Written by Margaret Briffa | March 7, 2019
At last, just when you thought trade mark law was going pear shaped and it was going to become more problematical explaining to a business what sort of trade marks they could register without fear of opposition, the Court of Justice of the European Communities has decided that the two images shown below are different enough to prevent Apple from preventing Pear Technologies registering its pear logo.
While we are confident a SurveyMonkey poll of members of the public would confirm that the Board of Appeals got it right we can and only hazard a guess at Apple’s lawyer bill for all their work in trying to prevent Pear acquiring a registered trade mark.
The legal question to be answered here was ‘Are apples and pears visually and conceptually similar’? No this is not primary school. These are matters of intense legal argument. The court did consider for example that both apples and pears were fruit and came in shades of green. The Board of Appeals had previously found that there was sufficient similarity between the images that the public would recall the Apple logo when looking at the pear shaped trade mark. It wasn’t all to do with the angle of the stalk and the fact images are representative rather than true – but almost. Pear Technologies disputed the decision in its appeal to the Court. The test to be applied is whether the use of their pear trade mark takes unfair advantage of the distinctive character and repute of the Apple trade mark or otherwise that the pear trade mark might be detriment to the distinctive character of the repute of the earlier trade mark. Thankfully after what was a long legal battle the Court decided that no unfair advantage of Apple’s trade mark and Pear Technologies is entitled to a registered mark.
This decision is a triumph for common sense but also an example of what lengths some brands will go to secure the broadest possible monopolies. Businesses are often unaware of this and enthusiastically file for marks which they believe will not conflict with that of any other brand only to be totally taken by surprise when they are opposed. The best example I have from my own practice is a wheelchair manufacturer who plumped on Easyrider only to be opposed by Easy Group. We battled it out. Would the public see an association between Easy’s slick jet hotel and bus operation and our client’s wheelchairs. Maybe not. Most recently we have seen that Monsta Pizza has stood its ground and won an opposition by Monster Energy to prevent it registering its mark for Pizza. The more worrying thing about all this though is that faced with a surprise opposition many businesses simply withdraw their filing. They fear first that they may be in the wrong and secondly that they do not have the resource to fight a big brand who will surely run them out of money. Expert advice on how to overcome these sort of objections can really help a business stand up to trade mark bullies and secure a firm foundation for their business. Over zealous trade mark lawyering by big brands gives our intellectual property system a bad name. We can tackle this by standing up to big brands, securing favourable rulings from the Intellectual Property Office and publishing those results so businesses understand that might is not always right.
Written by Margaret Briffa, Solicitor
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