pear to pear | Decision 2608357

Date Published: Oct 1, 2017

OPPOSITION No B 2 608 357

Apple Inc., 1 Infinite Loop, Cupertino California 95014-2084, United States of America (opponent), represented by Locke Lord LLP, 201 Bishopsgate, London EC2M 3AB, United Kingdom (professional representative)

a g a i n s t

Gergely Kovácsházy, Budapest, Zúzmara köz 9, 1037, Hungary (applicant).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 608 357 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 900 791 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 900 791. The opposition is based on, inter alia, European Union trade mark registration No 9 784 299. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR in relation to this earlier right. In addition, the opponent invoked Article 8(1)(b) in conjunction with Article 8(2)(c) EUTMR, and Article 8(4) EUTMR in relation to other earlier rights.

The opposition is based on more than one earlier right and ground. The Opposition Division finds it appropriate to begin the examination of the opponent’s claims in relation to European Union trade mark registration No 9 784 299 based on Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

With reference to Article 8(5) EUTMR, the opponent invoked, inter alia, earlier European Union trade mark registration No 9 784 299 for the figurative sign  claiming repute in the European Union in relation to part of the goods and services covered by the registration.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union as a whole and in each of the Member States.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 01/04/2015. Following the applicant’s request for a limitation of the contested list of goods and services, the opposition is directed at the following goods and services:

Class 9:        Smart meters (in particular meters for parking charges and road tolls).

Class 14:        Time instruments.

Class 38:        Transmission and processing of data collected by smart meters.

Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to the abovementioned filing date of the contested sign. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely for a broad list of goods and services in Classes 9, 14, 16, 28, 35, 37, 38, 41 and 42. However, at this point the Opposition Division finds it appropriate to first examine the opponent’s claims in relation to the goods and services in Classes 9, 35 and 42:

Class 9:        Scientific, photographic, cinematographic, optical, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus tor recording, transmission and/or reproduction of sound or images or other data; magnetic data carriers; recording discs; calculating machines, data processing equipment; apparatus, instruments and materials for transmitting and/or receiving and/or recording sound and/or images; downloadable audio and video recordings featuring music, comedy, drama, action, adventure and/or animation; computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; computer networks; facsimile machines, answering machines, telephone-based information retrieval software and hardware; adapters, adapter cards, connectors and drivers; blank computer storage media; fonts, typefaces, type designs and symbols in the form of recorded data; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; telecommunications equipment, apparatus and instruments; computer and electronic games; computer software and computer hardware apparatus with multimedia and interactive functions; computer gaming machines; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives; central processing units; circuit boards; integrated circuits; magnetic, optical and electronic data storage materials and devices; computer memory devices; blank computer storage media; solid-state data storage devices; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; apparatus for data storage; hard drives; miniature hard disk drive storage units; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes for sale with booklets; sound, video and data recordings; CD-ROMs; digital versatile discs; mouse pads; batteries; rechargeable batteries; chargers; chargers for electronic batteries; headphones; stereo headphones; in-car headphones; stereo speakers; audio speakers; audio speakers for home; monitor speakers; speakers for computers; personal stereo speaker apparatus; radio receivers, amplifiers, sound recording and reproducing apparatus, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, loudspeakers, multiple speaker units, microphones; digital audio and video players with multimedia and interactive functions; accessories, parts, fittings, and testing apparatus for all the aforementioned goods; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; audio, video, and digital mixers; radio transmitters; car audio apparatus; global positing systems; navigation apparatus for vehicles (on board computers); cameras; video cameras; bags and cases adapted or shaped to contain cameras and/or video camera~; telephones; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; portable digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; handheld digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; digital music and/or video players; MP3 and other digital format audio players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices, telephones; handheld and mobile digital electronic devices for the sending and receiving telephone calls, faxes, electronic mail and other digital media; bags and cases adapted or shaped to contain digital music and/or video players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; holders, straps, armbands, lanyards and clips for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; computer software; computer programs; pre-recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer software tor authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; downloadable electronic publications in the nature of books, plays, pamphlets, brochures, newsletters, journals, magazines, and periodicals on a wide range of topics of general interest; computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; sound effect apparatus and instruments (computer software); electronic tone generators (computer software); computer desktop utility software; screen saver software; software for detecting, eradicating and preventing computer viruses; software for data encryption; software for analysing and recovering data; software for computer system backup, data processing, data storage, file management and database management; software for telecommunication and communication via local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks; software for creating and delivering electronic greeting cards, messages and electronic mail; software for web design, creation, publishing and hosting; software for access to communications network~ including the Internet instructional material relating to the foregoing; computer disk holders; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all or the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods, made of leather, imitations of leather, cloth, or textile materials.

Class 35:        Advertising; business management; business administration; office functions; providing office functions; business consulting services; advertising agency services; advertising and marketing services; promotion services; advertising and marketing consultation; sales promotion services; promoting the goods and services of others; conducting marketing research; market surveys; analysis of advertising response and market research; creation, preparation, production, and dissemination of advertisements and advertising material for others; media planning services; administration of consumer loyalty programs; arranging and conducting incentive rewards programs to promote the sale of goods and services; arranging and conducting incentive rewards programs to promote the sale of goods and services; arranging and conducting of commercial, trade and business conferences, shows, and exhibitions; creating indexes of online information, sites and other resources available on global computer networks for others; providing an online searchable database of text, data, image, audio, video, and multimedia content in the field of entertainment featuring music, video, film, books, periodicals, television, games, and sports; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of computer hardware, computer software, consumer electronics, telecommunications and multimedia goods, mobile phones, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products; providing business and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; business services, namely, dissemination of advertising for others via computer networks and global communication networks; compilations of directories for publishing on the Internet and other electronic, computer and communications networks; computerised database and file management; data processing services; retail store featuring computer, electronic and entertainment products; retail store and online store services featuring computer, electronic and entertainment products provided via the Internet and other computer, electronic and communications networks; retail store and online store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto; retail store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto, provided via the Internet and other computer, electronic and communications networks; retail store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, sporting events, musical works, pre-recorded audio and audiovisual works and related merchandise, and music related electronic products; retail store and online store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, sporting events, musical works, pre-recorded audio and audiovisual works and related merchandise, and music related electronic products, via the Internet and other computer, electronic and communications networks; retail store services featuring telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, accessories, peripherals, and carrying cases for such devices; retail store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, tablet computers, music related electronic products, and other consumer electronics, computer software, and accessories, peripherals, and carrying cases for such products, provided via the Internet and other computer, electronic and communications networks; product demonstrations provided in-store and via communications networks and other electronic and communications networks; the bringing together, for the benefit of others, of a variety of service providers, in the fields of on-line services, online education and entertainment, communications, information technology, and publishing services, allowing third parties to conveniently select the service providers; computerised data storage and retrieval services; computerised data storage and retrieval services for digital text, data, image, audio, video and multimedia content; and video works; data storage of electronic mail; online music and video subscription services; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the Internet and other electronic and communications networks; subscription services, namely, providing downloadable pre-recorded text, data, image, audio, video, and multimedia content in the fields of entertainment featuring music, video, film, books, periodicals, television, games, sports and computer software for a fee or pre-paid subscription, provided via the Internet and other computer, electronic and communications networks; internet services, namely, creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others; searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others; organizing content of information provided over a global computer network and other electronic and communications networks according to user preferences; online music subscription services; creating indexes of information, sites and other resources available on global computer networks for others; information, advisory and consultancy services relating to all the aforesaid.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer hardware and software consulting services; technical support services, namely, troubleshooting computer hardware, computer peripheral, computer software and consumer electronic devices; installation, updating, maintenance and repair of computer software; technical consulting in the field of computers, tablet computers and consumer electronics; computer, tablet computer and consumer electronic diagnostic services; consulting services in the field of selection, implementation and use of computer hardware, computer software and consumer electronic systems for others; computer data recovery; consulting services in the field of selection, implementation and use of computer hardware and computer software for the operation of consumer electronic systems for others in the nature of audio, audiovisual and home and portable entertainment systems and devices; technical consulting in the field or consumer electronics, namely, audio, audiovisual and home and portable entertainment systems and devices; consulting services in the field of selection, implementation and use of computer hardware, computer software and consumer electronic systems for others, namely audio, audiovisual and home and portable entertainment systems and devices; rental of computer hardware and software apparatus and equipment; multimedia and audio-visual software consulting services; computer programming; support and consultation services for developing computer systems, databases and applications; graphic design for the compilation of web pages on the internet; information relating to computer hardware or software provided on-line, from a global computer network or the internet; creating and maintaining web-sites; development of multimedia websites; hosting the web-sites of others; providing search engines for obtaining date via communications networks; application service provider (ASP) Services featuring computer Software; application service provider (ASP) services featuring software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program, audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; providing search engines for obtaining data on a global computer network; operating search engines; computer consulting and support services for scanning information into computer discs, creating indexes of online information, sites and other resources available on global computer networks for others; design of advertisements and advertising material for others; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of computer hardware, computer software, and multimedia goods; providing information, databases, directories, and podcasts in the field of technology; information, advisory and consultancy services relating to all the aforesaid.        

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 13/11/2015, the opponent was given two months, commencing after the end of the cooling-off period, to submit further facts, evidence and arguments for substantiating its claims. Originally, this time limit was due to expire on 18/03/2016. Upon the opponent’s request and pursuant to Rule 71 EUTMIR, the Office granted an extension of this time limit until 18/05/2016.

By letter of 19/03/2016, the applicant disagreed with the extension of the time limit and claimed that the opponent had not indicated any circumstances that would give grounds to an extension. However, on 23/03/2016, the Office informed the applicant that, as a general rule, the first request for an extension that is received in time is considered appropriate and is granted for a period of two months (or less if so requested).

Therefore, the applicant’s arguments in that regard are unfounded. The evidence submitted by the opponent on 18/05/2016 is deemed to be filed within the time limit and will be taken into account.

List of evidence

The opponent submits copious evidence aimed at demonstrating the reputation of the earlier mark on which the opposition is, inter alia, based.

The evidence is structured according to the facts presented in the witness statement, dated 17/05/2016, signed by Thomas R. La Perle, acting as Director in the opponent’s Legal Department. The witness statement and the accompanying exhibits (indexed from TLP-1 to TLP-51) provide information on the following:

The witness statement presents the history of Apple. In particular, it is mentioned that the opponent’s company, incorporated in 1977, designs, manufactures, markets and sells mobile-communication and media devices, personal computers, smartwatches, portable digital-music players, as well as a variety of software, services, accessories, networking solutions, and third-party digital content and applications. In addition, Apple offers and renders a number of services, including computer services, technology services, music and other entertainment services, advertising and/or promotional services, retail services, as well as telecommunication-related services. Examples of Apple products and services include the iPhone, iPad, Mac, iPod, Apple Watch and Apple TV devices, a portfolio of consumer and professional software applications, the iOS, OS X, tvOS, and watchOS operating systems, the iCloud platform, the Apple Music platform, the Apple CarPlay software, Apple Pay service, and a variety of other accessory, service, and support offerings. Apple also promotes, sells, and delivers digital content and applications through Apple Music, the iTunes Store, App Store, Mac App Store, Apple TV App Store and iBooks Store. It is further stated that, over the course of more than 35 years of operation, Apple ‘has earned a fiercely loyal customer base and its goods and services have become some of the most recognized and highly sought after in the world’. ‘The Company’s longstanding commitment to bringing the best user experience to its customers through its innovative goods and services has earned it a reputation as a pioneer and leader in the field of technology.’

The witness statement mentions, inter alia, that the Apple logo, in slight variations including also the earlier mark at issue , has been in continuous and prominent use by the opponent since at least as early as 1977 and it has been displayed on its products and their packaging as well as on-screen when Apple’s software products are used. Information is also provided on the history of the Apple trade marks (including the earlier mark) in Europe (inter alia, that in June 1977 the opponent began shipping products branded with the earlier mark to Europe, Apple opened a manufacturing plant, support and distribution centres and various offices throughout Europe, and by the end of 1986, Apple was selling its goods and services under the Apple logo mark in more than 80 countries worldwide). The witness statement further provides detailed information on the brand value and recognition of the earlier mark, supported by various rankings carried out by independent bodies. It is also claimed that the earlier mark is widely recognised as one of the most popular brands in the European Union.

Exhibits TLP-1-3: Printouts from www.forbes.com featuring an article, dated 21/08/2012, ‘Apple Now Most Valuable Company in History’; printouts from www.telegraph.co.uk containing an article, dated 20/08/2012, ‘Apple worth more than any company in history’, announcing that Apple is the most valuable company in history in terms of market capitalisation; copies of articles illustrating that, in 2015, Apple’s market capitalisation reached USD 750 billion, and an article entitled ‘Mac at 30 timeline: Apple’s every major product’ from www.telegraph.co.uk, dated 24/01/2014, providing a timeline of Apple’s product history from 1976 to 2014.

Exhibit TLP-4: A selection of press articles from PC World, Wired, Forbes and BusinessWeek, dated between 2002 and 2011 and providing detailed information on the extraordinary levels of brand recognition and loyalty acquired by Apple marks thus earning for Apple the title as one of the world’s most innovative companies. The articles refer to, among other things, the ‘focus on innovation and improving tech support’, Apple’s ‘overwhelming presence’, Apple is portrayed as ‘a symbol of counterculture – rebellious, free-thinking and creative’, that ‘Apple is the archetypal emotional brand’; ‘It’s not only intimate with its customers; it is loved’, ‘Apple is about imagination, design and innovation’ and ‘Apple comes across as profoundly humanist’; ‘It’s like having a good friend; somewhere they have created this really humanistic, beyond-business relationship with users and created a cult-like relationship with their brand. It’s a big tribe, everyone is one of them. You’re part of the brand’; ‘Its founding ethos was power to the people though technology and it remains committed to computers in education’; ‘it’s always about people’; ‘Apple’s products are designed around people’.

Exhibit TLP-5: An article, dated 31/01/2005, entitled ‘Readers pick Apple: 2004 Readers’ Choice Awards’, published on the brand consultancy Interbrand’s website www.brandchannel.com. According to the article, readers voted Apple as the brand with the most global impact in 2004; the article features an image of an electronic device bearing the earlier mark at issue.

Exhibit TLP-6: Copies of Interbrand’s rankings from 2009 to 2015; the Apple brand was estimated to be worth more than USD 170 billion in 2015 and it ranked first from 2013 to 2015 globally, whilst in the previous period it was among the top 20 brands covered by the survey.

Exhibit TLP-7: Copies of Millward Brown Optimor ‘BRANDZ™ Top 100 Most Powerful Brands’ annual rankings from 2006 to 2015. The evidence ranks the Apple mark, identified by name and the logo, as the third most valuable brand in the world in 2010, as the most valuable brand in the world in 2011, 2012 and 2013, with an estimated brand value of USD 153,2 billion, USD 182,9 billion and respectively USD 185 billion, as the second most valuable brand in 2014, with an estimated brand value of USD 147,8 billion, and again as the most valuable brand in 2015, with estimated brand value of USD 246,9 billion.

Exhibit TLP-8: Rankings, as published on 05/11/2016 at Forbes online edition, stating that ‘Apple rises to the top again’. The exhibit also contains summaries of ‘World’s Most Powerful Brands’ surveys, conducted by Forbes from 2012 to 2016. Apple, being identified by the name and the earlier mark, ranks first.

Exhibit TLP-9: Rankings according to surveys conducted by Fortune Magazine from 2006 to 2016. From 2013 to 2016, Apple ranked as number one in the category ‘World’s Most Admired Companies’ report, which covered also Europe.

Exhibits TLP-10-11: In 2009, iPhone, Apple and iPod were voted among the top four ‘Cool brands’ in the United Kingdom, and from 2012 to 2014, Apple was the number one on this list; in support the opponent submits the ‘Cool Brands’ rankings for 2009, and from 2012 to 2015/2016. Apple’s range of products is characterised as ‘sleek, stylish design combined with powerful, groundbreaking technology’ that make Apple’s products ‘iconic must-haves around the world’, as shown in the article published in 2012 at www.coolbrands.uk.com.

Exhibits TLP-12-13: Summary of the survey ‘European Passion Study 2010’ conducted by PanelTeam (a Dutch online research agency) covering 10 000 respondents, according to which Apple is ‘the brand Europeans feel most passionate about’. The evidence also contains results of the surveys conducted by Eurobrand (the European independent experts for brand, patent & IP valuation & strategy examining more than 3 000 brand corporations and their brands in 16 industries with comparison of Europe, America and Asia) from 2011 to 2015. The earlier mark ranked as the number one most valuable global brand from 2011 to 2015; it is stated that ‘Apple remains world’s most valuable brand corporation, followed by Coca-Cola and Google’. Importantly, the evidence contains printouts from the ‘Ranking the Brands’ website showing that the Apple logo (expressly included in the evidence) was the second most admired brand in the United Kingdom in 2012.

Exhibit TLP-14: A selection of press articles in English, French and Spanish, dated between 2004 and 2012, reporting on the opening of the London Apple store, the first in Europe, with references to the Apple mark and to Apple products and stating, inter alia, that ‘Apple is the best brand and design studio of the last 50 years’ (no English translation submitted for the articles in French and Spanish).

Exhibits TLP-15-17: Lists and details of trade mark registrations for the Apple logo and other opponent’s marks in the European Union and other countries across the world. Further information is provided on the internal trade mark use policy by third parties.

Exhibit TLP-18: Copies of previous EUIPO decisions and of decisions of several authorities outside the European Union acknowledging the reputation and recognition of, inter alia, the Apple logo.

Exhibits TLP-19-44: Evidence providing detailed information on the use of the Apple logo (the earlier mark) in the European Union, including in relation to Apple’s iPod devices (portable digital musical players), Apple’s iPhone devices (mobile phones combining a widescreen media player with touch control and an internet communication device with email and web browsing features), Apple’s iPad devices (mobile media, telecommunications and computing devices that, among other things, allow users to browse the web, download and listen to music, read and send e-mail, store and share photos, watch high-definition videos, read e-books and play games), Apple’s other hardware products (personal computers, including desktop and portable computers, related devices and peripherals), the Apple Watch (a device that enables users to communicate right from the users’ wrist by sending and receiving messages, answering calls to their iPhone device, etc.), the Apple TV device (equipment allowing the users to play iTunes media content through a television set), Apple software products (proprietary operating system software for the Mac range of personal computers, for the iPhone, iPod Touch, iPad and iPad mini devices, server software and application software for consumer, education and business consumers) and other services – the iTunes store (an online music store that allows customers to find, purchase and download music, available in more than a hundred countries, including the United Kingdom, Ireland, Italy, Austria, Denmark, Germany, Greece, Portugal, Spain, Finland, France, Sweden and the Benelux countries) and the iAd advertising service (a mobile advertising platform for the iPhone and iPad, targeted at brand owners wishing to reach a specific audience and allowing third-party developers to directly embed advertisements into their applications) – as well as Apple’s retail activities online (via the Apple Store online website in operation since November 1997; the ‘flagship’ Apple Store website is located at store.apple.com; similar country-specific Apple Store websites are in operation in over 30 countries, including in Portugal, the Benelux countries, Finland, Denmark, Austria, Sweden, Germany, Ireland, Spain, Italy, France, Hungary, Poland, the Czech Republic and the United Kingdom) and in physical stores (currently there are over 470 Apple Store retail locations worldwide, including 39 in the United Kingdom, 19 in France, 16 in Italy, 14 in Germany, 11 in Spain, three in Sweden and the Netherlands each and one in Belgium).

Essentially, the evidence contains a selection of printouts from the opponent’s websites and press releases and articles providing information on the opponent and its products and services. In particular, the evidence contains press coverage on the launch of the Apple’s mobile advertising platform called iAd in 2010; the platform-based services bear a logotype which is derived from the Apple logo: . Further, the evidence contains a selection of printouts illustrating the use of the Apple logo on Apple products and packaging thereof and in connection with Apple services; press releases in relation to the launch of the opponent’s goods and services throughout the European Union and providing information on the impressive sales made thereof; printouts from Apple press info in relation to Apple products; printouts from various online articles announcing, among other things, the impressive volumes of Apple products sales. The images of the opponent’s products show that they bear the clearly visible Apple logo (the earlier mark) in a prominent position.

Under Exhibit TLP-21, the opponent submits Form 10-K Annual Reports from 2002 to 2015, as filed with the US Securities and Exchange Commission, from which it appears that the opponent’s annual sales figures in Europe, in 2015, exceeded USD 50 billion and that they exceeded 20% of Apple’s total sales (the sales figures are broken down per product). In addition, the evidence contains a selection of printouts downloaded from the archived versions of Apple’s country-specific Apple Store websites, dated from 2009 to 2014, showing the Apple logo displayed on these websites in connection with Apple’s products and services.

Exhibit TLP-45: Printouts from www.alexa.com (an independent web trafficking rankings undertaking) featuring a statistic summary of website traffic per region, showing that, in 2012, in the list of the most visited websites the Apple.com website was at rank 20 in Denmark, at rank 23 in Belgium and the United Kingdom, at rank 25 in the Netherlands, at rank 27 in Italy, at rank 28 in Spain, at rank 32 in Germany and at rank 33 in Austria etc.

Exhibit TLP-46: A selection of materials in relation to the Apple Store retail locations, in particular: press articles discussing various store openings throughout Europe (including in London, Rome, Paris, Hamburg, Milan etc.); details of various European locations of Apple Stores (Barcelona and Madrid in Spain, Paris and Nice in France, Munich, Frankfurt, Hamburg and Oberhausen in Germany, Rome, Torino and Milan in Italy and London in the United Kingdom) reported in various articles and websites (for example BBC News in 2004, kyero.com in 2010, www.thinkspain.com in 2010, MacRumors.com in 2010, The Telegraph in 2008, etc.) featuring also the earlier mark; lists of the current European locations of the Apple Store retail outlets; a collection of images illustrating use of the Apple logo on Apple Store facades.

Exhibits TLP-47-50: Evidence in support of the statements in relation to Apple’s advertising and brand-building initiatives. The witness statement provides detailed information on the extensive marketing and advertising initiatives (print and outdoor advertising, television advertising, conferences and exhibitions) used by the opponent ‘with a view to developing a high level of brand awareness and consumers loyalty’. In particular it is mentioned that, in the European Union, Apple has chosen to print advertisements in a large number of popular magazines with diverse content (for example GQ, T3, Stuff, Harpers & Queen, InStyle, Marie Claire, Elle Deco, Q, PC Advisor, National Geographic in the United Kingdom, l’Express, Le Nouvel Observateur, Le Monde 2, 01 Informatique, Cine Live in France, and Focus, Spiegel, Sueddeutsche Zeitung Magazin, PC Welt in Germany), in leading national newspapers and their weekend supplements which are widely circulated throughout the European Union (for instance, The Times, The Guardian, Le Monde, Les Echos etc). The opponent explains that Apple engages strongly in outdoor advertising to promote its products and submits a selection of pictures showing such billboards, on which the Apple logo (the earlier mark) is displayed prominently. The opponent states that Apple’s products and services have been promoted on cable and network television, including on European networks (for instance Channel 4, Channel Five, UK Gold, Bravo, MTV, Paramount, Sci Fi, Sky channels in the United Kingdom; FTV and Canal+ in France, ARD, Pro7, SAT.1, RTL and Kabel 1 in Germany). The opponent submits a CD-ROM containing examples of television commercials, promoting various iPod, iPhone and iPad devices bearing the trade mark at issue. Information is also provided on the conferences and other promotional events used by Apple to promote its goods and services. The photographs submitted to that effect show that the Apple logo is prominently displayed on Apple’s goods and marketing stands presented at such events (for instance the MacExpo events held in the United Kingdom, Germany and France).

Exhibit TLP-51: The witness statement specifies Apple’s annual advertising expenditures for promoting its products and the Apple trade marks, including the earlier mark, worldwide from the fiscal year 1994 to 2015 (the amounts range between several hundreds of millions of USD and significantly over one billion USD). The evidence in support of these statements consists of copies of the relevant pages from Apple Inc. Form 10-K Annual Reports from 1994 to 2015 as filed with the United States Securities and Exchange Commission. Additionally, the evidence includes charts providing information on Apple’s annual net sales in Europe (the opponent explains that ‘Europe includes the European Union, Africa and the Middle East’).

Assessment of the evidence

Part of the evidence submitted shows the Apple logo (the earlier mark) as one of the world’s most powerful and valuable brands, whilst these references and exhibits do not directly refer to the European Union which is the only territory of relevance to the present assessment. Also the evidence in relation to sales and advertising expenditure presents data in a highly aggregated manner, as the data covering ‘Europe’ actually refers to ‘all European countries, Africa and the Middle East’. However, when assessing reputation, the Opposition Division must consider the evidence in its entirety and not follow a piecemeal approach. Even though it is true that some pieces of evidence, for example the Forms 10-K in which the turnovers and the advertising expenditure are presented, show the relevant data in figures that are not broken down by country, the Opposition Division notes that the rest of the evidence, for example the press articles dedicated to the opening of Apple Stores in European cities (Exhibit TLP-46), and the market studies conducted by European researchers, put in conjunction with the fact that the Apple logo has been many times voted as the world’s and Europe’s leading brand, establishes clearly that the trade mark at issue has been put to intensive and long-standing use in the European Union countries. It is not because of success in some distant place that a trade mark becomes the ‘most admired’ brand, or one of the ‘coolest brands’ in the United Kingdom. Such degree of recognition and sentiment on the part of the public can only be achieved through being in direct contact with the goods, use of the services and intensive exposure to the brand. It is noteworthy that, in several independent sources, the Apple logo is characterised as ‘ubiquitous’. That clearly applies to the relevant territory.

An evaluation of the notable amount of evidence submitted by the opponent leaves no doubt that the trade mark at issue is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. Used by the opponent for decades, the Apple logo is featured prominently on its iPod, iPad and iPhone devices and in connection with hardware and software products as well as with other services (Exhibits TLP 19-44). The brand studies (Exhibits TLP 12-13), the sales figures, the marketing expenditure and the international rankings which place the trade mark among the most valuable global brands (Exhibits TLP 6-9), the impressive and constantly increasing number of customers, the various references in the press to its success (Exhibits TLP 1-5), all unequivocally show that the earlier mark enjoys a high degree of reputation among the relevant public in connection with the following goods and services:

Class 9:        Computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; computer software and computer hardware apparatus with multimedia and interactive functions; digital audio and video players with multimedia and interactive functions; mobile telephones; digital music and/or video players; MP3 and other digital format audio players; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, […], electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; computer software; computer programs; mobile telephone software; computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server.

Class 35:        Online store services in the field of entertainment featuring music, video, […] musical works, pre-recorded audio and audiovisual works […] and music related electronic products, via the Internet and other computer, electronic and communications networks; the bringing together, for the benefit of others, of a variety of service providers, in the field of on-line entertainment, allowing third parties to conveniently select the service providers.

 

Class 42:        Application service provider (ASP) services featuring computer software; application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs.

However, the evidence does not succeed in establishing that the earlier mark has a reputation for all of the goods and services for which reputation is, inter alia, claimed. The evidence mainly relates to the above mentioned goods and services in Classes 9, 35 and 42, whereas there is little or no reference to the remaining goods and services.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Accordingly, the assessment of similarity should be made according to the same criteria that apply in the context of Article 8(1)(b) EUTMR, thus taking into account elements of visual, aural or conceptual similarity (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 28, relating to the interpretation of Article 5(2) TMD; 24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 52).

The earlier mark is a purely figurative sign consisting of the stylised representation of an apple depicted in black, with a bite on its right-hand side and a detached leaf, leaning to the right, on top of it. The earlier mark conveys the concept that it evidently represents. The applicant argues that an apple has significant cultural references and refers to ‘Newton’s apple’, ‘the forbidden fruit (apple) in the Garden of Eden’, ‘Wilhelm Tell’ and ‘Snow White’. In that regard the Opposition Division notes that such secondary associations might occur, but only after the primary perception takes place – the earlier mark will be associated with an apple, being the firm, rounded edible fruit of a rosaceous tree, having red, yellow, or green skin and crisp whitish flesh.

The contested sign is a composite sign depicted in blue. It comprises a large, stylised image of a pear with a bite on its right. On top of the pear, there is a stylised leaf that partly overlaps with the pear’s body and leans to the right. The device will be associated with the edible, sweet, gritty-textured juicy fruit of a rosaceous tree; it has a globular base and tapers towards the apex (all references extracted from www.collinsdictionary.com).

In the context of the relevant goods and services, both the concept of the apple and the pear are fanciful and enjoy an average degree of inherent distinctiveness.

The contested sign further contains the words ‘pear to pear’, depicted in small, standard letters directly beneath the pear device. A part of the English-speaking public may perceive the expression ‘pear to pear’ as a play on the words ‘peer to peer’. According to the applicant, ‘peer to peer’ is a worldwide recognised data transfer method without middle computers, and it refers to the basic principle of operation of the applicant’s invention that makes it able to build up a radio network on freely available frequencies thus providing the metering service free from GSM charges. Furthermore, the applicant claims that the depiction of the pear has humanised traits (the pear can be seen as a head, the recess on the right is the mouth and the leaf represents the hair). Thus, according to the applicant, the concept of the talking pear symbolises the ‘peer to peer’ principle, evoked by the wordplay ‘pear to pear’.

The Opposition Division finds, however, that the general public cannot be expected to be familiar with the ‘peer to peer’ principle. Moreover, what the contested sign comprises is a wordplay and not the expression itself, thus requiring a mental leap to understand it. Therefore, a substantial part of the English-speaking public will perceive the words ‘pear to pear’ with their literal meanings which reinforce the concept conveyed by the depiction of the pear. To that extent, the degree of distinctiveness of the contested sign’s verbal element is average. For another part of the public who will appreciate the wordplay, the contested sign’s figurative element will still be unmistakeably perceived as a pear, and the expression ‘pear to pear’ will be weak as it evokes a concept which is descriptive of objective characteristics of the goods and services at issue, as the applicant himself points out. For the rest of the public who does not understand the English words, the verbal element is fanciful.

By virtue of its size and position, the image of the pear clearly is the dominant element of the contested sign, leaving the verbal element, ‘pear to pear’, with a secondary role. On the other hand, the earlier mark has no identifiable components.

Visually, the signs are similar to the extent that they contain a large, sleek, rounded object, with a recess on the right (the bite) and an oblong shape on top (the leaf). The abstract stylisations of the silhouettes are similar. Admittedly, the depictions of the leaves are somewhat different, as described above. However, in both signs the leaves are angled in the same direction. The signs differ in the specific shapes of the figurative elements (the sides and the bottoms of the shapes), the fact that the contested sign is depicted in blue whereas the earlier mark is a black image, and the verbal element ‘pear to pear’ which has no counterpart in the earlier mark. The verbal element has a diminished relevance in the overall impression given by the contested sign, irrespective of whether the public perceives it as distinctive or weak.

The differences in the depictions of the apple and the pear are confined to features that are specific to each type of fruit. They will not go unnoticed by the average consumer who will be able to tell apart the apple device from the pear device. Nevertheless, the visual similarities between those shapes — especially those that are arbitrary and not a mere naturalistic depiction of the respective type of fruit — are immediately perceptible.

It is, therefore, considered that there is at least a low degree of visual similarity between the signs.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, a certain link between the signs cannot be denied. It is true that apples and pears are two distinguishable fruits. Nevertheless, they are both types of fruit which are closely related in a biological sense (such as the origin, size, colours, texture) and they are associated together in many ways throughout the relevant territory and in fact, they are common alternatives to each other (decision of 18/01/2017, R 860/2016-5 - ‘PEAR’ (fig.) / ‘APPLE BITE’ (fig.) et al.; § 32; decision of 18/01/2017, R 1042/2016-5 - ‘Pear Technologies’ (fig.) / ‘Device of an apple’ (fig.) et al., § 35).

The semantic content of the contested sign which is conveyed by the image of the pear, and for a part of the public is further reinforced by the words ‘pear to pear’, is similar to a low degree to the concept presented in the earlier mark.

The signs under comparison are similar to the extent that the figurative element of the pear in the contested sign has graphical features which are similar to those of the earlier mark, and that it will be associated with a concept, a pear, which is related to the concept of an apple.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 44).

Furthermore, it must be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

The applicant goes at great lengths in arguing that the signs at issue are dissimilar, that there is no link between them and refers to case-law aimed at supporting its arguments. The Opposition Division does not consider them well-founded for the reasons given in section b) of this decision and also herein below.  

The signs are visually similar insofar as the figurative element representing the pear in the contested sign has graphical features which are similar to those of the earlier mark, essentially in terms of the abstract stylisations and the sleek, rounded silhouettes of the fruits represented in each sign, with the recess on the right (the bite) and the angled oblong shapes on top of the main objects (the leaves).

Admittedly, the signs contain some graphical elements which will not pass unnoticed by the average consumer. Furthermore, the contested sign comprises a verbal element, ‘pear to pear’, which conveys some semantic content for a part of the public. However, that must be assessed against the background that the word ‘pear’, where understood in its literal meaning, merely reinforces the same concept as the one attributed to the sign’s figurative element thus creating a single semantic unit. Moreover, the overall composition of the contested sign and the relative role of its individual components have to be taken into account. It has to be emphasised that the image of the pear is the dominant element, whereas the verbal element, ‘pear to pear’, has a diminished relevance in the overall impression of the contested sign.

There is no aural similarity between the signs. However, the pear device in the contested sign reproduces some of the striking graphical features of the apple of the earlier mark. Foremost, the public will mentally register the bite on the right of the main object. That, coupled with the other similarities, will immediately recall in the minds of the relevant consumers the earlier reputed trade mark.

On a conceptual level, notwithstanding the fact that apples and pears are undoubtedly two distinguishable types of fruit, there is a relatedness between them. Furthermore, pears are a common alternative to apples. This marketing strategy translates to the present trade mark dispute. That is to say, one who wants to try something new, or where the initial option does not suit them otherwise (for instance in terms of objective or subjective characteristics such as price or brand image), can switch from one option to another.

The applicant argues that the relevant public for the product under the contested sign is not the general public, because the applicant’s goods and services will be sold to municipalities and other road operators as they own the parking spots and roads. In that regard, it has to be borne in mind that the professional public, be it composed of town administrations, municipalities or pay road operating companies, always constitutes a part of the general public. The target public of the applicant’s goods and services can be equally exposed to the earlier mark, taking into account the fact that the opponent’s goods and services are not exclusively directed at households but are addressed at, and purchased by, business customers too. The opponent’s evidence referring to specialised products and solutions for businesses supports that finding.  

It follows that the relevant public for the present assessment consists of the general public and business customers. Since the goods and services in conflict relate to time instruments, information technologies and sophisticated electronic devices the degree of attention of the public is expected to be heightened, given that these goods and services might have particular economic importance for the consumers buying them and that they seek specific technologically advanced goods and services. In that regard, it must be noted that, according to settled case-law, professionals are likely to have specific knowledge of the services covered by the marks at issue and/or to display, in that regard, a higher level of attentiveness than the public at large (15/01/2013, T-451/11, Gigabyte, EU:T:2013:13, § 38 and the case-law cited).

As regards the distinctiveness of the earlier mark, the Apple logo is inherently distinctive for the goods and services for which a reputation has been found. The concept of an apple, being an edible fruit, is entirely arbitrary and striking in the context of the goods and services at issue. The applicant argues that there are 7 500 apple-related trade marks listed by TMView and refers to 29 registered apple logos not linked to the opponent, claiming that the device of an apple is a cliché and, therefore, has diminished distinctiveness. In that regard, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used, although the territories in which these trade marks are registered are not clearly indicated. It follows that the applicant’s assertions do not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to trade marks that are not related to the opponent and that include a depiction of an apple in the relevant market sector. Therefore, the applicant’s argument must be set aside.

In addition, the Opposition Division points out that the earlier mark has been found to enjoy an enormous repute in the European Union. The stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

Another factor to consider when assessing whether there is a ‘link’ between the signs are the relevant goods and services.

The opposition is directed against the following goods and services:

Class 9:        Smart meters (in particular meters for parking charges and road tolls).

Class 14:        Time instruments.

Class 38:        Transmission and processing of data collected by smart meters.

The applicant argues that, since the contested goods and services are not dissimilar to the opponent’s goods or services, the provisions of Article 8(5) EUTMR are not applicable. In that regard, it is pointed out that, according to the clear wording of the current version of Article 8(5) EUTMR the protection provided in this norm is ‘irrespective of whether the goods or services for which the later mark is applied are identical with, similar to, or not similar to those for which the earlier trade mark is registered’. In addition, it is the goods and services for which the evidence submitted by the opponent demonstrates reputation that have to be taken into account for the purposes of the present assessment, but not the entire list of goods and services on which the opposition is based.

The nature of the contested goods in Class 9, according to the applicant, is ‘a remote readable device metering a consumption’. The contested services in Class 38 are closely connected to such smart meters. Admittedly, these goods and services are rather specialised ones. However, the Opposition Division considers that the gap between smart meters, data transmission/processing related thereto and the opponent’s reputed goods and services is not so large as to preclude from a finding of a ‘link’ between them.

Meters in Class 9, irrespective of their field of application, serve a specific purpose, namely measuring and recording a given indicator, such as consumption. It provides data for the calculations of how much the user has to pay. Smart meters are electronic devices that communicate the recorded data back to a central system for monitoring and billing. In Class 38, the contested services enable the exploitation of the smart meters. Some of the opponent’s goods and services for which reputation has been proven have a similar nature. For instance, iPhone and Apple Watch, encompassed by the wording computer hardware apparatus with multimedia and interactive functions in the opponent’s list of goods in Class 9, can be used for capturing, recording, processing and transmission of data originating from different sources ranging from personal agenda, fitness tracking, measuring distance, calculating nutritional information, etc. It follows that the public is accustomed to the earlier mark used in the context of data capture, measuring, processing and transmission. Moreover, the evidence shows that the earlier mark is used for a growing product portfolio with numerous fields of application, thus it can be reasonably assumed that smart meters (in particular meters for parking charges and road tolls) and transmission and processing of data collected by smart meters will be seen by the public as yet another practical, resourceful and innovative application of information technology and telecommunications equipment.

Turning to the contested goods in Class 14, time instruments are a broad category encompassing wristwatches. The earlier mark is reputed for smartwatches (the Apple Watch). A smartwatch is a wearable communications device in the form of a wristwatch. Thus the link with at least a specific type of time instruments is quite obvious, as nowadays smartwatches are replacing, to some extent, the traditional wristwatches, because they look like stylish traditional watches and the public is learning to appreciate their technological features, especially for enhancing the use of smartphones etc. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, the foregoing considerations apply to the contested broad category as a whole.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested sign, the relevant public will in all likelihood associate it with the earlier mark in that the earlier mark represents the striking, inherently distinctive and highly reputed Apple logo whilst the contested sign features a pear device which not only is yet another type of fruit, but also imitates the earlier mark by reproducing its characteristic graphic features, conjuring related semantic content and suggesting an alternative choice for the consumer. Admittedly, there are some mental steps involved in the perception of the public. However, the Opposition Division considers that precisely because of the uniqueness and enormous reputation of the earlier mark, the contested sign’s allusive, somewhat mocking image of the pear will trigger and establish a mental ‘link’ with the earlier mark.

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent essentially claims the following:

• The earlier mark enjoys an outstanding reputation (as demonstrated by the evidence submitted), the degree of similarity between the signs is sufficient to create a link between the marks in the minds of the relevant public, the goods and services are identical or closely similar and by choosing a stylised pear design as the visually dominant element of the contested sign, the applicant will benefit from the attraction and repute of the opponent’s mark.

• The use of the contested sign could cause significant detriment to the distinctiveness of the Apple logo. This harm would occur even where the use of the contested sign serves to diminish the distinctive character of certain individual elements of the Apple logo. A perception by the public that the contested sign is connected or associated with the opponent, even as an allusion which falls short of a suggestion of commercial affiliation, would consequently damage the capacity of the Apple logo to immediately distinguish goods and services originating from the opponent.

• The opponent has invested considerable time and expense in creating and maintaining its reputation as a famous brand that enjoys worldwide acclaim. Furthermore, the opponent’s ground-breaking and market leading products bearing the Apple logo hold a strong reputation as some of the most desirable high quality products that are highly functional, user-friendly and extremely well designed. However, in finding that goods and services provided under the contested sign originate not from the opponent, but from the applicant, consumers are likely to be deceived as to the quality of those goods and services, as they are unlikely to be of the same standard as the opponent’s products. Therefore, the use of the contested sign with potentially inferior goods and services will tarnish and blur the positive image of the opponent and its Apple logo.

• By seeking to establish some false connection with, or endorsement by, the opponent, where no such connection or endorsement in fact exists, the contested sign would damage the opponent’s reputation among the public as one of the greatest and innovative companies of the last century.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

• The applicant’s use of the contested sign would take advantage of the substantial reputation of the Apple logo. Consumers who draw a connection between the contested sign and the earlier mark will be predisposed to assume that the contested goods and services bear similar attributes including in terms of innovation, quality, functionality and design. Consumers will notice and recall more easily a sign which has become distinctive due to its use as a world famous trade mark.

• The adoption and use of the pear device within the contested sign will simply reinforce, rather than diminish, the connection with the opponent and its aspirational, ‘lifestyle’ brand.

• For these reasons, the applicant will gain a commercial advantage over its competitors in the marketplace by trading upon the image and reputation of the opponent’s respected Apple logo and the positive characteristics which it projects. However, that advantage would not be derived from the applicant’s own marketing efforts, investment, skill, and innovation. Rather, it would be derived from its use of a mark similar to the opponent’s.

• Use of the contested sign derives an unfair and unjustifiable benefit from the valuable reputation earned and enjoyed by the opponent as a result of its efforts in successfully marketing and developing the Apple logo to portray its world-famous brand which is recognised and admired by millions of consumers throughout the European Union.

In its observations, the applicant argues that the opponent did not put forward any evidence of, inter alia, unfair advantage. Furthermore, the applicant claims that its product and business approach is entirely different from that of the opponent. The applicant states that the opponent lacks knowledge of the applicant’s goods and services, thus concluding that the opponent can only draw a hypothetical conclusion about the alleged detriment.

In opposition proceedings detriment or unfair advantage may be only potential, as confirmed by the conditional wording of Article 8(5) EUTMR, which requires that the use of the applied-for mark without due cause ‘would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark’ (emphasis added).

In the subject proceedings, contrary to what the applicant argues, the opponent did put forward some arguments showing, in particular, how the use of the contested sign would take unfair advantage of the earlier reputed mark. Taking into account the opponent’s submissions in their entirety, it can be deduced that the opponent claims that a transfer of the positive images associated with the earlier mark will occur which would result in a free-riding on the coat-tails of the opponent’s highly reputed Apple logo. That is supported by a cogent line of argument in relation to the connected or comparable goods and services for which the conflicting marks will be used and references to the substantial investments that the opponent has made for building its world-famous ‘lifestyle’ brand.

Therefore, the Opposition Division concludes that the opponent has shown, in a satisfactory manner, that the risk of unfair advantage is serious and not merely hypothetical, and the applicant’s arguments in that regard are dismissed.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

In the context of the relevant goods and services, all of which imply technological sophistication and innovation, the Opposition Division agrees with the opponent that the relevant public would treat the contested sign as being allusive to the opponent’s Apple logo which enjoys exceptional fame and recognition. Iconic landmark in the field of consumer electronics and related computer software and IT services for the public at large and businesses, the opponent’s Apple logo is instantly recognised by consumers everywhere as a defining signature of the opponent’s company, ‘a pioneer and leader in the field of technology’. As shown by the evidence, ‘few brands have enabled so many people to do so much so easily, which is why Apple has legions of adoring fans […]. For revolutionizing the way we work, play and communicate – and for mastering the ability to surprise and delight – Apple has set a high bar for aesthetics, simplicity and ease of use that all other tech brands are now expected to match and that Apple itself is expected to continually exceed’. With a market presence of more than 35 years and ranked several times as the number one most valuable global brand, the famous Apple logo conveys an image of innovation, creativity, imagination, design, user-friendliness and functionality that will be immediately transferred to the contested goods and services in Classes 9, 14 and 38.

The ‘good’ and ‘special’ reputation of the earlier mark, in that it conveys a positive message or brand images as set out above, could positively influence the choice of consumers as regard the goods and services of other providers.

Clearly, a pear is not an apple. However, the pear logo connotes to the reputed Apple logo. It is as if the message conveyed by the contested sign imitates and at the same time mocks and defies the reputed earlier mark. Obviously, the contested logo is not the Apple logo, nor do the contested goods and services originate from Apple Inc. They are not directly interchangeable either. However, if not from a strictly technical point of view then at least in the perception of the public the opponent’s smartwatches (computer hardware apparatus with multimedia and interactive functions in Class 9) present a comparable alternative to the contested time instruments in Class 14, also in the sense that these devices would not be worn/used simultaneously. The contested smart meters (in particular meters for parking charges and road tolls) in Class 9 and transmission and processing of data collected by smart meters in Class 38 are offered in a market sector that is adjacent to consumer electronics and related computer software and IT services for the public at large and businesses in which the opponent has gained repute with its Apple logo. Because of the link that exists between the contested goods and services and the earlier reputed ones, the public may believe that the goods and services offered under the pear logo have analogous design, compatible functionalities, etc. In other words, a pear is as good as an apple.

As suggested in the evidence submitted by the opponent, the Apple-branded products have ‘legions of adoring fans’; over the course of more than 35 years of operation, Apple ‘has earned a fiercely loyal customer base and its goods and services have become some of the most recognized and highly sought after in the world’. Such strong, fanatic sentiment for a brand can cause antagonism on the part of some consumers who wish to express their alternative views and life-style ideas by standing out from the mainstream. This is where the contested sign can appeal to the public.  

Use of the contested sign in relation to technologically advanced electronic devices, time instruments and data transmission/processing services which are connected or comparable to those marketed under the reputed Apple logo can lead to a situation where consumers prefer the applicant’s goods and services to those of other competitors in the market precisely because the pear logo imitates and simultaneously challenges the Apple logo. Thus, the special brand image, attractive powers and advertising value of the opponent’s earlier mark can be misappropriated. That may stimulate the sales of the applicant’s goods and services to an extent which may be disproportionately high in comparison with the size of its own promotional investment and thus lead to the unacceptable situation where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up the value of its mark.

On the basis of the above, the Opposition Division concludes that, in view of the substantial exposure of the public to the opponent’s earlier reputed mark, in relation to the goods and services for which a reputation has been found and taking into account the somewhat low, yet existing similarity between the signs, there exists a probability that the use without due cause of the contested sign in respect of the contested goods and services in Classes 9, 14 and 38 may acquire some unearned benefit and lead to free-riding, that is to say, it would take unfair advantage of the distinctive character and the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

As regards the remaining goods and services for which the opponent claimed reputation but for which this claim was not examined for reasons of procedural economy, the Opposition Division notes that it is unnecessary to proceed to a further assessment, given that the opposition is entirely successful on the basis of the reputation for the goods and services in Classes 9, 35 and 42.

5. Due Cause

As mentioned above, the applicant claims to have due cause for using the contested trade mark.

The applicant invokes Article 12(b) EUTMR pursuant to which a European Union trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, indications concerning the, inter alia, intended purpose or other characteristics of the goods or services.

According to the applicant, the pear concept comes from the ‘peer to peer’ expression, describing the basic technical solution behind the applicant’s invention. That ‘multihop’ data transfer makes the applicant’s customers (municipalities) able to provide metering service on free radio bands without extra fees. The applicant alleges that the extra curve in the pear shape imitates a ‘talking mouth’ referring to the principle of operation that the applicant wishes to convey by the logo (the smart meters create a network by ‘talking’ to each other forwarding others’ data) without being descriptive. The applicant claims that he intends to use the pear logo as a series:

 and .

The applicant claims that the ‘pear to pear’ wordplay, illustrated by the ‘talking pears’, indicates an inherent characteristic of the applicant’s product. Peer-to-peer data flow is a well-recognized expression in the technology business and explains why the applicant’s invention is viable for collecting parking fees and road toll.

In reply, the opponent argues, inter alia, that the applicant’s arguments in relation to his product or invention are not relevant to these proceedings, as the goods/services to be considered are those covered by the application vis-à-vis the goods/services under the opponent’s earlier mark. The opponent notes that the applicant’s arguments that he has due cause to adopt the contested sign are not well-founded, since it is evident that the pear device is blatantly similar to the Apple logo.

The Opposition Division agrees with the opponent that the applicant’s claim is not well founded. The condition of due cause is not fulfilled merely by the fact that the sign is particularly suitable for identifying the products for which it is, or will be, used. Although it is accepted that the verbal element of the contested sign, ‘pear to pear’, may be perceived by a part of the public as a wordplay alluding to objective characteristics of the applicant’s goods and services, this verbal element has a secondary role in the contested sign, whilst its dominant component is the pear device. Moreover, the striking imitation of the characteristic graphical features of the Apple logo is likely to bring into the mind of the relevant public the earlier reputed mark, thus overriding any other semantic, albeit possibly descriptive, connotations that may be conveyed by the contested sign’s verbal element. When confronted with the contested sign in the form in which it is applied for registration, the public will, without any further reflection, make a link with the opponent’s logo. For the purposes of the assessment of the risk of injury, the applicant’s claims in relation to the intended use of a series of talking pears has no material bearing. Therefore, the applicant’s allegations do not amount to demonstrating a valid reason justifying use of the contested sign.

On the basis of the above, the Opposition Division considers that the applicant does not have due cause for using the contested trade mark.

6. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition is based.

For the sake of completeness, the Opposition Division notes that, on 26/09/2016, the opponent submitted an application to register a declaration of goods and services under Article 28(8) EUTMR by means of which the opponent requested to add some goods and services to the list of goods and services of earlier European Union trade mark No 9 784 299. However, even if the additionally claimed goods and services were taken into account, the outcome of the opposition would be the same. Therefore, it is unnecessary to suspend the proceedings until a final decision is taken in relation to the application to enter the declaration in the European Union Trade Marks Register.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Oana-Alina STURZA

Solveiga BIEZA

Natascha GALPERIN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.