Articles and Publications
Apple Trademark Dispute
01/Jun/2006
After twenty five years of trademark dispute, Apple Computer’s protracted court battle with the Beatle’s music record label Apple Corps came to a close in May 2006 following the UK High Court’s decision that Apple Computer was not breaching an agreement made in 1991 between the two firms. Although this latest conflict was sparked in 2003 by Apple Computer launching iTunes online music store, the origin of the dispute can be traced to a time when such technology had not even been imagined.
The case initially came to light back in 1980 as a result of the potential for trademark conflict between Apple Corps (set up in 1968 by the Beatles), whose trademark is a green apple, and Apple Computer (set up by Macintosh Machine in 1977) whose trademark is an apple with a chunk taken out of the right hand side. A trademark is essentially an identification symbol capable of being represented graphically and capable of distinguishing goods and services of one trade from those of another. As such, Apple Corps was concerned that the similar trademark logos of apples, both literally and pictorially, could infringe upon the best interest of their record label business and their rights as registered trademark holders.
As registered trademarks, both Apple Corps Limited and Apple Computer Inc. have the exclusive right to use the ‘apple’ mark for their goods. Registration gives a virtual monopoly and creates a territorial right for a potentially indefinite period. However, the ongoing problem for the two highlighted companies has been the similarity of their trademarks.
After an initial pact in 1981, whereby the companies agreed to share the use of the apple trademark, under certain agreed terms, it was assumed that this trademark dispute would no longer be an issue. Apple Computer could use their apple trademark in relation to computer goods and services, whilst Apple Corps could only use their trademark within the field of music and sound recordings and entertainment.
Problems emerged with advancements in technology, both within the Information Technology field and the music field. As the two industries began to increasingly encroach on each other, Apple Computer created a MIDI (Musical Digital Interface) which allowed the computer user to create, record and edit music. Apple Corps saw this as a breach of the agreement and in 1991, after much legal wrangling, a settlement of $26.5 million was agreed in favour of the Beatles record label and a new agreement was reached between the two companies.
The latest controversy emerged after Apple Computer’s release of the music store and computer program, Itunes, which works alongside the iPod MP3 player previously released in 2001. The iTunes music store clearly displayed the apple logo, and this was seen by Apple Corps as a breach of the 1991 trademark agreement. As far as the record label company was concerned, this move constituted a breach by Apple Computer of their obligation to use the trademark only within the domain of computer technology and services. Pursuant to this, Apple Corps sued for infringement.
In considering this latest development, High Court judge Mr Justice Mann ruled that iTunes was "a form of electronic shop" and was not involved in creating music. He concluded that "the use of the apple logo [by Apple Computers] is a fair and reasonable use of the mark in connection with the service, which does not go further and unfairly or unreasonably suggest an additional association with the creative works themselves." Put simply, Apple Computers had not and was not violating any agreement made with the Apple Corps. Unsurprisingly, the Beatles record label company, which was ordered to pay the other side’s legal costs, estimated at £2 million, do not agree with the decision and have indicated that they plan to appeal.
As to whether the Apple dispute has permanently been resolved, we will have to wait and see. However, if you have any queries concerning use of a trademark, or any form of intellectual property, please contact Lee & Priestley and ask to speak to one of our highly experienced IP lawyers.
The case initially came to light back in 1980 as a result of the potential for trademark conflict between Apple Corps (set up in 1968 by the Beatles), whose trademark is a green apple, and Apple Computer (set up by Macintosh Machine in 1977) whose trademark is an apple with a chunk taken out of the right hand side. A trademark is essentially an identification symbol capable of being represented graphically and capable of distinguishing goods and services of one trade from those of another. As such, Apple Corps was concerned that the similar trademark logos of apples, both literally and pictorially, could infringe upon the best interest of their record label business and their rights as registered trademark holders.
As registered trademarks, both Apple Corps Limited and Apple Computer Inc. have the exclusive right to use the ‘apple’ mark for their goods. Registration gives a virtual monopoly and creates a territorial right for a potentially indefinite period. However, the ongoing problem for the two highlighted companies has been the similarity of their trademarks.
After an initial pact in 1981, whereby the companies agreed to share the use of the apple trademark, under certain agreed terms, it was assumed that this trademark dispute would no longer be an issue. Apple Computer could use their apple trademark in relation to computer goods and services, whilst Apple Corps could only use their trademark within the field of music and sound recordings and entertainment.
Problems emerged with advancements in technology, both within the Information Technology field and the music field. As the two industries began to increasingly encroach on each other, Apple Computer created a MIDI (Musical Digital Interface) which allowed the computer user to create, record and edit music. Apple Corps saw this as a breach of the agreement and in 1991, after much legal wrangling, a settlement of $26.5 million was agreed in favour of the Beatles record label and a new agreement was reached between the two companies.
The latest controversy emerged after Apple Computer’s release of the music store and computer program, Itunes, which works alongside the iPod MP3 player previously released in 2001. The iTunes music store clearly displayed the apple logo, and this was seen by Apple Corps as a breach of the 1991 trademark agreement. As far as the record label company was concerned, this move constituted a breach by Apple Computer of their obligation to use the trademark only within the domain of computer technology and services. Pursuant to this, Apple Corps sued for infringement.
In considering this latest development, High Court judge Mr Justice Mann ruled that iTunes was "a form of electronic shop" and was not involved in creating music. He concluded that "the use of the apple logo [by Apple Computers] is a fair and reasonable use of the mark in connection with the service, which does not go further and unfairly or unreasonably suggest an additional association with the creative works themselves." Put simply, Apple Computers had not and was not violating any agreement made with the Apple Corps. Unsurprisingly, the Beatles record label company, which was ordered to pay the other side’s legal costs, estimated at £2 million, do not agree with the decision and have indicated that they plan to appeal.
As to whether the Apple dispute has permanently been resolved, we will have to wait and see. However, if you have any queries concerning use of a trademark, or any form of intellectual property, please contact Lee & Priestley and ask to speak to one of our highly experienced IP lawyers.
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