On 25 July 2014 Pear Technologies LTD requested the European Union Intellectual Property Office to register a class mark 9, 35 and 42 International Nice Classification of Goods and Services, in the form below presented.
On 15 January 2015, Apple Inc., as the proprietor of the earlier trade mark, raised objections to registration, given the similarity of the trade mark applied for to the earlier trade mark of Community reputation, i.e.: A popular apple apple.
Finally, the Court of First Instance held that the close biological relationship between apples and pears is not a common and similar feature.
Decision taken on 18 January 2017, fifth The Board of Appeal of the EUIPO concluded that there is a slight visual similarity and a weak similarity in the conceptual aspect between the disputed marks, since both trademarks represent fruit with a stem or leaf, in the form of silhouettes of fruit topped by a slender figure with a longitudinal shape inclined towards the upper right corner.
The EUIPO, in its reasoned decision, took the view that the uniqueness and high reputation of the earlier mark allow for the association of both trade marks, thus justifying the risk that the use of the trade mark covered by the application would bring undue advantages due to the distinctive character and reputation of the earlier mark. EUIPO also stressed that this association is based on the fact that the use of fruit as a trade mark is a highly distinctive and unparalleled practice in the sector competent for the trade marks in question and that the trade mark applied for itself is alluding and ‘a little bit’ to the earlier mark.
Judgment of the Court of Justice (General Court)
On 31 January 2019, Following an appeal lodged by Pear Technologies Limited, the Court of the European Union annulled the decision fifth EUIPO Board of Appeal dated 18 January 2017 (R case Regulation (EU) 860/2016-5), performing a detailed comparative analysis of the trade marks, bringing them together into two planes: visual and conceptual.
Comparison of trade marks on a visual basis
First, The Court of First Instance pointed out that the argument put forward by EUIPO in its reasoned decision, i.e. that visually both trademarks represent fruit with a leaf or a pipula, is based on an abstract and inaccurate description of the disputed characters. The Court of First Instance firmly stressed that in fact the marks constitute a presentation two different fruits, apples and pears which, in the visual aspect, are easy and clearly distinguishable by the relevant audience.
The Court of First Instance then indicated that the particular elements of the trade marks representing the leaf or pipula are of a different shape and size in the disputed marks, and will consequently be seen as picturing different objects.
In the semantic-visual layer, in the Court’s view, the presence of a word element ‘PEAR’ (pear) in the mark applied for shows a clear difference between the trade marks at issue, since the earlier trade mark does not contain a ‘PEAR’ element or another element which could be visually similar.
The Court also held that the trade mark applied for, unlike the earlier mark, does not constitute or give thought to the shape of a round fruit and of a smooth and slender surface.
The trade mark applied for constitutes rectangles of varying size in a large number, which only in the perception of the recipient take the image of pears, and the shape and contour of pears are presented only implicitly.
In this context, the Court also notes that the general shape of the marks at issue presents one of fruit as ‘bitten’ and second as full, ‘unbitten’.
In the Court’s assessment, it should be noted that it has not been explained by the EUIPO for what reasons the marks are, from one side depicting an apple with a distinctive leaf, a z second the pear with a characteristic pipula would have a degree of visual similarity.
On the other hand, referring to the view of EUIPO that, given the reputation of the earlier trade mark, the recipients would be able to associate the contested trade marks, The Court of First Instance recalled that the reputation of the earlier trade mark is an indication of the non-similarity of the trade marks at issue and the existence of a link between them in the perception of the recipients and only if the trade marks at issue are of a certain similarity and then it becomes necessary to make an overall assessment of the existence of a potential link between the trade marks in the perception of the recipient.
Summary of the visual similarity position
The disputed signs will be immediately seen as representing different fruits. In addition, the shapes symbolizing the fruit presented are different in general. Pear is presented in the trademark mosaic of numerous rectangles of different sizes, without forming clear edges of the outline.
The trade mark applied for does not contain an element of ‘bite’ characteristic of the earlier mark and, ultimately, the word element ‘pear’ in the trade mark applied for is not found in the earlier mark.
Comparison of trade marks at concept and meaning level
By leaning towards comparing the contested trade marks on a conceptual level, The Court of First Instance found that there were clearly visible differences in the concept and significance.
First, The court has led the disputed trade marks to picture two different objects, these are apples and pears. In the Court’s view, the recipients will easily see the difference in the semantic sense transmitted by trade marks. Moreover, the two trademarks do not share in any way the concept of "bitten fruit", because despite its abstract styling, the trademark applied for brings to mind the whole, "unabsorbed" pear.
The Court also pointed out that the trade marks at issue evoke the idea of fruit only indirectly, directly referring to a bitten apple with a leaf and pear with a pipula. It is correct for the Court of First Instance to conclude that, since the trade mark applied for shows no marks of bite or leaf, as opposed to the earlier trade mark representing an ‘absorbed apple’ with a leaf, it is difficult to imagine that the recipients will use the term ‘fruit’ instead of ‘apple’ or ‘pear’ together with their distinctive features in relation to the contested marks.
The Court also referred to the EUIPO's thesis that apples and pears are often associated in a number of ways and are a common alternative to each other, so they are similar to each other and there is a specific "rivalisation" between these fruits.
First, The Court pointed out that the EUIPO had not submitted specific evidence in support of this thesis, and subsequently incorrectly read the linguistic-meaning context of the proverbs in the languages of the Member States of the European Union, most often highlighted the fact that apples and pears constitute different fruit which leads to different qualities and values and therefore cannot be compared.
This fact alone shows a lack of similarity between trade marks rather than its appearance.
In addition, the Court of First Instance noted that the economic purpose of apples and pears does not demonstrate their similarity in the context of the examination of the similarity of the signposting mark, and possibly can only be an argument if the scope of the goods and services covered by the trade mark is contested by the Nice classification. These criteria applied to two products cannot be easily transferred to the basis of an assessment of conceptual similarity two trade marks, bearing in mind the range of products which may be considered to be similar is very wide and includes products from different classifications.
Finally, the Court of First Instance held that the close biological relationship between apples and pears is not a common and similar feature. The recognition of such a relationship by the recipients of the trade mark would require detailed analysis and awareness of the biological relationship between these fruits, and the trade marks in question do not refer in any way to the said circumstance, so it does not affect receipt of the trade mark.
Summary
In the present case, the Court of First Instance considers that the trade marks at issue do not show any similarity on a visual or conceptual basis. Moreover, the Court’s assessment of the Court of First Instance on both levels has so clear and justified that the Court of the European Union annulled the decision fifth EUIPO Board of Appeal dated 18 January 2017, while leaving the EUIPO to reconsider.
Author:
Michał Skwarek – a solicitor in the Legal Department. Graduate of the Faculty of Law and Administration of the University of Warsaw