No Ticket to Ride for Dutch wheelchair manufacturer in the ECJ

A decision of the European Court of Justice has supported the view of the European Trade Mark Office that a Dutch company, You-Q BV, cannot obtain trade mark protection for the name "Beatle" for its new electric wheelchair product.

Apple Corps, the company set up by the Fab Four to manage their rights, had successfully opposed You-Q`s trade mark application and the Judges agreed, supporting the trade mark office`s decision to reject You-Q`s mark, and ruling that to allow them to call their wheelchair "the Beatle" would enable the Dutch company to benefit unfairly from the association with Liverpool`s famous sons.

The ruling noted that some long-time Beatles fans may now of course be part of the generation of consumers being targeted by You-Q and expressed the view that "the image conveyed [by the Beatles name] is, even after 50 years of existence, still synonymous with youth and a certain counterculture of the 1960s, an image which is still positive. That positive image could benefit the goods covered by the mark applied for, since the relevant public, on account specifically of the handicap in question, would be particularly attracted by the very positive image of freedom, youth and mobility associated with the Beatles."

You-Q, not unexpectedly, have expressed dissatisfaction with the ruling, describing it as resting on "fiction."

The case is illustrative, perhaps, of the care that should be taken when seeking to use high-profile, "household name" brands in any commercial context, even in areas of business that might be considered "far apart" from the goods or services traditionally associated with them.

In English law, s.10(3) of the Trade Marks Act 1994 makes it an act of infringement, where a mark has a particular "reputation" in the jurisdiction, to use an identical or similar sign where "the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark."

Similarly, s.5(3) of the Act allows the Trade Marks Registry to refuse an application for a trade mark if it appears likely that the new mark may "dilute" the reputation of an existing, established mark by its use in other fields. Famously, in the mid-1990s, the Trade Marks Registry agreed with the financial services company "Visa" that an application to use "Visa" as a brand of condoms should not be registered for this reason.

Businesses contemplating using a well-known brand name in any commercial activity would always therefore be well advised to seek advice before proceeding either to trade with that name or to apply for trade mark protection, even where they believe, as You-Q clearly did, that there can be no basis to associate their product with the use of the earlier established mark.

This article is for general guidance only. It provides useful information in a concise form. Action should not be taken without obtaining specific legal advice.