You-Q told to Let it
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
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
- 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
- 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
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.
trainee, IP Protection and IP
Enforcement and Litigation at Field Fisher