The UK IPO, at least, seems resistant to Wonder Woman’s superpowers, after it rejected DC Comics’ opposition to a trade mark application for WONDER MUM for goods such as soaps, perfumery and deodorants in class 3.
The application was filed by consumer goods company Unilever on 17 December 2019. DC Comics objected to the WONDER MUM trade mark on three grounds:
(1) likelihood of confusion under Section 5(2)(b) of The Act. This was based on DC Comics’ EU trade mark for WONDER WOMAN which includes identical/similar goods in class 3;
(2) the existence of a link, tarnishment and unfair advantage under Section 5(3) based on the reputation of WONDER WOMAN for goods in classes 9, 16 and 42; and
(3) passing off under Section 5(4) based on goodwill in the WONDER WOMAN mark.
The hearing officer rejected the opposition on all three grounds.
On Section 5(2)(b), she concluded there was no likelihood of direct confusion. While some of the goods in class 3 were identical, there was only a medium degree of visual and aural similarity between the marks, and a low degree of conceptual similarity: “Average consumers will notice the difference between the marks, even in relation to goods entailing no more than a normal attention level during purchase. The marks will not be directly mistaken for one another.”
Nor was there any likelihood of indirect confusion, as that would require the average consumer to decide that the change from WONDER to MUM must point to a sub-brand or brand extension: “I do not think that this is likely; it is stepping over the line of instinctive reaction to one of detailed analysis.”
DC Comics’ Section 5(3) case suffered from the limitations of its evidence of reputation, particularly regarding date, geography and whether WONDER WOMAN was perceived as indicating trade origin, rather than merely being the name of a fictional character. Regarding the Class 16 goods, for example, the hearing officer said: “there are too many gaps in the evidence to make a finding that at the relevant date the earlier mark had a qualifying reputation in the UK and/or the EU”.
The opponent faced similar problems with the passing off claim, which was based on the use of WONDER WOMAN in various media and on merchandising. The hearing officer found that goodwill was not established either because WONDER WOMAN was not used in trade, there was no evidence of sales in the UK or the claimed sales were not quantifiable. Regarding the extensive use claimed for computer games, she said entertainment featuring a character does not equate to use denoting trade origin: “None of this would be perceived as use of WONDER WOMAN as an indicator of the trade source of the goods.”
Even if goodwill in WONDER WOMAN had been established, said the hearing officer, it is unlikely that customers would believe that WONDER MUM goods in class 3 were from the same source as the WONDER WOMAN media and merchandise.
The opposition was therefore rejected. DC Comics can appeal the decision.
Lessons for opponents
The ruling demonstrates that opponents need to provide clear and specific evidence of trade mark use and reputation in the relevant jurisdiction and time period.
It also indicates that the UK IPO takes quite a strict approach to trade marks corresponding to the names of characters: for the opposition to be successful, there must be evidence that consumers understand that the names indicate trade origin, and are not merely the subject matter of books/movies/games etc.
To find out more about the issues raised in this case including trade mark disputes and filing contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - email@example.com