Long long ago, someone artistically used "as different as Apples and Pears" while describing the difference between 2 things and the idiom has carried on since then. Ironically, in 2015 Apple Inc., challenged the registration of the mark "Pear" at the Euproean Intellectual Property Office ("EUIPO") contending that the mark was similar to its famous 'bitten Apple' device. The 'Pear device' was applied for registration by Pear Technologies Ltd. in Classes 9, 35 and 42. Apple contended that the mark was figuratively and conceptually similar to its 'bitten Apple' device and the Opposition Division ruled in its favour.
To refuse an application due to the presence of an earlier mark, the IP offices consider various parameters such as:
- the earlier mark must be a registered mark,
- there must be identity and similarity between the contending marks, and
- the earlier mark must have a reputation in the European Union or in the Member State,
- there must be imminent risk of unfair advantage of the earlier mark being accrued upon the new mark are considered.
In 2016, Pear Technologies appealed at the EUIPO against the decision of the Opposition Division. The Board of Appeal held that the marks were similar since they depicted "sleek rounded silhouettes of fruit, with the oblong shape (the leaf/ the stem respectively) leaning to the right on top of the fruit". The Board of Appeal stated that though the marks were 2 different fruits but they were biologically related in terms of origin, size, colours, texture etc. It held that "because of the uniqueness and the high reputation of the earlier mark, the allusive and 'somewhat mocking' image of the pear depicted in the mark applied for would establish a mental link with the earlier mark".
However, upon appeal, the General Court held that the marks were visually dissimilar.According to the General Court the presence of the colour black and the similar positioning of the 'leaf on the Apple' and the 'stem on the Pear' were the only similarities between the 2 marks. Considering Apple's magnificent market presence and reputation, it is likely for the public to link a 'fruit mark' to Apple. However, the same cannot be considered in the assessment of the marks if the pre-condition of similarity is not satisfied. The Court ruled that similarity is the first test to be satisfied in the assessment of conflicting marks and unless the same it satisfied it cannot consider other parameters such as reputation, imminent damages etc.
Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan
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