In its decision in Apple Inc. v. Apo International Co. Ltd
, Case T-104/17, Sept. 13, 2018, the General Court annulled the European Union Intellectual Property Office (EUIPO) Board of Appeal decision, finding that there is a likelihood of confusion between the earlier trademarks “Apple”,
, and the opposed mark
Apo International Co. Ltd (Apo) applied for the compound mark
with EUIPO, seeking protection for a broad array of goods and services in Classes 9, 11, and 35. EUTM application no. 11293628. Apple Inc. (Apple) commenced opposition proceedings against Apo’s application, relying on its earlier APPLE trademarks and
. The grounds of the opposition were those provided for by Article 8(1)(b) (identity and/or similarity of marks and goods with resulting likelihood of confusion), and also (4) (similarity with non-registered trademark conferring the right to prohibit use of a subsequent mark) and (5) (identity and/or similarity with trademark with reputation) of Regulation No. 207/2009 (now Regulation No. 2017/1001). Both the Opposition Division and the Fourth Board of Appeal dismissed the opposition lodged by Apple.
The Opposition Division contended that there was lack of similarity between the marks at issue, and the Board of Appeal took the same view.
The findings of the rejection were mainly based on the presence in the latter mark of the word “APO,” which held a prominent position in the overall impression conveyed by the mark and were not present in Apple’s earlier trademarks.
The General Court overturned the Board of Appeal’s decision, acknowledging a certain degree of visual and conceptual similarity between the marks at issue, further reasoning that neither the word element nor the figurative element in the latter mark is dominant and that both retain a similar position in the overall impression produced.
Contrary to the findings of the Opposition Division and the Board of Appeal, the court held the figurative element of Apo’s application would be seen, at least by part of the relevant public, as a stylized representation of an apple.
As to the conceptual similarity, the General Court asserted, contrary to the previous findings, that the public would easily establish a link between a fruit and Apo’s mark. Even though the APO outline may be interpreted as several different fruits other than an apple, that has no bearing on the circumstance that most of the public will see it as an apple, leading to the conclusion that such figurative element evokes an apple. Accordingly, the General Court found that the Board of Appeal erred in taking the view that the marks at issue were different and in rejecting the opposition based on the grounds for refusal set out in Article 8(1)(b) and (5) of Regulation No. 207/2009, without conducting an assessment of the other conditions laid down in that article.
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