Taking back the beats
David Birchall summarises a decision that recognised the sway of similarities. R 990/2018-4, Beats Electronics, LLC v Disashop, SL, EUIPO, 19th December 2018.
R 990/2018-4, Beats Electronics, LLC v Disashop, SL, EUIPO, 19th December 2018
- Consumers usually focus on similarities rather than differences
- More than 29 per cent of 2018 BoA decisions overturned the original EUTM opposition decision either partly or fully
In 2015, Beats Electronics, LLC, a subsidiary of Apple Inc, opposed an application by Disashop SL to register an EU trade mark (EUTM) in respect of various goods and services.
Beats based its opposition (under Articles 8(1)(b) and 8(5) of Regulation (EU) 2017/1001) on, among other marks, earlier EUTMs for two marks.
In early 2018, EUIPO’s Opposition Division (OD), despite agreeing that many of the goods and services in the contested application and Beats’ EUTMs were identical, rejected Beats’ opposition in its entirety. It found that, visually, the marks differed in their overall layout, proportion, shape and colour, and were only “similar at most to a low degree”. The OD also found that, aurally, the earlier marks would be perceived as “b”, while the later mark would be pronounced as “d”. Thus, there was no likelihood of confusion. EUIPO held that Beats’ evidence had not proven reputation and had not proven that its device mark would be recognised independently of its word mark.
Beats appealed in respect of the goods and services that had been found to be at least similar to those for which its earlier marks were protected. Beats argued that, as demonstrated by its evidence, its own mark was used in red and white (the same colourway as the contested mark) and that the letters “d” and “b” were mirrored reflections of each other, without additional distinguishing features.
The Board of Appeal (BoA) agreed that the essential characteristics of the earlier marks were reproduced in the opposed mark and that, even if some would see the earlier marks as a “b” and the contested mark as a “d”, the overall impression given by the contested mark was that it was “a mirror image of the earlier marks”. The BoA concentrated on the section of the public that would not recognise the letters and would instead perceive the marks purely as devices. From this angle, the BoA found the marks similar to an average degree. On the basis that the earlier marks had no apparent meaning in relation to the goods and services for which they were protected, the BoA held that they had a normal degree of distinctive character and found it unnecessary to consider Beats’ claims of reputation and enhanced distinctiveness.
The BoA held that consumers usually focus on similarities rather than differences, the minor differences in the marks not being sufficient to outweigh their visual similarities.
The appeal succeeded in its entirety under Article 8(1)(b).
According to EUIPO’s published statistics, only 54 per cent of BoA decisions issued in 2018 on EUTM oppositions confirmed the original decision in its entirety. In more than 17 per cent of the 2018 decisions, the appeal succeeded in full. More than 29 per cent of the decisions overturned the original opposition decision either in part or in full. As Beats’ case demonstrates, an appeal is sometimes required to obtain the decision sought.
David Birchall is a Chartered Trade Mark Attorney and Partner at Venner Shipley LLP
Venner Shipley LLP