1. Overview of the Dispute

The dispute between Apple Inc. and Beijing Xipulin Trading Co., Ltd., resolved by the EUIPO Opposition Division on 27 October 2025, reveals how the contemporary architecture of European trade mark law encounters, and must adjudicate, the hybrid nature of software-driven branding. What appears at first to be a dispute about two app-style icons, each portraying an orange square and a white stylised pen, becomes, when placed under the institutional discipline of Articles 8(1)(b), 8(5), and 8(4) EUTMR, a demonstration of the ways in which figurative symbolism, technological ecosystems, evidentiary precision, and the burdens of substantiating non-registered rights interact. Through its reasoning, the Opposition Division not only clarifies the proper scope of protection afforded to narrowly defined software marks but also articulates the evidentiary rigour that even globally renowned market actors must meet when seeking to invoke reputation or national law rights before an EU institution.

1.1. Background of the Parties and the Signs

Apple entered the proceedings as proprietor of International Registration No. 1 425 634, covering in the European Union a figurative mark designed as an orange square with rounded edges, bisected by a diagonal white pen and accented by a discreet horizontal line.

EU Trade Mark Registration No. 1 425 634

Beijing Xipulin sought registration of a similar, yet not identical, composition: an orange square, also rounded, also featuring a white pen in comparable orientation, but with a lighter chromatic palette and a corner that appeared to be folded or lifted. While the structural resemblance between the two signs was perceptible even to an untrained eye, the legal significance of this proximity, particularly as applied to a broad array of digital goods, required a level of analysis considerably more nuanced than visual comparison alone.

EU Trade Mark Application No. 18 727 486

The parties’ commercial roles also differed in scale and context. Apple grounded its opposition in its established ecosystem, proposing a historical narrative linking the earlier mark to the Pages software suite. The applicant, in contrast, positioned its filing as a neutral, independent symbol for its intended hardware and electronic goods. The tension between Apple’s vast commercial presence and the EUIPO’s insistence on precisely defined categories of goods ultimately shaped much of the Division’s reasoning.

1.2. The Structure of the Opposition

Apple pursued a tripartite strategy. First, it invoked Article 8(1)(b) EUTMR, alleging that the similarity between the marks, combined with the partial identity or similarity between the respective goods, would induce the public to assume an economic connection between the undertakings. Second, Apple invoked Article 8(5), claiming reputation of the earlier mark and asserting that the applicant’s use of the contested sign would take unfair advantage of, or harm, Apple’s allegedly established goodwill. Third, Apple invoked Article 8(4), asserting the existence of non-registered rights in various EU Member States grounded in national unfair-competition principles. As the decision shows, each ground generated its own evidentiary challenges, and Apple’s success would ultimately hinge on only one of them.

2. The EUIPO’s Examination under Article 8(1)(b)

The Division’s approach to Article 8(1)(b) unfolded not through a mechanical ticking of doctrinal boxes but through a narrative reasoning that placed the signs and goods in their commercial context. Apple’s earlier mark was registered for software designed specifically for printing documents containing text and graphics. Beijing Xipulin’s specification, by contrast, contained an extensive catalogue of digital products, from apps to computers to wearable devices, that intersected with printing software in varying degrees.

The Office recognised that some of the applicant’s goods were naturally proximate to Apple’s protected software. In the realm of downloadable applications, recorded software, and software applications, overlap with printing programs was inherent and unavoidable; these categories were broad enough to encompass Apple’s software. Other items, such as computers, tablets, and notebooks, stood in a complementary relationship with printing software and therefore occupied a field of commercial similarity. Devices such as smartphones or smartwatches were more distant, though still connected through contemporary ecosystem logic, where software and hardware circulate within integrated product families. Still further afield lay routers, televisions, cameras, digital locks, or rechargeable batteries, items whose technological sophistication did not suffice, in the EUIPO’s view, to create legal proximity to printing software merely because they functioned through digital interfaces.

Parallel to this examination of goods, the Division turned to the signs themselves. The reader of the decision is struck by the Office’s attentiveness to visual impression as the decisive mode of perception for the goods concerned. The two figurative signs, in the Division’s view, shared an unmistakable structural equivalence: each offered the consumer the image of a diagonally positioned pen, centralised within a square field of warm orange. The divergences, whether in shading, pen thickness, or the slight “page-turn” effect in the contested sign, were described as minor inflections that did not disrupt the broader impression. With no verbal elements, aural comparison was irrelevant; conceptually, both signs were connected to writing, editing, or document handling, even if certain aspects of these connotations were weakly distinctive.

Notably, the Division rejected Apple’s contention that the earlier mark enjoyed enhanced distinctiveness acquired through use. Although Apple adduced substantial evidence relating to the Pages application, the Office stressed a legal distinction of real consequence: the earlier mark, as registered, covered printing software, not word-processing software. Because the evidence overwhelmingly related to software used for document creation rather than printing, the enhanced distinctiveness claim failed. The earlier mark was therefore deemed inherently, but only ordinarily, distinctive.

Despite this, the Office concluded that the convergence of high visual similarity and at least partial identity or similarity of goods sufficed to establish a likelihood of confusion. The purchasing public relies primarily on visual cues when encountering software and electronic devices, and imperfect recollection of visually akin signs could reasonably lead consumers to assume a connection between the undertakings. For this reason, the opposition was upheld for all goods presenting degrees of similarity to Apple’s protected software, while the opposition failed for those goods deemed objectively dissimilar.

3. The Rejection of the Claim under Article 8(5)

The Office’s treatment of Article 8(5) EUTMR reflects a firm insistence on doctrinal clarity. Reputation must be shown in relation to the goods for which the mark is registered, not adjacent goods, not similar goods, and certainly not goods for which the public may colloquially recognise the brand. Apple’s evidence spoke extensively to the visibility and use of the Pages icon in connection with word-processing functions. Yet none of the submissions demonstrated that the earlier mark had acquired reputation specifically for printing software. Without satisfying this foundational requirement, the remaining elements of Article 8(5), the risk of unfair advantage or detriment, did not require evaluation. The claim accordingly failed in its entirety.

4. The Failure of the Article 8(4) Ground

The narrative becomes even more stringent when one examines the Office’s response to Apple’s attempt to assert unregistered national rights. The Division underscored that opponents invoking national law must present the law itself—its authoritative text, its translation, and sufficient commentary or case-law to allow the Office to understand its operation. Apple’s submission did not reproduce the content of the German or Austrian legal sources upon which it relied, nor did it explain how those laws would treat the icon as a protectable unregistered trade sign. The EUIPO, constrained by the rule that it will not investigate national law ex officio, concluded that Apple had not discharged its burden.

Non-Registered Trade Mark

Even if the law had been properly submitted, Apple also failed to prove that the sign had been used with more than local significance in Germany or Austria. Much of the evidence related to the EU as a whole, or even to Australia, and could not be disaggregated to establish intensive use in individual Member States. Thus, both the legal and factual predicates of Article 8(4) were left unproven, and the claim was dismissed.

5. Summative Insights

The decision in Opposition No. B 3 181 443 is a compelling illustration of the disciplined manner in which the EUIPO filters complex, multifaceted opposition strategies through the strict procedural and evidentiary framework of EU trade mark law. Apple’s partial victory, grounded solely in Article 8(1)(b), affirms the Office’s readiness to protect earlier rights where the visual proximity of signs and commercial overlap of goods justifies such protection. Yet the rejection of the Article 8(5) and Article 8(4) grounds equally affirms that fame, market dominance, and global recognisability cannot substitute for doctrinal exactitude.

The ruling also acts as a cautionary precedent for brand owners whose earlier registrations cover narrowly defined goods. Evidence of use must be tailored to the precise wording of the specification; reputation must be shown for the actual goods protected; national law claims must be accompanied by the law itself; and territorial use must be demonstrated with granularity. The outcome thus symbolises both the flexibility and the discipline of the EU trade mark system: flexible enough to recognise confusion where visual and commercial realities support it, but disciplined enough to deny expansive claims not buttressed by rigorous evidence.

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