EU court upsets the apple cart in Pink Lady TM dispute
Apple brand licensee Pink Lady America has been knocked back in its trademark dispute with other fruit organisations after the EU General Court annulled a decision that had gone in the company’s favour.
The General Court delivered its decision yesterday, October 15.
In 2013, Pink Lady America—the exclusive licensee of the Pink Lady brand from Brandt’s Fruit Trees in the US and Mexico—applied to register ‘Wild Pink’ as a trademark in classes 29, 30, and 31 for vegetables, fruit flavourings, and fresh fruit.
Apple and Pear Australia, an industry body representing Australia’s apple and pear growers, and Star Fruits Diffusion, a France-based organisation that manages the licences and brands of fruit companies including the Pink Lady brand, opposed the application.
They relied on earlier-registered Benelux, German, UK, French, and EU ‘Pink Lady’ word and figurative marks in the opposition. The marks are registered in class 29 and/or class 31 and/or class 30, covering a range of agricultural products, fruits, seeds, and confectionery.
In 2014, the Opposition Division rejected the opposition, and the Fourth Board of Appeal affirmed the ruling in 2017.
The board noted that a Community plant variety right had been granted for a variety of apples called ‘Cripps Pink’, and the public understands the word element ‘pink’ to be a descriptive term in such circumstances—referring to apples of a particular shade.
Also, ‘Wild Pink’ and ‘Pink Lady’ are visually, phonetically, and conceptually dissimilar, the board said. It explained that ‘Pink Lady’ will be understood as referring to a lady dressed in pink, whereas ‘Wild Pink’ will be perceived as a shade of the colour that is “somewhat wild”.
On appeal, the opponents claimed that the board’s conclusion was “at odds with the facts” since the Community plant variety certificates for apples of the ‘Cripps Pink’ variety do not make any mention of the pink colour. In fact, the certificates indicate that they are red, the opponents said.
The General Court rejected this argument, as it had not been raised before the board.
Another argument that the opponents raised was that the board incorrectly determined the public’s perception of the word ‘pink’ and, as a result, the board wrongly found the ‘Wild Pink’ mark to be dissimilar to the earlier-registered ‘Pink Lady’ marks.
They added that non-English consumers will not understand the marks in the way that the board determined.
A basic understanding of English in the EU “must be regarded as a well-known fact”, the court said, meaning that the general public will have a sufficiently basic knowledge of the language to understand the meaning of the word ‘pink’.
“It is clear that the relevant public throughout the EU has had extensive and repeated exposure to that word,” the court explained.
The court confirmed that ‘pink’ is a descriptive term, as it indicates a specific quality of the goods it covers. However, none of the word elements in dispute (‘pink’, ‘lady’, or ‘wild’) are likely to dominate the public’s recollection of the marks, the court noted.
As both marks contain the word ‘pink’, the board was wrong to find that they are not visually similar, the court determined. It found that there is also a small degree of phonetic and conceptual similarity for the same reason.
Also, the board failed to assess whether the reputation enjoyed by the earlier-registered marks may be sufficient to allow consumers to associate ‘Wild Pink’ with the ‘Pink Lady’ marks, the court said.
The General Court annulled the board’s decision and ordered the EUIPO and Pink Lady America to each pay half of the costs of the opponents.
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