WONDER WOMAN LOSES HER SHIELD
Lane IP acted for Unilever Global in relation to an opposition filed by DC comics against UK trade mark application 3452217 WONDER MUM covering personal care products in class 3.
The opposition was dismissed at first instance by one of the UKIPO’s Hearing Officers and DC appealed the case to the High Court (case number CH-2021-000159). Following a Hearing in March, the High Court upheld the decision of the Hearing Officer, dismissing all grounds of appeal. DC’s opposition was brought under sections 5.(2)(b),5.(3) and 5.(4)(a) of the trade marks act 1994 (TMA) alleging a likelihood of confusion, detriment to distinctive character/unfair advantage and passing off based on prior existing goodwill.
DC relied on earlier registrations for WONDER WOMAN covering goods and services in classes 3,9,16 and 41.
The Hearing Officer’s Decision
For its opposition under section 5.(2)(b), DC relied upon an earlier registered trade mark for WONDER WOMAN covering goods in class 3. The Hearing Officer found that the marks WONDER WOMAN and WONDER MUM had no more than a medium visual and aural similarity, and that the conceptual similarity was only of a low degree. In her view there was no likelihood of confusion under section 5 (2)(b).
The opposition under section 5.(3) was based upon purported reputation in the mark WONDER WOMAN for goods in classes 9, 16 and 41 (i.e., motion picture films, printed matter, comic books, entertainment services etc.). DC had submitted nearly 300 pages of evidence that, it argued, was sufficient to show the requisite reputation in the trade mark WONDER WOMAN in the relevant classes. The Hearing Officer disagreed, finding significant shortcomings in the evidence. She was unable to conclude from the evidence that DC had the requisite reputation and responding to the suggestion that the evidence was restricted in length in the interest of proportionality, she commented that “more pages of ill focused evidence will not do the job any more effectively”.
Of particular interest was the absence of specific revenue figures for comic book sales in the UK. DC reported worldwide sales, but gave only generalised statements, such as that a “notable proportion” of worldwide sales came from the United Kingdom. These statements were considered to be mere opinion evidence and too vague to be on any assistance.
Similar short comings were found in respect of the evidence which addressed revenues for films and entertainment. Box office takings from independent third-party sources were quoted, as opposed to accurate internal figures. These were dismissed as being unreliable. In relation to the arguments under section 5.(4)(a), the Hearing Officer was unconvinced that DC had substantiated the requisite goodwill in the United Kingdom, noting again the lack of specific sales data for the UK market in the evidence. Nor was she convinced that the name of the character WONDER WOMAN would necessarily equate to use denoting trade origin.
DC’s Six Grounds of Appeal
DC argued on appeal that in the context of section 5.(2)(b) the Hearing Officer had made errors of law in her approach to the assessment of similarity and that she had also failed to correctly apply the so called interdependency principle.
The judge in the High Court quickly dismissed these grounds and found no error in the approach of the Hearing Officer. Having concluded that there was a low degree of conceptual similarity, the Hearing Officer had merely gone on to explain partly how she had reached that conclusion by reference to the respective differences between the marks. Her suggestion that “there is more that is different about the respective concept of the marks than is the same” did not constitute an error of law as claimed by DC.
Grounds 3,4 and 5 were raised in relation to the Hearing Officers rejection of the opposition under section 5.(3), namely a failure to find reputation for comics, entertainment, and a failure to find a link between the marks in the mindset of the average consumer for the purposes of this section of the TMA.
DC argued that on the evidence and submissions no reasonable Hearing Officer could have come to the same conclusion, but the appeal judge rejected this submission. He found that the Hearing Officer was correct to identify the burden on DC to prove reputation of its mark in the UK/EU and had correctly applied it. Her decision that the absence of actual sales figures for comics in the UK (other than the witness’s opinion that they were a notable proportion of the global figures) meant that the burden had not been discharged, was a reasonable conclusion to draw.
In relation to films and entertainment services, despite lengthy submissions by DC as to the veracity of global and UK box office sales figures presented, the appeal judge found that the Hearing Officer had correctly tested the evidence that had been filed and that again DC had failed to meet the necessary burden to show sufficient reputation in relation to class 9 goods and class 41 services.
The Hearing Officer decided that WONDER WOMAN in a film title distinguished that film from other titles in the in the DC comic series, but that it did not indicate commercial origin. The appeal judge concurred and was careful to note that the Hearing Officer was not deciding whether the films and the character were not successful or well known, but simply whether the trade mark WONDER WOMAN had a relevant and qualifying reputation in the UK/EU in the relevant classes.
Given the appeal judge’s findings on ground 4, he did not consider ground 5, although agreed and noted that even if a qualifying reputation had been found, the difference between the marks and the goods and services are too great to find the requisite link.
As to ground 6, passing off, the appeal judge once more dismissed the grounds noting that DC had fallen into the trap of making generalised statements about goodwill that must undoubtedly exist in such a successful franchise, but that this was just assertion, not evidence.
The Hearing Officer had exhaustively analysed the evidence that had been adduced about merchandising but noted that many of the products did not even have the words WONDER WOMAN on them, rather employing WW logos or other get up of the character, and when they did carry the words, that was more by way of decoration than indicating commercial origin. Accordingly, the appeal judge did not consider he could interfere with the Hearing Officers conclusion that there was insufficient evidence of use of WONDER WOMAN on merchandising in the UK such that DC’S customers or potential customers would be misled into thinking the goods with WONDER MUM on them are commercially linked to DC.
Conclusion
The take outs from this case concern DC’s failure to advance detailed and compelling evidence to support their claim of reputation which run throughout the various grounds advanced. The evidence was littered with generalised statements and opinion, and contained very little in the way of internal facts and records which would have been within the knowledge of the witness. The devil is truly in the detail when it comes to evidence and failure to address this will more often than not lead to little or no weight being given to the evidence in question. In this case DC even failed to put their house in order when shortcomings in their evidence were exposed by way of challenges made on the applicants behalf before the UKIPO.
