Apple kan rolstoel BEATLE verbieden

Gerecht EU 29 maart 2012, zaak T-369/10 (You-Q tegen OHIM/Apple) - perscommuniqué

Apple Corps kan verhinderen dat een gemeenschapsbeeldmerk bestaande uit het woordelement „BEATLE” voor elektrische rolstoelen wordt ingeschreven Het is aannemelijk dat You-Q door het gebruik van dat merk een ongerechtvaardigd voordeel zou halen uit de bekendheid en de voortdurende aantrekkingskracht van de merken BEATLES en THE BEATLES van Apple Corps.

35 The existence of reputation must be established by reference to the public concerned by the earlier marks, namely the public at large, and not, contrary to the applicant’s assertion, by reference to the public concerned by the mark applied for, namely a specialist public, even if, in the circumstances of this case, as OHIM rightly stated at the hearing, those two sections of the public overlap, since the public at large also encompasses the specialist public. However, it should be borne in mind that the taking into consideration of the public concerned by the mark applied for occurs not in the context of the examination of reputation, but, as OHIM rightly observed, in the context of the examination of whether any unfair advantage has been taken of the distinctive character or reputation of the earlier marks. As is apparent from Intel Corporation, paragraph 33 above (paragraph 36), injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods or services for which the mark applied for is registered, who are reasonably well informed and reasonably observant and circumspect, in so far as what is prohibited is the drawing of benefit from the earlier mark by the proprietor of the mark applied for.

36 Third, with respect to the strength of the reputation of the earlier marks, which the applicant disputes, the Court would point out that the material mentioned in paragraph 16 of the contested decision (namely the witness statement of Mr A., the figures from the record company EMI, the copies of the accounts mentioning the figures) highlights the importance of the sales of one of the Beatles’ albums which reached the top chart position in over 30 countries and more than 8 million copies of which were sold. Moreover, it is apparent from the contested decision that combined sales of sound records bearing the mark BEATLES amounted to 28.7 million between 1995 and 2004, figures which were supported by accounting documents in the file and whose veracity and authenticity have not been contested by the applicant. Furthermore, amongst the numerous articles from various international press bodies, the Daily Express article of 19 October 2002, which the Board of Appeal cites specifically in paragraph 16 of the contested decision, highlights the fact that the Beatles group is considered to be a group having an exceptional reputation stretching over more than 40 years.

37 In the light of all the material mentioned in paragraph 16 of the contested decision, and which is in OHIM’s file which was lodged before the Court, the Board of Appeal was therefore entitled to find that the earlier marks THE BEATLES and BEATLES have an enormous reputation for ‘sound records, video records, films’.

38 Moreover, the Board of Appeal was also entitled to find that the earlier marks have a reputation for merchandising products such as toys and games, on account, first, of the manufacture, under licence, of model London taxis and double-decker buses as well as yellow submarines bearing the earlier marks and, second, of the sales figures generated by those goods between 2000 and 2005, although that reputation is lesser than that acquired by the earlier marks for ‘sound records, video records, films’.

39 On the basis of that material, and without its being necessary to rule on the inadmissibility – raised by OHIM – of the applicant’s argument contesting not the reputation of the earlier marks, but their extent as determined by the Board of Appeal, the Court considers that the Board was entitled to infer from the abovementioned material that the earlier marks have a very substantial reputation.