It has been more than 10 years since Pink Lady America LLP filed an application before the European Union Intellectual Property Office for the "WILD PINK" wordmark in class 31, stirring a long-standing opposition by Apple and Pear Australia Limited (APAL) and its EU Licensee Star Fruits Diffusion SA, on the grounds of Article 8(1)(b) and 8(5) EUTMR, i.e. likelihood of confusion and breach of reputation with earlier PINK LADY marks (word and device).

The fate was the same for the figurative EU trademark application.

The dispute went through the assessments of the former Office for Harmonisation in the International Market, Opposition Division, and its Board of Appeal, both with a favourable outcome for PLA. 

It then made it all the way to the EU General Court, which, with its judgement in T-164/17 of 15 October 2018, annulled the Board of Appeal decision determining, among other things, the BoA had erred in concluding the signs were dissimilar overall.

The case was consequently remitted to the BoA for further prosecution.

Five years and many submissions later, the Board of Appeal remitted the case back to the Opposition Division, deeming it appropriate to ensure the two-instance review process, and also due to the substantial arguments put forward by the parties in the course of the proceedings.

With its decision of April 25, the EUIPO Opposition Division issued two decisions in respect of the wordmark and figurative EUTM applications: dismissing the oppositions in their entirety as well as the Opponent's repeated requests to re-open the examination of the applied-for mark.

The decisions, following important historical and judicial events as Brexit (the two UK marks have been also opposed by APAL) and the General Court's findings in T-164/17, carry out a thorough examination of the numerous criteria to be considered in signs and goods comparison, especially where the earlier marks enjoy a considerable reputation for some of the goods concerned (in this case, apples).

In respect of the likelihood of confusion (art. 8(1)(b) EUTMR), the Opposition Division found “consequently, despite the reputation of the earlier marks ‘PINK LADY’, the coincidence in the non-distinctive verbal element ‘PINK’ and the low degree of overall similarity it causes are insufficient to lead the consumers, even if displaying a low degree of attention, to perceive that even identical goods bearing the contested sign originate from the same or economically linked undertakings. Likelihood of confusion is even less likely in relation to the goods found to be similar to a low degree.” 

Furthermore, with respect to the "link" between the signs, the Opposition Division (which was called to make a thorough assessment by the GC's Judgment) found that “The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66).”

The Office then concluded “it is highly unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.”  

As a result, the oppositions were rejected in their entirety, and the Opponent was ordered to pay the fees and costs incurred by the Applicant.

Pink Lady America has been assisted by Roberto Manno, WebLegal.it. Roberto Manno is an intellectual property attorney located in Italy.