Trademark Similarity - It’s Not As Simple As Apples And Oranges
Do you know the idiom of “apples and oranges”? It is commonly used to describe two things that are fundamentally different and therefore unable to be compared. This metaphor for dissimilarity actually appeared way back in the 17th century in John Ray's proverb collection of 1670 as “apples and oysters.” In Turkish and Spanish the idiom is translated a little differently as “apples and pears”. So when we observed Apple Inc. trying to prevent a pear logo recently, we had the very same turn of phrase in mind!
Apple Inc. is a world-famous designer, manufacturer, and marketer of mobile communication and media devices and personal computers. Apple Inc. is also a seller of a variety of related software, services, accessories, and third-party digital content and applications. There is no doubt that their ubiquitous APPLE brand is one of the best-known brands in the world today.
Apple Inc. has extensively promoted, marketed, advertised, distributed, and sold goods and services in connection with the APPLE family of trademarks since the early 1970s. So it is no real surprise that this activity can be seen when examining their trademark portfolio.
According to Portfolio Analyzer, our business intelligence and trademark management tool, their most powerful brands are their APPLE trademarks. This also makes that trademark the most litigious trademark in their portfolios - having more than 300 opposition cases before the USPTO, EUIPO, and UKIPO based on APPLE trademarks.
Apple and pears in the USPTO
USPTO records now show a brand new case between Apple Inc vs Super Healthy Kids, Inc. regarding trademark no. 87315348 published on 26th November 2019.
Apple Inc. filed an opposition to the trademark - a pear logo covering Nice classes 42 (Research and Development) and 45 (Social and Legal Services) with the grounds of risk of confusion and dilution.
The applicant’s mark consists of a pear design with a right-angled leaf. According to Apple Inc. this image readily calls to mind their famous Apple Logo and creates a similar commercial impression. In addition to the risk of confusion, Apple also claims that the image will dilute the reputation of the Apple logo. The case is still pending.
This case reminds us of a similar case in the European Union.
Aftermath of another pear image case in the EU
A similar case (T-215/17) took place in a different territory recently. The EU General Court rejected another Apple Inc. case that also concerned apples and pears. The subjected trademark was filed in Nice classes 9 (Electrical and Scientific Devices), 35 (Advertising and Business), and 42 (Research and Development). Both the Opposition Division and the Board of Appeal of the EUIPO upheld the opposition based on Article 8(5) of the EUTMR.
It’s all gone pear-shaped
Accordingly, it was accepted that the pear logo would take unfair advantage of the distinctive character and reputation of Apple’s logo. However, the General Court disagreed with the conclusion of the Opposition Division and the Board of Appeal of the EUIPO and took into account the visual (dis)similarity (the bite, the leaves and so on), including the fact that the subject trademark also covers a word element. Moreover, the EU also took into account the issue and level of conceptual dissimilarity.
Therefore the Court annulled the decision of the Board of Appeal as regards the similarity of the two marks.
LogoCheck going swimmingly
So, are apples similar to pears afterall? Well, as we attorneys like to say - it all depends!
During an ongoing R&D project around our LogoCheck tool (stay tuned!), we discussed very similar questions with our team. Just as an example we asked ourselves, does a leaf have a visual similarity that places the concept of a fish in the mind of a consumer? Or is the image below actually a fish which perhaps gives the impression of a leaf? If either of these assertions are true, then it is also true to suppose that even a fish can be similar to a leaf! So why not apple vs pear!
TrademarkNow’s LogoCheck tool is designed to help IP managers to clear new candidate logos, while using conceptual division. The description of those concepts is regulated under Vienna or any other major country systems for classifying trademark designs.
Searching by concept is still one good way to catch similar conceptual logos - while bearing in mind that even a fish and leaf can create a visual similarity!
It is therefore wise to think of conceptual division in line with the visual elements of the target logo and to cover as many possibilities as possible. The risk of confusion derived from logos, does not come from the concept, per se, but more from any visual elements that are common or similar.
The action that Apple Inc takes as regards that particular trademark is just another brick in the wall of their business strategies. One thing is certain, business plans have no real value without the inclusion of a proper, robust branding and trademark strategy.
This overarching branding and trademark strategy needs deeper analysis than just an evaluation of the risk analysis in a particular clearance search, for a particular trademark candidate.
Our new business intelligence and trademark management solution Portfolio Analyzer gives its users the opportunity to create intelligent business strategies derived from trademark filing activity statistics. The tool enables you to understand any gaps in the industry or the strengths/vulnerabilities of key industry players.
Portfolio Analyzer enables you to gauge the strength of a trademark portfolio, identify growth trends, coverage gaps and vulnerable brands, and benchmark portfolio-strength metrics against your competitors.
Find out how Portfolio Analyzer can transform your trademark management today!