Thursday, 21 of March of 2019

Last January 31st, the General Court (herein after, GC) in its decision on Case T-215/17 (Apple vs. Pear Technologies), has disrupted the supremacy of the software and hardware giant. But first things first, let’s make a throwback on the case.

Back in 2014 the Chinese company, Pear technologies, filled the European trademark application No. 13.115.076 “PEAR” seeking protection for products and services in classes 9, 35 and 42 of the Nice classification, including personal computers (PC), laptops, software and digital marketing. Apple opposed the said application with its bitten apple figurative trademark No. 9.784.299.

The Opposition Division of the EUIPO upheld the opposition based on Apple´s prior trademark reputation (Article 8.5 of the European Union Trademark Regulation).

The decision was further appealed by Pear technologies, but the EUIPO´s BoA dismissed it. Following the board´s decision the similarity between the signs undoubtedly provoked a likelihood of confusion and that the image of the pear, as that of the sign applied for, evoked Apple´s prior mark deriving all the above in riding Pear technologies on the coat tails of Apple prior rights’ reputation, understanding. The GC has however overturned the decision of the EUIPO concluding that the challenged application must access registration following the arguments below:

  1. Visual comparison: the GC does not deny that the comparison should be made of the marks as a whole. In particular terms as to the instant case, besides the figurative element in the question’s application (the image of the pear) there is also the word element (PEAR) which according to the Court´s opinion will attract the consumer attention being the dominant element of the trademark.

  2. There is not enough similarity between the signs:

  • It is obvious that each mark represents a different type of fruit.
  • The shape of the signs is different.
  • The image of a Pear intended for registration is built of many black square-shaped elements and has no edges to define it. Meanwhile, the contested apple is a solid image with a defined edge.
  • The famous “bite” of the apple has no equivalence in the contested application.
  1. Conceptual comparison. To the GC’s impression it is obvious that the concepts evoked by each sign is different. Firstly, because the “bitten fruit” concept present in the prior mark is neither copied nor present in the intended registration. Even though their drawing pattern is abstract, they look different in an overall impression. Secondly because both marks represent different fruits which do not have a special connection.

Last but not least, the GC considered that Art. 8.5 EUTMR does not apply since this provision only operates in cases where the signs are considered identical or similar. However, this cannot be used as a criterion to determine an identity or similarity between both marks.