An Apple a Day does not keep the competitors away!

On January 31st 2019 the Court of Justice of the European Union (CJEU) contradicting the precedent decision held that the figurative mark of a pear, filed by a company based in Macau, does not create any intellectual link with the famous mark Apple and – consequently – any confusion among the consumer.

But let's go back.

On July 2014 the Chinese company Pear Technologies Ltd filed figurative mark in the form of a stylized pear in Classes 9, 35 and 42. This includes products such as computers, laptops, digital marketing, software and data management, practically same as Apple.

As consequences, Apple filed an opposition against the said mark registration arguing on its own earlier and notorious Union figurative mark in the form of the bitten apple.

Apple was successful both at the Opposition Division stage and at the Board of Appeal on the basis of their reputation in their well-known logo.

Long story short, both the favorable decisions were based on the fact that the two marks were visually similar to the extent that they contain a large, sleek, rounded object on top of which there is an oblong shape leaning to one side.

In other words, pears are commonly an alternative to apples.

Obviously disagreed with the decision, the Chinese company filed the appeal.

So, we get there.

Despite the above, in the recent decision the Court of Justice of the European Union (CJEU) contradicted these arguments and annulled the prior decision.

Image source: Judgment of European Court T:2019:45

According to the Judges, the contested decision was apparently influenced by the reputation of the Apple's mark. However, the reputation of the earlier mark was not a relevant factor for assessing the similarity of the conflicting marks. Only if there is such similarity the reputation of the earlier mark would become relevant for the assessment of whether there is a connection between the marks at issue.

In brief, apples and pears are not comparable, the CJEU stated.

Moreover, according to the Court, the said marks would definitely be perceived as different fruits, and the shapes of the figurative elements and the fruits depicted would also be altogether different, considering the stylized squares of different size in the pear and the apple a fixed image. Moreover, the pear is not bitted!

This decision is a useful reminder that even a (alleged) simple assessment criterion such as the valuation of the similarity between device mark can be differently appraised and if we speak about fruit... Let's say that it seems “a matter of taste!”

Silvia Capraro

HFG Law&Intellectual Property