A judge in the High Court has upheld a UK IPO opposition ruling regarding Unilever’s application to register the trade mark WONDER MUM for goods including soaps, perfumery and hair care products in class 3. The opposition is discussed here. The application was opposed by DC Comics on the basis of its earlier EU trade mark for WONDER WOMAN, registered in classes 3, 9, 16 and 41, and its goodwill in the WONDER WOMAN character generally.
In the first instance decision in June 2021, the IPO Hearing Officer, Judi Pike, rejected all three grounds of the opposition under sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994. In his judgment on 2 March, Mr Justice Michael Green rejected DC Comics’ appeal and upheld Judi Pike's decision (DC Comics (Partnership) v Unilever Global IP Ltd  EWHC 434 (Ch)).
Similarity of marks
Regarding similarity under section 5(2), the judge said that the hearing officer “properly concluded that there was a low degree of conceptual similarity” between the marks.
He added: “Even with identical goods, this would not sufficiently offset against the low to medium degree of similarity of the marks so as to lead to a finding of likelihood of confusion.” The hearing officer had therefore reasonably applied the interdependency principle.
Reputation of WONDER WOMAN marks
To be successful, the section 5(3) ground required a finding that the earlier mark had a reputation for goods in class 16 (comic books etc) and classes 9 (downloadable software) and 41 (entertainment-related goods and services).
The hearing officer found that DC Comics had not produced specific evidence of reputation for comics in the UK, but merely provided worldwide revenue figures for WONDER WOMAN comics. DC Comics’ witness, Mr Kogan, stated that UK sales were a “notable proportion” of worldwide sales, but the hearing officer correctly regarded that statement as opinion rather than fact. The judge said:
Mr Kogan’s evidence was so lacking in detail in this respect as to be almost worthless in demonstrating that there were a significant number of sales of comics in the UK such that a reputation in the mark was established for that class of goods.
Regarding reputation in classes 9 and 41, DC Comics had provided evidence of the popularity of the 2017 Wonder Woman film, but the hearing officer said this did not prove a sufficient reputation in the WONDER WOMAN trade mark in the UK/EU for the relevant goods/services. The judge said this was a conclusion open to her.
Goodwill and passing off
Finally, the judge addressed the finding that DC Comics had not proved sufficient goodwill in the UK to establish passing off under section 5(4)(a).
The hearing officer had found, effectively, that there was insufficient evidence that the use of WONDER WOMAN on merchandising in the UK had led to DC Comics’ customers being misled into thinking that there was a commercial link with WONDER MUM goods. He said this finding was based on “a multifactorial assessment and evaluation of DC’s evidence in relation to goodwill in the UK through their merchandising programme”. There was no error of law or principle.
Overall, the judge said the consistent theme running through the decision was a reasonable one, namely “that an average consumer or a customer or potential customer of DC would not be confused or misled by the use of the WONDER MUM mark into thinking that it was linked to or associated with WONDER WOMAN or DC as its commercial origin”.
Importance of relevant evidence
Both the hearing officer’s decision and High Court judgment highlight that DC Comics evidence though substantial was lacking in certain respects, notably in demonstrating reputation/goodwill in the UK. There is a 300-page limit for evidence in oppositions, but the judgment pointed out that DC Comics could have applied to exceed that limit.
The case is a reminder that IPO hearings are grounded solidly on the arguments and evidence submitted, and that gaps in this evidence are likely to be exposed by the hearing officer and (as in this case) on appeal. There is a reasonably high bar to prove concepts such as reputation, goodwill and misrepresentation and parties therefore need to be well prepared before bringing oppositions.
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