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Is it a Bird? Is it a Plane? No, it’s an Infringement of a Reputable Mark!

The EUIPO recently upheld an opposition by DC Comics to protect its reputable SUPERMAN mark from a similar sign, despite the applicant’s sign covering a different class of goods. The decision confirms that, for there to be a sufficient risk of injury under Article 8(5) EUTRM, the public must perceive a ‘link’ between the sign and the earlier mark. The mere fact the two marks cover different classes of goods and services is not inherently a barrier to such a link. Here the link arose largely from the earlier mark’s reputation, and commercial connections between the two classes in question.

Some will see the EUIPO as swooping to the rescue to protect the hard-earned reputations of brands; others will see this as an unreasonable expansion of rights beyond a mark’s designated classes, and a Kryptonite to legitimate activity.

Background

In April 2018, Magic Box applied to register the below figurative sign for goods in Class 28 of the Nice Classification (decorations for Christmas trees, games, toy figures, board games, game boards for trading card games, video game apparatus, toys).

DC Comics filed an opposition under Articles 8(5) EUTMR, claiming that the applicant’s sign conflicted with its earlier mark – a figurative SUPERMAN mark (shown below) designating goods and services across multiple Nice Classes. Importantly, however, this mark does not extend to goods in Class 28.

EUIPO Decision

The EUIPO noted that, in order for an earlier mark to successfully oppose an applicant’s sign under Article 8(5), the following criteria must be satisfied:

  1. The signs must be either identical or similar
  2. The opponent’s trade mark must have a reputation. The reputation must be prior to the applicant’s filing, must exist in the territory concerned and, crucially, must relate to the goods and/or services on which the opposition is based
  3. Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

1) Similarity of signs

The marks were deemed to be sufficiently similar in at least one aspect of comparison.

2) Reputation

For an earlier mark to have a sufficient reputation, it must be known by a significant part of the relevant public for the goods or services it covers. The EUIPO consequently limited their considerations to goods in Class 16 (printed matter; printed periodical publications; books) and services in Class 41 (entertainment services all relating to the production and distribution of films, video tapes, cassettes, tapes, records and compact discs). On the evidence it held that a sufficient reputation had been demonstrated for Class 16 – specifically for comic books – but not for Class 41 services.

3) Risk of injury

Case law in this area has interpreted Article 8(5) to mean that, in order to demonstrate the risk of injury, the opponent must show that the relevant public will establish a ‘link’ between the signs. Citing the list of relevant factors from the Intel case, they noted the visual and aural similarity of the signs, as well as the significant reputation and distinctiveness of the earlier mark (for comic books).

The noteworthy aspect of the decision was the EUIPO’s next step – it found a link between the signs despite them designating different classes “as the former constitutes one of the most usual commercial extension of the latter“. Their reasoning was that brands selling comic books often expand into other products bearing the mark via third-party merchandising agreements. Such products include toys, games and Christmas Decorations, all falling within the designated goods of the applicant’s sign.

The EUIPO found that, on balance, there was a sufficient link, and that subsequently the sign would take unfair advantage of the earlier mark.

Comment

In and of itself, the court’s reasoning around merchandising expansion of comic book franchises has a clear commercial justification. However, it may open the door to more contentious claims (such as by less well-known brands than the Man of Steel) and further incremental expansion.

Copyright 2020 K & L GatesNational Law Review, Volume X, Number 117
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About this Author

Simon Casinader, KLGates, IP lawyer
Senior Associate

Mr. Casinader is a Senior Associate in Melbourne's intellectual property team with a range of experience protecting and enforcing intellectual property rights. This experience includes developing and enforcing brand protection strategies on matters for trade mark, copyright and design owners, and providing contentious and non-contentious advice in relation to all aspects of intellectual property law.

Mr. Casinader has extensive experience prosecuting Australian, New Zealand and international trade mark applications as well as trade mark and patent opposition proceedings before IP...

+61.3.9640.4367
Jed Holloway IP Procurement & Portfolio Management K&L Gates London, UK
Trainee Solicitor

Jed Holloway is a trainee solicitor at the firm’s London office. He is currently gaining experience across the intellectual property, commercial law and competition teams. His experience includes work in the corporate, planning and environmental, and litigation and dispute resolution practice groups.

Jed also works on various firm pro bono projects, including the Cyber Civil Rights Law Project, Commonwealth Human Rights Initiative, and Legal Advice Centre drop-in sessions. Prior to joining the firm, he operated the phone lines for the Legal Advice Centre triage service.

...

44.(0)20.7360.8138
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