The Beatles v. Beatle, when reputation exceeds the principle of speciality – General Court of the European Union

On the 23^rd of March 2012, the General Court upheld the rejection of the application of the community trademark ‘BEATLE’. Even though this trademark was aiming at protecting electric mobility aids for disabled persons, the OHIM rejected the application of the company Handicare Holding BV (now You-Q BV) on the 31^st of May 2010. Actually, Apple Corps, the record company of the famous band from Liverpool, opposed the application relying on its several earlier trademarks ‘THE BEATLES’ and ‘BEATLES’, including community, national, figurative and word trademarks.

The European jurisdiction first notes that the trademarks ‘THE BEATLES’ and ‘BEATLES’ have a very substantial reputation, particularly regarding the sound records and video records fields. If the decision then puts forward that the signs are visually, phonetically and conceptually similar, it acknowledges that the goods targeted are different.

Even without any risk of confusion, a link between the two signs is not inconceivable. The decision states that the trademarks ‘THE BEATLES’ and ‘BEATLES’ have such a reputation that a similar trademark would take unfair advantage of the positive images of freedom and youth which the relevant public may associate to other goods. The Court here applies Article 8(5) of the Regulation on the Community trademark concerning the protection of a trademark that has a reputation when goods are different. The ruling is moreover in the wake of the Community case law[1] which requires: “first, that the earlier mark cited in opposition has a reputation; secondly, that the marks at issue are identical or similar; and, thirdly, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”