Owner of BEATLES mark fails to prevent registration of BEATLE

European Union
In Apple Corps Limited v Movingpeople.net International BV (Case B 839 318, August 25 2009), the Opposition Division of the Office for Harmonization in the Internal Market has dismissed Apple Corp Limited's opposition against the registration of the trademark BEATLE.
In 2004 Movingpeople.net International BV filed an application for the registration of BEATLE as a Community trademark for goods in Class 12 of the Nice Classification (including "electric wheelchairs, scooters, scootermobiles and minicruisers specially made for sick and disabled persons").
Apple, the publishing company of world-famous band The Beatles, opposed the application based on:
  • earlier Community and national registrations for the trademark THE BEATLES; and
  • unregistered trademarks and other signs used in the course of trade.
The marks and signs at issue covered a wide range of goods and services in Classes 6, 9, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 34, and 41.
Apple also alleged that use of the BEATLE mark would cause detriment to the distinctiveness and reputation of the trademark THE BEATLES. The opposition was based on Articles 8(1)(b), 8(4) and 8(5) of the Community Trademark Regulation (40/94).
With regard to the likelihood of confusion under Article 8(1)(b) of the regulation, the Opposition Division stated that none of the goods covered by the BEATLE mark bore any resemblance to any of those covered by the earlier marks. Moreover, the Opposition Division found that Apple had failed to demonstrate that "electric wheelchairs, scooters, scootermobiles and minicruisers" in Class 12 could be compared to "toy cars and model vehicles" in Class 28. It concluded that although the marks were very similar and the earlier marks were highly distinctive, there was no likelihood of confusion among the public due to the lack of similarity between the goods.
With regard to Article 8(4) of the regulation (unregistered trademarks and signs used in the course of trade), the Opposition Division stated that one of the requirements of this provision is that "the proprietor of the sign must have the right under the terms of the national law governing this right to prohibit the use of the contested mark". The Opposition Division highlighted that it is the duty of the opponent to indicate not only the legal grounds of the opposition, but also the exact basis of the opposition under the legal system of the member state in question. In the present case, the mere fact that Apple claimed “passing off, unfair competition, and other rights protecting trade names and business identifiers” was deemed to be insufficient.  
The Opposition Division then turned to the grounds of opposition under Article 8(5) (marks with a reputation). As the reputation of the earlier marks was seemingly not contested, the issue was whether the BEATLE mark for "wheelchairs, scooters, scootermobiles and minicruisers" could be detrimental to, or take unfair advantage of, the distinctive character or reputation of Apple's marks.
Apple claimed that its marks had a reputation in the field of music and entertainment, and invoked the Beatles’ song "Drive my car" and the film Magical Mystery Tour to demonstrate the existence of a potential link between the entertainment and vehicle industries. However, the Opposition Division failed to see the alleged link between the entertainment field and vehicles for disabled persons.
The opposition was thus dismissed.
The reasoning of the Opposition Division with regard to the first two grounds of opposition seems correct, but its conclusion that use of the BEATLE mark would not take unfair advantage of the reputation of the earlier marks is open to debate. Although the goods covered by the marks are dissimilar, one may argue that Movingpeople chose its mark to benefit from the world-wide reputation of the trademark THE BEATLES.
In any case, another opposition against the registration of BEATLE - filed by Volkswagen - has been allowed due to the likelihood of confusion with the BEETLE mark for cars.  
Séverine Fitoussi and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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