The Legal 500

Twitter Logo Youtube Circle Icon LinkedIn Icon

GRP Rainer LLP

AUGUSTINERSTRAßE 10, 50667 COLOGNE, GERMANY
Tel:
Work +49 221 272 27 50
Fax:
Fax +49 221 272 27 52 4
Email:
Web:
www.grprainer.com
Berlin, Bonn, Cologne, Dusseldorf, Frankfurt, Hamburg and 3 more

Show all Press releases

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.

https://www.grprainer.com/en/legal-advice/intellectual-property-law-and-trademark-law/trademark-law.html

Legal Developments by:
GRP Rainer LLP

Legal Developments in Germany

Legal Developments and updates from the leading lawyers in each jurisdiction. To contribute, send an email request to
  • Tax evasion: Only voluntary disclosure affords protection from severe penalties

    Anyone who has been caught for tax evasion should expect to be faced with severe penalties. Voluntary disclosure is the only way of returning to a state of normal tax affairs and avoiding penalties.
  • GSK Update: AIFM Marketing in Germany - The clock is ticking for U.S. and other non-EU fund managers

    Our GSK Update informs about the impact of recent German investment fund legislation (UCITS V Implementation Act) for AIF managers, who are not domiciled in the EU (“non-EU-AIFM”) and who seek to market AIF shares in Germany in accordance with applicable German investment fund law under the EU-AIFM Directive (2011/61/EU).
  • GSK expands Luxembourg presence with a new tax partner

    Opened at the beginning of March 2016, GSK Stockmann + Kollegen continues to expand its Luxembourg office. Mathilde Ostertag recently joined the Luxembourg team of Equity Partners Dr. Marcus Peter, Andreas Heinzmann and Dr. Philipp Mößner as Local Tax Partner.
  • EIA - Strengthening the role of the public

    Among other things, the recent amendment to the Environmental Impact Assessment Act has broadened the rights of (what is termed) the "affected public". The affected public consists primarily of various citizens' initiatives pursuing environmental or public-health purposes. It may for instance file an appeal against a negative decision at the screening stage (i.e., a decision according to which the given project does not require the issuance of an EIA report), and seek its annulment in court. The affected public has been granted a stronger voice also in subsequent procedures in which the fate of a building project is being decided: zoning proceedings and the proceedings on the issuance of a building permit. Taken together, these legislative changes may make it more difficult to implement projects which require an EIA report; in particular, the length of permission proceedings may be substantially extended.
  • New Top Level Domains – Noerr expert warns against trademark infringements

    On June 13, the Internet Corporation for Assigned Names and Numbers (ICANN) published the names of those who have applied for a new top level domain the ending of which may be geographic, such as "munich", industry identification such as "insurance" and even all trademark names and company descriptions such as "canon" and "adidas".
    - Noerr
  • No obligation to set up filtering systems in order to prevent copyright violations

    ECJ, decision of February 16th, 2012, ref. C-360/10 – SABAM
  • Further ECJ Ruling concerning NGO’s right of action under German environmental law

    For the second time within a short period of time, the non-governmental organisations right to challenge administrative decisions under German law is going to be subject to the jurisdiction of the European Court of Justice (ECJ). In January 2012, the German Supreme Administrative Court (Bundesverwaltungsgericht) referred a case to the ECJ for a preliminary ruling concerning the NGO’s right of action.
  • Lessons in Cross-Border M & A Transactions

    The fundamental advice for international business transactions is obvious and easy to understand: different countries have different laws, business habits and cultures. These differences may range from minor nuances, such as lengthy French business lunches or unusual Spanish office hours, to significant legal roadblocks, such as strict European employment laws.
  • Priority rental rights in insolvency

    Parties to rental contracts for commercial premises often agree priority rental rights. In practice, this concept is used to cover a whole series of legal structures. These range from fixed options for the tenant to a promise made by the landlord as a business policy that if any additional premises become available, they will be offered to the tenant. In 2010 the Berlin Court of Appeal issued a ruling on such priority rental rights in insolvency; the decision has recently been published.
  • Rome I Regulation: choice of law for contractual obligations

    The EU Rome I Regulation (593/2008) of the European Parliament and of the Council came into force on 17 December 2009 (Convention). The Convention sets rules to determine the (national) law applicable to contractual obligations in civil and commercial matters. This Regulation replaces the 1980 Rome Convention and is especially relevant to cross-border businesses. The intention of the Convention is to provide legal certainty in cases where the parties have not expressly chosen the applicable law governing their contract.