WHAT’S THAT LOGO, IS IT AN APPLE? IS IT AN ORANGE OR IS IT A PEAR? NOPE! IT DOESN’T MATTER ITS ALL THE SAME, RIGHT?
Apple Inc (Apple) is no stranger to making headlines for its innovative state of the art products and software. However, this time around, Apple has made headlines for aggressively opposing a small businesses trade mark application for a…. yep you guessed it, a PEAR logo… sorry! I mean APPLE logo, oh no wait, I mean PEAR logo, oh well what does it matter apples and pears are conceptually similar right! Well, this is what Apple is trying to argue.
Let’s take a closer look at the particular facts of this case. On 26 January 2017, Super Healthy Kids Inc a US-based company made an application for registration of a pear logo for their recipe app called ‘Prepear’.
The application was filed for a black and white ‘fanciful image of a pear’ with no colour claimed as a feature of the mark. The application was filed covering only two classes:
Class 42: Providing temporary use of on-line non-downloadable software, namely, an application for organizing and planning meals, for evaluating the nutritional content of meals, for creating a searchable database of recipes, and for managing the purchase of recipe ingredients; and
Class 45: On-line social networking in the field of cooking, food and nutrition
The application was published on 26 November 2019 and opposed by Apple on 26 December 2019 based on several of its earlier US word marks and the iconic Apple logo trade mark registrations. According to the opposition documents filed Apple are arguing that the opposed application if registered is likely to (1) damage the Apple brand (2) confuse or deceive consumers and (3) cause dilution of the distinctiveness of the Apple brand. Interestingly Apple further argues that Super Healthy Kids Inc’s pear logo “consists of a minimalistic fruit design with a right-angled leaf, which readily calls to mind Apple’s famous Apple Logo and creates a similar commercial impression”.
The opposition is still ongoing and unless the parties can agree to an amicable settlement, it will be left to the US trade mark office to assess the degree of similarity and make a decision on whether the two logos are confusingly similar. In reaching its decision the US trade mark office will need to examine whether the average consumer would consider the mark to be (1) aurally similar i.e. do the marks sound similar (2) visually similar i.e. do the marks look similar and (3) conceptually similar i.e. do the marks carry the same meaning. The US trade mark office will then need to assess whether there is a likelihood of confusion amongst consumers, confusing the source or origin of the services.
In our view when looking at both mark side by side the degree of similarity visually is low, the overall shapes of the marks are visually different, the apple logo features the apple with a bite mark, the pear logo has both a stem and a leaf that is attached to the fruit. Although both marks consist of fruit, conceptually pears and apples are different. The likelihood of confusion amongst the public, in our view, is relatively low. Both companies are distinctly different from one another and this is evidenced by the end products they respectively offer to the public which are dissimilar.
With that said, Apple are familiar with trade mark oppositions that have gone pear shaped. You may recall last year Apple unsuccessfully tried to oppose an EU application by Pear Technologies to register its pear shaped logo () on the basis that the two marks were similar and there existed the likelihood of confusion. Unfortunately, whilst initially successful in the opposition the decision was overturned on appeal. With the General Court of the European Union, citing that the Board of Appeal incorrectly stated that the graphical features of the pear depicted in the mark applied for would recall to the mind of the public the earlier Apple mark when assessing the similarities between the marks. As Apple has relied on a very similar argument in this recent opposition, we are keen to see how the US trade mark office deals with this point.
As we patiently await the outcome of this opposition proceedings, we are strong of the view that this is opposition, is less about a confusingly similar logo with confusingly similar goods and services and more about a large corporation aggressively bullying a smaller business out of ownership of its trade mark.
Whilst you can never be 100% certain whether an application will be opposed or not, we always recommend carrying out preliminary clearances searches, which helps to identify any exiting trade marks that may impede your application. However, if you do find yourself in the midst of a trade mark dispute, our specialist IP lawyers can assist, so do not hesitate to get in touch at the earliest possible stage.
Written by Clara Bakosi, Solicitor