Worldwide fame of The Beatles does not automatically extend to BEATLES trademark

On 15 April 2022, the Paris Court of Appeal ruled that the character of the notorious English group The Beatles can not be automatically extended to the trademark BEATLES.( 1) 

 

 Data 

In this case, the French National Institute of Industrial Property( INPI) rejected an opposition filed by Apple Corps Limited – on the base of its EU trademark BEATLES and invoking the character of its earlier trademark – against an operation for enrollment of the trademark THE BEATLES filed by an individual in classes 12, 29, 30, 32, 33, 36, 39, 42 and 45. 

 

 Apple Corps Limited filed an appealed to have this decision annulled on the ground that its trademark enjoyed a particular character and was thus not subject to the principle of thing, since the trademark's character was sufficient to affect in a threat of association between the trademarks. 

 Composition 8( 5) of the EU Trademark Regulation( 2) provides as follows 

 

 Upon opposition by the owner of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it's identical with, or analogous to, an earlier trade mark, irrespective of whether the goods or services for which it's applied are identical with, analogous to or not analogous to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a character in the Union or, in the case of an earlier public trade mark, the trade mark has a character in the Member State concerned, and where the use without due cause of the trade mark applied for would take illegal advantage of, or be mischievous to, the distinctive character or the character of the earlier trade mark. 

 According to Apple Corps Limited, the INPI had inaptly limited the character of the trademark BEATLES to" sound recordings" only, whereas former opinions had recognised the trademark's character for other goods and services covered by the enrollment . Apple Corps Limited justified its claims regarding the trademark's character by submitting multitudinous pieces of content( eg, press papers, the history of the group, music compendiums and rankings). 

 

 Decision 

The Paris Court of Appeal held that INPI had correctly recognised the character of the trademark only with respect to the goods" sound recordings" and that it hadn't been demonstrated that the trademark enjoyed a high degree of recognition with respect to the other goods and services for which the character had been invoked. 

 

 The Court considered that the character of The Beatles didn't automatically extend to the mark BEATLES, and that it had to be proved that it was well known by a large part of the applicable public. The aspirant had handed no applicable substantiation to assess the degree of knowledge of the mark, including 

the request share held by the mark; 

 the length of time the mark had been used; or 

 the quantum of investment made to promote it. 

 Although the practice of secondary products is common to successful musical groups, as the INPI had noted, this didn't in any way allow the conclusion that the trademark was known for all the goods and services invoked by the trademark proprietor. 


 Accordingly, the Court rejected the appeal lodged by Apple Corps Limited and conceded that the INPI's decision was justified. 

 

 Comment 


 The case demonstrates that it's necessary for possessors of reputed trademarks to remain watchful, since they must demonstrate the accession of similar character for each of the goods and services covered by the trademark enrollment . On the other hand, the case presents an intriguing defence that could be used when an aspirant is attacked by the proprietor of a reputed trademark.