'Let it Be' - Apple Corps Ltd Contest Use of BEATLE
The General Court has recently issued its judgment in the case of the objection by Apple Corps Ltd against an application to register BEATLE for a range of goods in Class 12 limited primarily to wheelchairs and other transport to assist the disabled and those with handicaps. The question for the General Court was whether Apple, the record label behind The Beatles and owner of numerous trade marks for BEATLES had a valid ground to object, notwithstanding the complete dissimilarity between the two sets of goods.
Initially, Apple’s opposition was rejected by OHIM on the basis that Apple had not shown why the public would perceive there to be a link between the signs in question. However, the Board of Appeal upheld Apple’s appeal under Article 8(5) of the CTM Regulation and concluded that in relation to the two sets of goods, the relevant public would be likely to overlap. Also the Board found that, contrary to the decision of the Opposition Division, an enormous reputation had been shown for the core goods of interest, ie, sound recordings, together with a substantial reputation for a broad range of merchandise including even toy submarines coloured….yellow.
The Board also considered the question of whether the applicant was seeking to take an unfair advantage and concluded that they were, on the basis of the opponent’s reputation, with the result that there would be a serious risk of detriment. Importantly, the Board also noted that the applicant had failed to show or evidence due cause in their adoption of the trade mark BEATLE. This point has been raised in various previous cases, including the landmark judgments in Nasdaq and also Intelmark. The courts are quite clear that, when defending an opposition under Article 8(5) of the CTM Regulation, usually where there is a significant reputation and two sets of dissimilar goods, the onus lies with the applicant to show due cause.
The applicant appealed the decision to the General Court (GC); however, to no avail. The GC held the Board of Appeal was right to find that the opponent’s reputation was properly established both for the core goods as well as the related merchandise. They also reasoned that there would be an overlap in terms of the relevant public such that even taking into consideration the dissimilar goods, a link would be established. On the question of whether there would be an unfair advantage, the GC concluded that the opponent’s goods projected an image of freedom, youth and mobility and this was something that the applicant might use to gain an unfair advantage. As the applicant did not argue that it had due cause before the Board of Appeal, it was right to hold there was no such cause with the result that the appellant’s case was dismissed in its entirety.
This case confirms two things:
- An applicant must always seek to establish due cause when challenged under Article 8(5) of the Regulation; failure to do so will lead to an automatic assumption that the mark in question was adopted without due cause.
- Evidence to show a link between the two sets of goods/services is critical together with a possible overlap between the relevant public. Intel had demonstrably failed in seeking to object to the later mark INTELMARK, however, in this case evidence of the range and extent of products sold under the BEATLES brand and the reputation of the band was sufficient to satisfy the Court on the question of unfair advantage.