EU court backs Apple in TM dispute
The EU General Court today annulled an earlier European Union Intellectual Property Office (EUIPO) ruling that had gone against Apple.
In 2012, Taiwan-based projector lamp supplier, Apo International, filed an application at the EUIPO to register a figurative sign showing half an apple and the word ‘apo’ in lower case.
Apo sought to register the mark for goods including projectors, laboratory lamps and advertising.
The following year, 2013, technology company Apple filed a notice of opposition based on three of its earlier marks, including the Apple logo (EU trademark number 9,784,299) and two word marks for ‘Apple’ (6,313,564 and 3,529,013).
However, this opposition was rejected by the EUIPO’s Opposition Division in 2016.
According to the Opposition Division, the degree of similarity between the marks was below average. Although it agreed that the goods and services at issue were identical, the Opposition Division said that there was no likelihood of confusion.
Later in 2016, the EUIPO’s Fourth Board of Appeal dismissed an appeal made by Apple, also claiming that the marks were not similar.
Apple then argued before the General Court that the board did not apply the relevant case law when analysing the similarity between the marks.
According to Apple, the average consumer would “plainly see” the figurative element of the applied-for mark as half of an apple. The technology company accused the board of only focusing on the word ‘apo’ without taking into account the “obvious similarity” between the apple elements of the earlier marks and the applied-for mark.
The EUIPO disputed this argument and claimed that there is no evidence the relevant public would see the figurative element of the applied-for mark as an apple. The EUIPO added that “manners in which the figurative element and the earlier figurative mark are represented are completely different”.
For example, the EUIPO said the figurative element didn’t necessarily depict an apple but could be another fruit such as an orange, or that it could even be perceived as the letter ‘c’.
In addition, the EUIPO said that the word element ‘apo’ in the applied-for mark would be the first element that the public notices.
The General Court dismissed the EUIPO’s argument that the figurative element of the applied-for mark could be seen as the letter ‘c’ rather than half an apple.
Whereas the board said that the figurative element of the mark could be seen as an orange, the General Court upheld Apple’s argument that oranges are rounded and are not the same shape as the applied-for mark.
Due to its shape, the General Court said, the figurative element of the applied-for mark would be seen by the relevant public as a stylised representation of part of an apple.
In addition, the General Court said that the ‘apo’ element of the mark was not dominant. Instead, it said that both elements of the applied-for mark have the same impact on the overall assessment of the image.
The General Court said there was also a phonetic similarity between the two marks at issue.
The board’s 2016 decision was subsequently annulled and the EUIPO was ordered to pay the costs.
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