What has happened?

• A significant issue for brand owners is the use and registration by third parties of similar marks for goods and services that arguably carry negative connotations. The EUIPO recently considered this issue in the context of an EUTM application for e-cigarettes. 

• In a ruling that will be welcome news for brand owners, the EUIPO Opposition Division upheld on opposition to the registration of the mark PINK LADY VAPE for e-cigarettes etc on the basis that the use of the mark would be detrimental to the reputation of the earlier PINKLADY EUTM, registered for apples etc. This was despite the goods concerned being wholly dissimilar.

• The strength of the reputation of the PINKLADY mark (which is a brand - not a variety - of apples), and the health risk posed by tobacco and vaping products, were key issues.

• This decision will be especially useful to the owners of well-known brands in the food and drink industry, whose marks are often used by vape manufacturers as flavour descriptors and/or to form their own product packaging.

• The options for those whose brands do not have a reputation (ie which are not well-known in the market) in this scenario are usually more limited since a claim can only be brought if the goods/services in question are identical/similar to those for which their mark is registered or where there is bad faith. 

Want to know more?

Background

An EUTM application was filed by Qin Jiang for the mark PINK LADY VAPE covering class 34 goods, including electronic cigarettes, liquid nicotine, goods containing tobacco, and related accessories.

Apple and Pear Australia Limited filed an opposition relying on their EUTM registration for PINKLADY covering Agricultural, horticultural products including fruit, grains, plants and trees, especially apples and apple trees in Class 31. The opposition was based on Article (5) EUTMR, which prohibits the registration of any mark identical or similar to an earlier mark with a reputation where the use of the later mark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

Evidence of reputation

To support its argument that the PINKLADY mark had a reputation for the goods covered in its registration, the opponent filed evidence including:

• sales volumes

• market surveys showing PINKLADY had " high top-of-mind and spontaneous awareness levels" in Northern Europe

• various articles discussing PINKLADY apples

• advertising and promotional activities, dating as far back as the year 2000

• extracts from the opponent's website and social media pages

• evidence of sponsorship and hosting events.

The EUIPO found the opponent had established a reputation for PINKLADY in respect of "apples".

The decision

The EUIPO concluded as follows:

• On the basis of the evidence filed, the PINKLADY mark "was subject to longstanding use and continuous advertising" resulting in a considerable degree of reputation for apples. This reputation extended to a substantial part of the EU population. 

• PINKLADY would be regarded as a single unit with a conceptual meaning that had no direct correlation to the goods covered by the registration. On this basis, PINKLADY was distinctive for apples.

• PINKLADY was the distinctive element in both the earlier mark and the mark opposed. Conversely, VAPE was an English word relating to electronic cigarettes or the act of inhaling nicotine vape from an electronic cigarette, and would be perceived as "directly [giving] information about the type of goods" for the majority of the goods covered in the application. 

• Whilst the VAPE element in the mark opposed would not go unnoticed by the average consumer, the fact that PINKLADY was at the beginning of both marks, and was formed of basic English words, meant that the signs were visually and aurally similar to a high degree. Conceptually, the marks were held to be similar to at least an average degree, depending on the distinctiveness of the VAPE element.

• In considering whether a link would be established between the earlier mark and the mark opposed, the EUIPO noted that it is possible for an earlier mark to have a reputation to such an extent that a connection will be made between the earlier mark and a later sign, even where the relevant consumers are wholly distinct from one another. 

• The EUIPO noted that e-cigarettes etc and "apples" differed in their nature, purpose and method of use, were produced by different companies, and were neither complementary nor in competition, rendering them dissimilar. Nonetheless, it agreed with the opponent that the tobacco industry commonly produces various flavours and aromatised tobacco products "to enrich the smoking experience."

• Bearing in mind all of the above, the EUIPO held that it is likely that consumers seeing the PINK LADY VAPE mark in relation to e-cigarettes etc would bring to mind the earlier PINKLADY mark. This is despite the goods being dissimilar. 

• As for whether there was a risk of injury to the opponent's reputation, the EUIPO wholly agreed with the arguments made by the opponent regarding the negative perception and harmfulness of e-cigarettes etc. In its submissions, the opponent had argued that tobacco products, including e-cigarettes, are widely known to be harmful to human health and that there is a negative perception around these products. Such an image was in complete contrast to the image consumers had of apples, being linked to a healthy lifestyle and diet. On this basis, there would be detriment to the repute (ie tarnishment) of the PINKLADY registration. Further, no due cause to use the opposed mark had been shown by the applicant.

As a result, the opposition was successful and the PINK LADY VAPE application was rejected for all the contested goods.

What does this mean for you?

• Vaping has grown in popularity over the years, as noted in the decision. It is especially common for manufacturers of vaping products to use well-known brands as flavours to entice consumers, which can include children. Brand owners most at risk tend to be those in the food and drink industry, with Trading Standards noting that packaging and flavours often replicate popular confectionery brands. 

• Brand owners should be on the look-out for the use of their brands in the market in relation to vaping and related products and formally watch for any conflicting trade mark and domain name applications.

• The decision is helpful confirmation that tarnishment can be found where marks with a reputation are used for vaping and related products. Brands without a reputation will generally find it more difficult to stop this type of use since likelihood of confusion (and double identity) claims can only be brought where the goods/services concerned are identical or similar. In this scenario, there might be scope to bring a bad faith claim, depending on the particular facts.