Apple Inc. filed an opposition action against the word & device trademark BANANA Computer, claiming services in classes 35 and 36 arguing that as both signs refer to fruits and the reputation of the prior mark is well known, a risk of confusion exists.
The Opposition division rejected these arguments.
The first ground was based on the existence of a risk of confusion. In this regard, the opponent and the European Office carried out a very accurate comparison of the signs from visual and conceptual standpoints.
Considering the visual comparison, the European Office excluded the existence of a similarity owing that both signs only coincide in irrelevant aspects notably the right-hand side orientation.
Then, they made a comparison from a conceptual standpoint. Indeed, Apple Inc. claimed that apples and bananas are closely related, the average consumer instantly recognizing them as belonging to fruits due to the very common nature of these specific fruits. The European Office did not consider this argument and explained that the fact that they belong to a same group does not constitute a case of conceptual similarity. Indeed, the category of fruits is too wide and considering that two terms are conceptually similar whereas they belong to a very broad family is not enough to recognize a similarity.
Finally, in order to specify its analysis, the European Office explained that Apple and Banana could not be considered as similar as they differ by their origins, textures and tastes.
Besides, the decision referred to older decisions in which a comparison between fruits was made. Indeed, while the Court already recognized a similarity between an apple and a pear, this similarity was not recognized between an apple and a pineapple. Each fruit has specific characteristics which must be considered in order to assess the existence of a similarity and a risk of confusion or not.
Regarding the second ground based on the article 8(5) EUTMR, the European Office held this to be inapplicable, considering that the conditions of its claim were not met. Indeed, due to the weak similarity between the signs, the trademark owned by Banana Computer could not take unfair advantage of the Apple trademarks. The ground based on the reputation must be used in addition to others pleas but is not on its own sufficient to reject rejected the registration of a trademark.
Following this decision, Apple filed an appeal. However, as they did not file comments and evidence, the appeal has been rejected and the decision confirmed.
With this decision, it may be observed that the European Office is very cautious and rigorous regarding the assessment of a risk of confusion and notably the finding of conceptual similarity.
From a practical standpoint, this decision is favorable as it shows that it is not possible to create a monopoly on a general concept for an entire domain. You can take a pick from the fruit salad.