"Back in the C.T.M.R....." -- the Beatles' latest hit

The General Court gave its decision today in a Community trade mark appeal, Case T-369/10 You-Q BV v OHIM. It's not an earth-shattering legal ruling, but it is one that has prompted -- and continues to prompt -- some of the IPKat's most vigilant readers to email him with the question "I wonder whether you have seen today's ruling ...?" Anyway, according to the Curia press release:

"Apple Corps can prevent the registration of a figurative Community trade mark
composed of the word ‘BEATLE’ in respect of electric mobility aids 

It is likely that, by using that mark, You-Q would take unfair advantage of the repute and the consistent selling power of the marks BEATLES and THE BEATLES held by Apple Corps 

The applicant's mark

In January 2004, Handicare Holding BV applied to OHIM, the Community Trade Mark Office, for registration of a figurative sign composed of the word ‘BEATLE’ as a Community trade mark in respect of electric mobility aids for persons with reduced mobility. However, Apple Corps Ltd, an undertaking founded by ‘The Beatles’ group, opposed that application, relying on its various earlier Community and national trade marks, including the word mark ‘BEATLES’ and several figurative marks composed of the word ‘BEATLES’ or ‘THE BEATLES’.

On 31 May 2010 OHIM [Board of Appeal; the original Opposition Division decision was in August 2009 -- still more than five years after the initial application. Merpel wonders what happened in the meantime ...] rejected Handicare’s application, finding that, because of the similarity of the signs, the considerable and long-standing reputation of the earlier marks of Apple Corps and the overlap of the relevant public [Those elderly folk who were still in their teens when they sang "When I'm Sixty-Four" and never imagined what it would be like when they got there ...], it was likely that Handicare would take unfair advantage of the repute and the consistent selling power of the marks of Apple Corps by using the mark applied for. OHIM therefore concluded that there was a serious risk that detriment to the earlier marks, of which Apple Corps is the proprietor, would occur.

The opponent's mark

Handicare – which became You-Q BV after this case had been brought – asked the Court to annul that decision. In its judgment today, the Court has upheld OHIM’s analysis and dismissed the action. First of all, the Court has held that OHIM was entitled to find, on the basis of the evidence submitted, in particular the sales of the Beatles’ records, that the earlier marks THE BEATLES and BEATLES have an enormous reputation for sound records, video records and films and a reputation, albeit lesser, for merchandising products such as toys and games [Curiously, this was always the case. Plastic Beatle Wigs, sold in Woolworths for 6d (= 2.5 pence), were never much in demand]. Next, in the view of the Court, OHIM was right to find that, visually, phonetically and conceptually, the signs at issue are very similar. Moreover, those marks have a distinctive character so that, when faced with them, the public at large, in particular in the non-English speaking countries of the EU, will immediately think of the eponymous group and their products.

Similarly, OHIM was right to observe that there is an overlap between the two sections of the public targeted by the signs at issue, since persons with reduced mobility are also part of the wider general public targeted by the earlier marks. Consequently, OHIM was entitled to infer from those factors that, notwithstanding the difference between the goods in question, there is a link between the signs at issue. 

Accordingly, because of the existence of that link, the relevant public, even in the absence of a likelihood of confusion, would be led to transfer the values of the earlier marks to the goods bearing the mark applied for. The image conveyed by the earlier marks is, even after fifty years of existence, still synonymous with youth and a certain counter-culture of the 1960s, an image which is still positive. That positive image could benefit the goods covered by the mark applied for, since the relevant public, on account specifically of the handicap in question, would be particularly attracted by the very positive image of freedom, youth and mobility associated with the marks BEATLES and THE BEATLES [Freedom, youth and mobility? Not the Beatles, surely? Of contemporary bands the Who and the Stones look like better bets ...]. This is especially so as a part of the public targeted by You-Q’s goods belongs to the generation of persons who knew the Beatles’ goods in the 1960s and some of whom may now be concerned by the goods covered by the mark applied for. That image transfer would therefore enable You-Q to introduce its own trade mark on the market without incurring any of the great risk or costs, in particular advertising costs, connected with launching a newly created mark.

The Court therefore concludes that OHIM did not err in finding that it is likely that, by using the mark applied for, You-Q would take unfair advantage of the repute and the consistent selling power of Apple Corps' trade marks".

Back in the USSR (for those too young to spot the cultural allusion) here

Okay, everyone, back to work now ...