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Trademark law – Pear too strong a reminder of an apple

June 2017

One cannot compare apples and pears, at least not according to the equivalent German expression for comparing apples and oranges. However, as demonstrated by a decision of the European Union Intellectual Property Office (EUIPO), things may look rather different in the field of trademark law.

Trademarks are of great importance to businesses. They create brand recognition among consumers and help to distinguish a company’s products and services from those of competitors. However, it is not possible to have every sign or symbol registered and protected as a trademark. GRP Rainer Rechtsanwälte notes that in order for a sign or symbol to be capable of being registered as a trademark, it needs to be sufficiently distinctive such that it can be clearly distinguished from the products of other providers. On the other hand, the sign or symbol cannot infringe any existing trademark rights. That is why it needs to be carefully assessed whether the necessary conditions are met before registering a sign or symbol.

The fact that the devil is often in the detail here is clear from a recent decision of the EUIPO. It is generally safe to assume that apples and pears are sufficiently distinguishable from each other such that there is no risk of one being mistaken for the other. Notwithstanding this, the EUIPO, the body responsible for registering European Union trademarks, took a different view in the context of a dispute between two IT firms. The company bringing the action has featured an apple in its logo for many years, whereas the other company wished to register a pear as its logo. The EUIPO rejected the application for registration.

In justifying its decision it noted that while these were two different fruits, their silhouettes bore a significant resemblance to each other in terms of their smooth, sleek and round design. The “figurative aspects” of the pear were said to be strongly reminiscent of the logo featuring the apple. The EUIPO went on to say that a remote visual and design-related similarity between the logos was itself sufficient to justify rejecting the application to register as a trademark. It further argued that the pear would give rise to an association with the more well-known apple logo in the minds of consumers and thus allow the relevant company to unfairly profit from the latter’s popularity and success.

Lawyers who are experienced in the field of trademark law can advise on registering trademarks as well as in the event that trademarks rights become infringed.

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