Are apples and pears similar? Apple Inc and the EUIPO seem to think so, but they failed to convince the General Court that was the case in Pear Technologies v EUIPO (Case T-251/17).

 

In July 2014, Pear Technologies Inc. (“Pear”) applied to register the figurative sign (shown below on the left) as a EUTM. Apple Inc. (Apple) opposed Pear’s application, relying on its earlier mark shown below on the right.

 

 

The goods applied for were, as you’d expect, computers and computer-related goods and services of various types.

 

Apple succeeded on the ground that the conditions of Article 8(5) EUTMR were fulfilled: the Board found that Apple’s registered logo had a reputation, Apple’s logo was considered to be similar to Pear’s logo, and that use without due cause of Pear’s logo would take unfair advantage of, or be detrimental to, the distinctive character or the repute of Apple’s logo.

 

Pear was a little bit upset by that finding as their view was that the marks weren’t similar at all, and so they appealed. However, their appeal was dismissed.

 

The Board concluded that “there was at most a remote similarity between the conflicting marks” but that was enough to get over the hurdle to the application of Article 8(5), i.e. that the relevant section of the public would make a connection between those marks; in other words, they would establish a link between them even though it would not confuse them. The basis of that similarity was because the Board considered that the conflicting marks represented “sleek rounded silhouettes of fruit” which were “very close from a biological and botanical point of view”. And that was enough to get them over the hurdle!

 

As regards the link, the Board concluded that Pear’s logo was “somewhat mocking” of Apple’s logo, and there was a link that would risk taking advantage of Apple’s repute.

 

Thankfully, Pear appealed. The “Alice in Wonderland” nature of the Board’s decision was not helped by the EUIPO’s eccentric submissions before the Court. They argued that consumers would know

“that apples and pears are grown and harvested under similar conditions” which (it argued) was grounds for visual and conceptual similarity between the logos. The EUIPO also argued that apples and pears travelled similar routes to market and were sold literally side-by-side in the same venues, and therefore that was a relevant consideration. Further, the EUIPO submitted that consumers would know that both fruits were members of the “Rosaceae pomoideae” family and, therefore, at that level they would be seen as the same mark by the average consumer.

 

In response, Pear Technologies argued that apples and pears were like pumas and cheetahs. The writer doesn’t understand why that line of argument would help, and the General Court didn’t think so either. That argument was based on SABEL v Puma (Case C-251/95) but, as the Court said, in that particular case the conceptual similarity between the signs was based on the fact that both were using the image of a “bounding feline” rather than the fact that pumas and cheetahs shared several characteristics in real life.

 

The Court concluded that the Board of Appeal had got it wrong. According to the Court, the Board seemed to have underestimated the fact that, in actual fact, apples were not pears. The Board had taken the view that the word element “pear” would create a semantic unit with the depiction of the pear and so contributed to what the average consumer would see – in other words, when you

saw Pear’s logo, you’d know it was a pear because it said “pear”. However, as the Court said, the semantic unit would only exist for the part of the relevant public which understood the meaning of the English word “pear” – in other words, even if you didn’t speak English, on seeing Pear’s logo you’d still think it was a pear. Moreover, the existence or otherwise of a semantic unit was not capable of calling into question the fact that, on a visual level, Apple’s logo did not contain the

word element “pear” or any element which would be similar from a visual point of view. It’s amazing how much money they spent to get to that point!

 

The second point of argument was the point of similarity relied upon insofar as both logos depicted a leaf on top, angled at 45 degrees. The Court said that they could see the leaf in Apple’s logo but in relation to Pear’s logo it was an oblong shape which did not resemble a leaf and, therefore, that point fell away. The other point (which the reader might think was the elephant in the room) was the Court’s observation that Apple’s logo had a bite taken out of it whereas Pear’s logo didn’t, and that’s the way consumers would view the marks.

 

Taking account of all those factors, the Court concluded there was no similarity between those two fruits. The Court also found an error in the Board’s reasoning, which was probably its route of access to reconsider this point. It concluded that the Board had taken account of Apple’s reputation when considering the similarity of the marks which was a no-no. Interestingly, the Court didn’t say that the Board had made this error, rather that it “appears to have” done so. As regards similarity, the Court said that the only commonalities were the presence of black colour and the similar positioning of

the figurative elements placed above the depictions of the apple and the pear, which they said were insufficient and, therefore, Pear’s appeal was allowed.

 

Quite apart from bringing a little bit of common sense to the proceedings, the Court’s decision was in effect a re-evaluation of what the Board of Appeal had done, which it didn’t need to do – it could have just decided that it was bound by the Board’s evaluation. Usually in the UK, if a Hearing Officer finds similarity and there’s no error of principle in that decision, then the matter is considered concluded.

 

As Apple are appealing this decision, this may not be the end of the matter and we might discover in a couple of years’ time that, in fact, there is some similarity between apples and pears.

 

This is a reduced version of the article written by Partner Katie Cameron and Dr Janet Strath published by the Computer and Telecommunications Law Review: C.T.L.R. 2019, 25(4), 96-98.