April 13, 2021

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Trademark law: Apple against Banana!

5 min read

Today I would like to refer to an interesting trademark law case, which gave rise to a decision by EUIPO (the European Intellectual Property Office) of January 29, 2018 (reference: B 2 831 439). 

This case is interesting because Apple Inc., the very famous company founded by Steve Jobs, tried to oppose (via opposition proceedings) the registration of a semi-figurative mark “banana-computer”. 

In support of its opposition, Apple of course invoked its famous bitten apple (stamped on all the products it markets) but also other brands that it owns, including a mark consisting of the representation of a whole apple. And another made up of the representation of half an apple. 

On the basis of these earlier marks representing apples, Apple intended to prevent the company Banana Computer from registering as a mark a banana logo accompanied by the words “banana computer”. 

The EUIPO decision, which is the subject of this post, offers a comparison of the earlier marks of Apple and of the mark “banana computer” against which the opposition was directed: 

As a reminder, in get trademark online, in order to be able to validly oppose the registration of a newly filed trademark, the owner of the earlier trademark must be able to establish that the trademark to which he is opposing is identical or , at least, similar to its earlier mark. 

Clearly, for the present case, Apple had to demonstrate – for its opposition to succeed – that the mark “banana computer” was identical or similar to its earlier marks consisting of apples. 

But, you will say to me, how to consider and to argue that the representation (in different forms) of apples is identical (!) Or, at the very least, similar to the representation of a banana? 

Would an apple be equal to a banana? 

Don’t we say that you shouldn’t compare apples and pears? (For our Quebec friends, it is a question of avoiding comparing apples and oranges) 

Reasoning and decision of EUIPO 

In any case, and in accordance with its mission, EUIPO has carried out a detailed comparison of the signs in question (it should be remembered that this comparison is traditionally carried out from a visual, phonetic and conceptual point of view). 

1.    Beginning with the comparison between the bitten apple and the banana which is the subject of the opposition, EUIPO concedes that the two signs to be compared are relatively similar from a graphic style point of view (“clear line”) and from the point of view of their abstract approach. 

EUIPO also concedes that it can be argued that the banana, just like the famous Apple, has been bitten off (although, according to EUIPO, it is not clear: Did the banana crunched? or was it improperly drawn?). 

This being the case, EUIPO considers that these few elements of resemblance are only elements of detail which do not make it possible, in the overall assessment of the two signs to be compared, to counteract the fact that the bitten apple of Apple is an object. Round where the banana has – logically – an elongated and curved shape. Moreover, EUIPO tells us, the banana is partially peeled which creates an irregular image that unfolds on four axes, which contrasts sharply with the bitten apple which does not extend in space but is self-centered. . 

EUIPO concludes that Apple’s bitten apple is not visually similar to the peeled banana covered by the contested mark. 

2.   As regards the representations of whole apple and half an apple covered by other marks relied on by Apple, EUIPO considers that they are even less similar because their neutral representation, and therefore their graphic style, does not have absolutely nothing in common with the (clear line) representation of the peeled banana which is the subject of the contested mark. 

3.   Visually, therefore, EUIPO concludes that there is no resemblance between the three marks of apples relied on by Apple and the contested mark “banana computer”. 

4.   EUIPO then states, unsurprisingly, that the marks should not be compared phonetically since the three marks relied on by Apple are purely figurative (no words, no letters, no verbal aspect; only graphic elements). However, purely figurative marks do not speak for themselves. 

In parentheses: if Apple had used, for the purposes of this opposition, one of its word marks “Apple”, it would have been necessary to compare the terms “Apple” and “Banana” phonetically, and to determine whether there is an aural resemblance between “Apple” and “Banana”… which is clearly not the case – and which probably explains why Apple did not use a word mark. Likewise, it would then have been necessary to visually compare “Apple” and “Banana”, that is to say terms of five and six letters which do not have common letter sequences… Not easy either! 

5.   Conceptually (or intellectually), Apple had argued that apples and bananas are very similar and often associated in many ways in the European Union, since both are very popular fruits. Especially in the European Union, and that consumers confronted with the image of an apple and a banana will immediately think of the concept of “fruit”. 

According to EUIPO, this is not sufficient to conclude that there is a conceptual similarity. The only resemblance between apples and bananas is that they are fruits. But, in this case, the fruits targeted by the marks on both sides are different. There is therefore only the very general concept (fruits) which is common to the two brands, but this very general concept does not make it possible to establish a conceptual or intellectual resemblance between the Apple brands and the “banana computer” brand. . 

And EUIPO to cite in support of this conclusion another case, also initiated by Apple, where it had been judged that an apple (Apple) and a pineapple (Pineapple) were not similar to a point of conceptual view. 

It is interesting to note that according to EUPO, while no conceptual similarity exists between apples and bananas, nor between apples and pineapples, the solution may be different for apples and pears: 

6.    Conclusion: EUIPO rejects the opposition initiated by Apple against the mark “banana computer” on the ground that the signs in question are not similar, neither visually nor conceptually (and that the phonetic comparison is not applicable). 

*** 

7. What to remember from this decision?  

Apart from the fact that an apple can, in trademark law, be similar to a pear; but not to a banana and not to a pineapple, it must be more seriously noted under the terms of this decision that the famous company Apple Inc. has no monopoly on the concept of fruit in general under a brand name and therefore cannot not be opposed to any company which would operate in the computer field (in the broad sense) and which would choose a fruit (which is not an apple) as its distinctive sign.