CA Paris, Pole 5, ch.2, April 12, 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 trademark’s reputation. The Court noted the very close link between the logo reproduced in the mark and the group The Rolling Stones, which enjoys a considerable reputation in the European Union, and which contributes directly to the reputation of the mark – in particular for the products and services in classes 25 (clothing) and 41 (entertainment).
However, in another case, this close connection was not considered sufficient to establish the reputation of the mark “BEATLES” except for “sound recordings”.
This was ruled by the Paris Court of Appeal. It thus confirmed the decision of the Director of the French Trademark Office (INPI) which 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 December 29, 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 mark which has acquired a reputation in the Union may oppose the registration of an identical mark or similar. This is the case whether the goods or services are identical, similar or not, but only where the use of the contested mark would take unfair advantage of the distinctive character or reputation of the earlier mark or would harm them without being duly affected. cause.
The Court, confirming the position of the director of the INPI, ruled that the reputation of the Beatles as a legendary group for more than fifty years does not automatically extend to the “BEATLES” brand. It is up to the proprietor of the mark to demonstrate that it is known to a large part of the relevant public for the goods and services covered by the registration (in this case, jewellery, ready-to-wear, audiovisual equipment, printing and various technical audiovisual or entertainment services) – which would indicate a clearly identified commercial origin.
After examining the evidence submitted, the Court ruled that the trade mark ‘BEATLES’ has acquired a reputation throughout the Union, and in particular in France, only for ‘phonograms’. Although the numerous references to “Beatlemania” established the reputation of the Beatles as a group, the Court held that they did not demonstrate that the mark enjoyed a high degree of recognition for the goods or services for which the fame was claimed.
The Court also rejects the argument relating to derived products, which it considers to be a common practice in successful bands, but does not allow the conclusion that the mark is known for all the products invoked, since the consumer will apprehend the sign as referring to the name of the group and not as designating a specific economic operator.
Moreover, since brand reputation may change over time and must be assessed at the time it is invoked, previous decisions regarding the reputation of the “BEATLES” brand were not considered relevant.
Finally, the Court ruled that the proprietor of the mark had not demonstrated the existence of a link which the public would have established between, on the one hand, the mark “BEATLES”, renowned for “sound recordings”, and, on the other hand, the goods and services contained in the contested registration application.