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Law for Business

Knowhow - guidance - precedents

13 SEP 2012

What Shall I Call My New Invention (or alternatively ... Hey Jude, can I call my wheelchair "The Beatle"?)

 

Imagine the scenario ... you have just developed a wonder product which will take the world by storm and make you millions - but what do you call it? Do you name it after your spouse or child; your most loved holiday destination; or your all-time fav pop group?

If it's the latter - think carefully!

A recent Trademark case (You-Q B.V. v. Office for Harmonisation of the Internal Market (OHIM)) considered the argument over whether a figurative sign which included the word "BEATLE" could be registered as a Trade Mark for a wheelchair (or to give it its correct term, an electric mobility aid).

In 2004, You-Q BV, a Dutch company, applied to register a Community Trade Mark which included the word "BEATLE" in class 12, which includes wheelchairs. Apple Corp., a company created by The Beatles group, objected not because it was jealous of the trendy wheelchair or because it had registrations in class 12, but on the basis of its well-known earlier Trade Marks in other classes.

In May 2010 the OHIM rejected You-Q's application on the basis that:

(a) the signs were very similar;

(b) Apple Corp's earlier Trade Marks had a long standing and substantial reputation; and

(c) The relevant public overlapped (What???)

The first two points are self-evident but what did the OHIM mean by the third? The OHIM considered that many of The Beatles fans from the 1960s were now of an age where they might be actively looking at mobility aids and therefore calling a wheelchair "The Beatle" would take unfair advantage of the reputation and selling power of the Apple Corps Trade Marks.

This decision was upheld in 2012 by the General Court on Appeal. The Board of Appeal considered that, despite the difference between a wheelchair and the products protected by the Apple Corps. registrations, the positive image of freedom, youth and mobility associated with "The Beatles" name and image would attract the relevant public (being 1960s Beatles fans) now in need of mobility aids. This constitutes unfair advantage. The wheelchair could not therefore be registered as The Beatle.

Not only is this case amusing in that both the OHIM and the Board of Appeal considered that fans of the Beatles from the 1960s were now likely to be attracted not to peace and love and rock and roll, but to mobility aids; but also shows the strength of a well-known Trade Mark potentially blocking similar registrations in different classes for different products (as well as reminding the babies of the 1940s and 50s that mobility aids actually might be quite attractive!).

 

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