Judgement of the General Court “Beatle”: the Court did not let it be
Last week we became aware of the Judgement of the General Court of 29 March 2012, T-369/10, related to the application for the Community Trademark (CTM) “BEATLE”, for goods in class 12 (electric mobility aids for people with reduced mobility). Given the similarity between the Community Trademark “BEATLE” and those earlier trademark rights held by Apple Corp regarding several “BEATLE” and “THE BEATLES” Community and national trademarks, Apple Corp opposed to the application filed before the OHIM. Despite the fact the “BEATLE” Community trademark was applied for back in January 2004, the decision dates March 29th 2012.
In this case, the General Court found that the OHIM was right in not allowing registration of the CTM “BEATLE” for the following reasons:
- The similarity (at visual, phonetic and conceptual level) between the signs at issue, that is, the applicant´s sign “BEATLE” and those earlier signs property of Apple Corp, “BEATLES” and “THE BEATLES”. Despite the fact that the sign applied for did not contain a final letter “s” and although the earlier marks contained a “the” at the beginning, that was not sufficient for the relevant public to differentiate between both trademarks.
- The strength of the earlier trademarks. Upon the documentation provided, the Eight Chamber considered that the signs “BEATLES/ THE BEATLES” enjoy a tremendous reputation for goods such as “sound records, video records and films”. While it is admitted that such trademarks do not have a reputation for other kind of goods, such as toys, it is still true that they have acquired a distinctive character of their own. Therefore when people are faced with both signs, they will immediately think of the music band “THE BEATLES”. It cannot be argued that such strength still exists nowadays.
- The nature of the goods. Despite the fact the nature of the goods covered by the earlier CTMs and by the sign applied for is not alike (sound records and electric aids for elderly people with reduced mobility are not goods of the same nature, use or purpose), the General Court considered in its ruling (just like OHIM), that by allowing registration of the sign “BEATLE” an overlap of the relevant public takes place, since the public targeted by the CTM applied for is the elderly who, no doubt, knew the band “THE BEATLES”. Therefore, and despite the lack of similarity of the goods in question, there is an undeniable link between the signs in question that will evoke the British band to the public.
In Salvador Ferrandis and Partners we consider the denial of registration of the Community trademark “BEATLE” applied for by You-Q BV for goods in class 12 is according to law. Allowing such a registration would permit the applicant incur in an unfair competition behavior, given the memories the CTM “BEATLE” will evoke on the targeted people. Also, and given the strength of the earlier trademarks “BEATLE/THE BEATLES”, it is also true that the applicant would introduce its trademarks on the market much easier, without any need of incurring in advertising cost, etc.
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