CA Paris, Pôle 5, ch.2, 12 avril 2022
In a recent infringement case involving the Rolling Stones’ iconic “Lips n’ Tongue” logo, registered as a trademark, the Paris’ court of appeal upheld the reputation of the trademark. The Court noted the very close link between the logo reproduced in the trademark and the group The Rolling Stones, which enjoys considerable fame in the Union, and which directly contributes to the reputation of the trademark – in particular for goods and services in classes 25 (clothing) and 41 (entertainment).
However, in another case, this close link was not considered sufficient to establish the reputation of the trademark “BEATLES” except for “sound records”.
This is what the Paris court of appeals ruled. It thus confirmed the decision of the Director of French trademarks office (INPI) who rejected the opposition filed by Apple Corps Limited – owner of the European Union trademark “BEATLES” – against the application for registration of the trademark “THE BEATLES” filed on 29 December 2019 to designate goods and services in classes other than those covered by the registration of the earlier trademark “BEATLES”.
Indeed, on the basis of Article 8 of Regulation (EU) No. 2017/1001, the owner of a trademark which has acquired a reputation in the Union may oppose the registration of an identical or similar trademark. This is the case irrespective of whether the goods or services are identical, similar or not, but only where the use of the contested trademark would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier trademark without due cause.
The Court, confirming the position of the INPI’s Director, held that the reputation of the Beatles as a mythical band for over fifty years does not automatically extend to the “BEATLES” trademark. It is up to the owner of the trademark to demonstrate that it is known to a large fraction of the relevant public for the goods and services covered by the registration (in this case, jewellery, ready-to-wear goods, audiovisual material, printing and various audiovisual or entertainment technical services) – which would indicate a well-identified commercial origin.
After examining the evidence communicated, the Court ruled that the trademark “BEATLES” has acquired a reputation throughout the Union, and particularly in France, only for “sound records”. Although the numerous references to the “Beatlemania” establish the reputation of the Beatles as a band, the Court considered that they did not demonstrate that the trademark enjoys a high degree of recognition in respect of the goods or services for which reputation was claimed.
The Court also rejected the argument relating to the derivative products, which it found to be a practice common to successful bands, but do not allow to conclude that the trademark is known for all the goods relied on, since the consumer will apprehend the sign as referring to the name of the group and not as designating a specific economic operator.
In addition, because the reputation of the trademark may change over time and must be assessed at the time it is invoked, previous decisions on the reputation of the trademark “BEATLES” were not considered relevant.
Finally, the Court held that the owner of the trademark failed to demonstrate the existence of a link which the public would have made between, on the one hand, the trademark ‘BEATLES’, which has a reputation for ‘sound recordings’, and, on the other hand, the goods and services in the contested registration application.