PINK LADY versus WILD PINK: it ain’t over till the pink lady sings

*This article first appeared in the World Trademark Review here, on the 24th of October 2018.

 

• Apple and Pear Australia opposed registration of WILD PINK based on earlier PINK LADY marks;
• EUIPO found that marks were visually, phonetically and conceptually dissimilar;
• Court disagreed, finding that marks had, at very least, low degree of visual, phonetic and conceptual similarity.

In Apple and Pear Australia Ltd v EUIPO (Case T‑164/17), the General Court has annulled a decision that had previously gone in favour of Pink Lady America (exclusive master licensee of the PINK LADY trademark in the United States) in its trademark dispute with other fruit organisations in the European Union.

Background

In 2013 Pink Lady America applied to register WILD PINK as a trademark in Classes 29, 30 and 31 for vegetables, fruit flavourings and fresh fruit. The principal goal of the development of the WILD PINK trademark was reportedly to allow US apple exporters to sell improved Cripps Pink varieties into the European Union, where the apple industry is currently strictly regulated by restrictive plant variety rights. This was strenuously objected to and opposed by Apple and Pear Australia – an industry body
representing Australia’s apple and pear growers (the proprietor of the PINK LADY EU trademark) in conjunction with Star Fruits Diffusion, the organisation that manages the licences and brands of fruit companies including the Pink Lady brand. The opponents also relied on earlier registered Benelux, German, UK and French PINK LADY word and figurative marks.

In 2014 the opposition was rejected by the Opposition Division, which denied any confusing similarity between the marks. This decision was subsequently affirmed by the Fourth Board of Appeal of the EUIPO, which dismissed the appeal on the basis that:

• the word element ‘pink’ could be perceived by the relevant public as descriptive of the colour of the goods concerned, namely fruit and fruit essences of the goods involved;
• the marks were visually and phonetically dissimilar on account of the reversed position within the marks of the common word element ‘pink’ and the fact that that element is descriptive; and
• there was no conceptual similarity between the marks because “the term ‘pink lady’ will be perceived as referring to a lady dressed in pink or characterised by that colour, whereas the term ‘wild pink’ will be understood as referring to a shade of pink that is ‘somehow wild’”.

The industry bodies, thoroughly dissatisfied with the position, appealed to the General Court, which has now annulled the previous EUIPO decision granting the EU word mark WILD PINK.

General Court decision

The court, in determining whether the Board of Appeal was right in finding that the marks at issue were different overall, considered in detail the meaning and dominance of the word element ‘pink’ in the disputed marks. It was decided that the term ‘pink’ (namely a word indicating a colour) must be regarded as a basic English word that, regardless of the various languages spoken in the European Union, the average consumer of the general public would be capable of understanding. The court then went on to consider whether the word ‘pink’ was descriptive of the goods (fruits) covered by the signs at issue and decided that, as the fruits involved included apples, raspberries, strawberries, cherries and pomegranates, the word ‘pink’ had to be regarded as descriptive of the goods for the entire specification.

The court also examined whether, due to its descriptive nature, the word ‘pink’ had a negligible role in the marks in question, and concluded that account must be taken of the fact that the word element ‘pink’ does not play a negligible role in the marks at issue. It held that the Board of Appeal was wrong to completely ignore the presence of the word ‘pink’ when comparing the marks, despite it being regarded as playing a secondary role in the marks due to its descriptive nature – upholding the principle that a descriptive element of a mark is not necessarily negligible in the overall impression produced by it. Case law has long supported this position; for example, in Líneas aéreas del Mediterráneo (Case T-194/09) it was held that “[t]he fact that an element is descriptive or otherwise non-distinctive is not on its own sufficient to conclude that that word is negligible in the overall impression produced by that mark”.

In the present case, the court concluded that there was a low degree of visual similarity between the marks as they both contained the word ‘pink’. On the same basis, a low degree of phonetic similarity was also found between the marks. From a conceptual perspective, the court decided that both the relevant English-speaking and non-English-speaking public would perceive the presence of the word ‘pink’ in both signs as denoting the colour pink. As both signs refer to the colour pink, a degree of conceptual similarity between the marks could not be ruled out. Consequently, the Board of Appeal had erred in holding that the signs at issue were visually, phonetically and conceptually dissimilar.

On this basis, the court has now annulled the decision of the Board of Appeal and has upheld the opposition of the proprietors of the earlier marks.

Comment

This decision unfortunately topples the apple cart for Pink Lady America in its bid to break into the European apple market.

 

 

 

 

 

Sumi Nadarajah

Partner | Trade Mark Attorney