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By Haydn Fox

11/05/20

IP Insight: DC Comics Prevail in Trade Mark Opposition against Magic Box

Industry giant DC Comics was recently able to demonstrate the strength of its Superman brand in a successful trade mark Opposition on the basis of Article 8(5) of the EU Trade Mark Regulation.

Background 

The applicant in this dispute, Magic Box INT. Toys S.L.U. sought to register the figurative ‘Superzings’ trade mark for goods in Class 28 of the Nice classification, to extend protection over items such as toys, Christmas decorations and dolls.

DC Comics opposed the application due to its pre-existing figurative ‘Superman’ EU trade mark, registered in respect of Classes 3, 9, 14, 16, 21, 24, 25, 28, 30, 32 and 41. The opposition was filed in accordance with Articles 8(1) and 8(5) EUTMR, on the basis that the earlier mark had a considerable reputation in the European Union, and that the applicant’s sign conflicted with the earlier trade mark.

Grounds for refusal under Article 8(5) EUTMR are only applicable when the following conditions are met.

1) The signs must be either identical or similar;

2) The opponent’s trade mark must have a reputation. The reputation must exist prior to the filing of the contested trade mark; it must exist in the relevant territory and for the goods on which the opposition is based; and

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 pre-existing trade mark.

 

The Opposition

DC Comics sought to claim that it’s earlier ‘Superman’ trade mark enjoyed a substantial reputation in the European Union. However, in its observations, DC Comics only claimed reputation in respect of classes 16 and 41.

The Opposition Division was satisfied to proceed purely based on these classes, particularly considering the overarching principle of the economy of proceedings. However, having reviewed the extensive evidence submitted by DC Comics, the Opposition Division ruled that the earlier trade mark had gained a significant reputation in relation to class 16 only. The evidence did not succeed in establishing that the trade mark enjoyed reputation for entertainment services relating to the production and distribution of films, videotapes, cassettes, tapes, records and compact discs in class 41. Instead, the evidence referred to the films themselves – which are afforded protection under Class 9.

The examination proceeded on the basis of reputation for the goods in Class 16.

 

The Signs

Considering the overall similarity between the signs, the Opposition Division evaluated the marks in terms of their visual, aural and conceptual resemblance.

Visually, the Opposition Division ruled that the lettering shared a similar style, particularly in regards to the curvature of the words and the manner in which the letters change from large to small. The ‘Rivals of Kaboom’ element evidently detracts from the overall visual similarity, but the Opposition Division attached minimal weight to this aspect of the mark as the secondary feature to the ‘Superzings’ print.

Aurally, the Opposition Division considered that the signs retained a degree of similarity as a result of the shared ‘Super’ element, which was effectively the predominant feature of both signs.

Conceptually, the signs were judged to share a low degree of resemblance given the connotations of the word ‘Super’. Again, when making the comparison, minimal importance was attached to the ‘Rivals of Kaboom’ lettering of the sign. Overall, the Opposition Division were agreed that the requisite degree of similarity existed between the signs.

At the next phase of the Opposition, it was considered whether there existed a ‘link’ between the signs.

As confirmed in Intel and Adidas, in order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs.

The Opposition Division found that a link did exist between the applicant’s goods under Class 28 and the opponent’s reputed goods in Class 16, as the formers constitute one of the most usual commercial extension of the latter. To this end, it is common practice for proprietors of comic book brands to grant rights to third parties for merchandising agreements.

These agreements often empower third parties to manufacture different kinds of products bearing the trade mark. These products are often toys and games – but may extend to Christmas decorations. On this basis, the Opposition Division reasoned that the relevant consumer is likely to form a mental ‘link’ between the two signs.

 

Article 8(5) EUTMR

In order for Article 8(5) EUTMR to apply, the proprietor of the earlier mark must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ – as outlined in Royal Shakespeare.

DC Comics argued that given the array of goods protected under the trade mark, consumers are accustomed to encountering official and licensed products associated with the comics, films and the ‘Superman’ trade mark.

The Opposition Division agreed; “It is very likely that the use of the contested sign for all the contested goods in Class 28 would take unfair advantage of the significant degree of reputation of the earlier trade mark and the investments undertaken by the opponent to achieve that reputation.”

The contested mark was rejected for all the contested goods, with the Opposition Division deeming the opposition well-founded under Article 8(5) EUTMR. Curiously, the Opposition Division did not attach any importance to the fact that reputation could not be established in relation to all goods and services covered by the earlier mark. 

 

Our IP Insight

This decision represents the significance and value in how evidence is presented within the opposition procedure.

The way in which DC Comics only claimed reputation in respect of Classes 16 and 41 represents a curious tact in that it may have benefitted the opposition by heightening the perception that the mark was distinctive and reputable. This perception was accentuated by DC Comics in how they effectively removed the opportunity for any consideration of Classes in which the mark was perceived to be less reputable.​

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