on the following grounds:

  • The earlier mark THE BEATLES (or BEATLES) is very famous for sound records, video records and films; it is highly distinctive both per se and by virtue of its extensive use in respect of those goods.
  • The marks at issue were visually, phonetically and conceptually highly similar.
  • Despite the dissimilarity of the goods, and due to the enormous reputation of the earlier mark(s) for the respective goods, the relevant public overlapped. Therefore, it was not inconceivable that an association could be made between the marks at issue on the part of the relevant public, since fans of the Beatles are precisely the sort of people targeted by You-Q’s goods.
  • It was likely that, by using the mark applied for, You-Q would take unfair advantage of the repute and the consistent selling power of the earlier mark(s). Moreover, You-Q had failed to prove due cause of use of the mark applied for.

On appeal, the General Court had to assess only the plea alleging infringement of Article 8(5). In a well-structured decision, the court relied on the established case law on the cumulative conditions for the applicability of Article 8(5):

  • Reputation of the earlier mark(s) - the General Court concluded that it could be inferred from the material presented by Apple Corps that the earlier mark(s) enjoyed a very substantial reputation (the combined sales of sound records bearing the mark BEATLES amounted to 28.7 million between 1995 and 2004; the Beatles group is considered to have an exceptional reputation, stretching over more than 40 years).
  • Identity or similarity of the marks - the General Court confirmed that there was a high degree of similarity between the marks, as well as an overlap between the relevant sections of the public. Therefore, the Board of Appeal had correctly found that, notwithstanding the difference between the goods in question, there was a link between the mark at issue, since the mark applied for would call to mind the earlier mark with a reputation.
  • Unfair advantage taken of the distinctive character or the repute of the earlier mark(s) - the General Court agreed that the image portrayed by the earlier mark(s) was, even after 50 years of existence, still synonymous with youth and a certain counter-culture of the 1960s - an image that is still positive and which could specifically benefit the goods covered by the mark applied for. The very positive image of freedom, youth and mobility associated with the earlier marks might particularly attract the relevant public in light of the handicap in question.

The decision is convincing. It shows the strength of well-known mark(s), which can block the registration of similar marks under Article 8(5), even where the goods are dissimilar – however, this is restricted to extremely well-known marks, such as THE BEATLES.

Florian Schwab, Boehmert & Boehmert, Munich

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