You-Q not allowed to use BEATLE mark for wheel chairs
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You-Q told to Let it Be
In the case of You-Q BV v Office for Harmonisation in the Internal Market (OHIM) the General Court has upheld a decision of the Board of Appeal of the OHIM, confirming that Apple Corp (a company created by The Beatles group), can prevent registration of a figurative Community trade mark composed of the word BEATLE in relation to electric mobility aids. It was held that this would take unfair advantage of the repute and the consistent selling power of the earlier BEATLES marks held by Apple Corp.
In January 2004, Dutch company You-Q BV, formerly Handicare Holding BV (Handicare), applied for registration of a Community trade mark (CTM) for the figurative sign which included the word BEATLE in relation to, among other things, “wheelchairs electric, wheelchairs not-electric” in Class 12.
Apple Corp opposed the application based on various earlier marks, including the word mark BEATLES and the figurative marks which included the word BEATLE. These earlier marks covered a wide range of goods and services, but not explicitly goods in Class 12.
On 31 May 2010, the OHIM rejected the application, finding that:
- the signs were highly similar;
- the earlier marks of Apple Corp enjoyed a substantial and long-standing reputation; and
- the relevant public overlapped (as many of The Beatles fans of the 1960s were now of the age that might benefit from electric mobility aids).
As a result of these factors, the OHIM held that it was likely that the marks applied for by Handicare would take unfair advantage of the repute and the consistent selling power of the marks of Apple Corps and there was a serious risk of detriment to the earlier marks.
Handicare subsequently asked the General Court to annul this decision.
On appeal, the General Court held:
- Identity or similarity of the marks - there was a high degree of similarity between the marks, as well as an overlap between the relevant sections of the public.
- Reputation of the earlier marks - the evidence provided by Apple Corp showed that the earlier marks enjoyed an exceptional reputation.
- Link to the earlier mark – for the two reasons above, the Board of Appeal had correctly found that, despite the difference between the goods in question, there was a link between the marks at issue, since the mark applied for would call to mind the earlier mark with a reputation.
- Unfair advantage taken of the distinctive character or the repute of the earlier mark(s) - the overall image of the earlier marks was, even after 50 years, maintained to be associated with the youth and the culture of the 1960s. The positive image of freedom, youth and mobility associated with the earlier marks might particularly attract the relevant public now in need of electric mobility aids.
Due to the methodological approach of the General Court when reaching this decision, this case shows the factors that the court will take into account when deliberating as to whether a trade mark is taking unfair advantage of, or is detrimental to, the distinctive character or repute of an earlier trade mark. This case also illustrates the strength of well-known mark(s), which can block the registration of similar marks under Article 8(5) (of the CTM Regulation), even where the goods are dissimilar. However, this is restricted to extremely well-known marks, such as THE BEATLES.