“SUPERMAN” enjoys high degree of recognition, says EUIPO Opposition Division

In an interesting decision delivered earlier this month concerning an opposition filed by DC Comics, which owns the figurative mark “SUPERMAN” (pictured below), the EUIPO Opposition Division acknowledged that this mark enjoys a high degree of recognition and, as such, is eligible for protection under Article 8(5) EU Trade Mark Regulation (EUTMR), even despite that the well-known character of the trade mark had been only sufficiently demonstrated for one class of goods (Class 16) .

With an application filed in April 2018, Magic Box, sought to register the following figurative sign as an EU trade mark (EUTM):

Registration was sought for goods in Class 28 (decorations for Christmas trees, games, toy figures, board games, game boards for trading card games, video game apparatus, toys) of the Nice Classification.

DC Comics opposed the application in accordance with Articles 8(1) and 8(5) EUTMR, claiming that its own mark enjoyed considerable reputation in the EU, and that the applicant’s sign conflicted with its earlier EUTM designating goods and services in Classes 3 (soaps and perfumery), 9 (cinematographic films, sound and/or video recordings, computer games and video games), 14 (jewelry), 16 (printed matter, greeting cards and trading cards, coloring books, calendars, posters, paper napkins, plates and mats), 21 (cookery molds and cooking pots), 24 (textile fabric piece goods), 25 (hats and caps, jackets, sweatshirts, t-shirts), 28 (toys and games), 30 (cocoa, sugar, cereals), 32 (mineral and aerated waters), and 41 (entertainment services all relating to the production and distribution of films, video tapes, cassettes, tapes, records and compact discs).

Earlier trade marks with a reputation in the EU or in a Member State enjoy extended protection in accordance with Article 8(5) EUTMR. The Opposition Division started its analysis by considering this provision, which sets out three requirements:

• The signs must be either identical or similar,
• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based, and
• Risk of injury: registration of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark

For reasons of procedural economy, the EUIPO started from the reputation of the earlier mark.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The evidence must show that reputation has been acquired for all the relevant goods and services.

In this case, it proved difficult to establish reputation for all of the opponents’ goods and services, since reference had only been to goods and services in, respectively Classes 16 and 41 in prior correspondence between the parties. It was therefore not clear whether the opponent had withdrawn its claim of reputation in relation to the other classes. Bearing in mind the principle of economy of proceedings, the Opposition Division considered it relevant only to proceed on the basis of Classes 16 and 41.

In this regard, the opponent had produced various evidence pertaining to the SUPERMAN mark. Whilst the EUIPO found that reputation had been demonstrated for Class 16 goods, the same would not be true for Class 41 services.

Following a comparison of the visual, aural, and conceptual similarities between the signs, the Opposition Division concluded that the signs were similar in at least one aspect of the comparison. The examination therefore proceeded to analyze the existence of a risk of injury.

In order to establish the existence of a risk of injury, it is necessary to demonstrate that the relevant public will establish a link between the signs. The necessity of a ‘link’ is not explicitly mentioned in Article 8(5) EUTMR but has been established through case law, notably in C-408/01, Adidas and C-252/07, Intel.

Since the contested goods in Class 28 include decorations for Christmas trees, toys, games, appliances for gymnastics and toy for animals, the Opposition Division also considered that the goods may display a link with the opponent’s reputed goods in Class 16 as the former constitute one of the most usual commercial extensions of the latter.

Whether there is a risk of injury may – amongst others – be established if the mark applied for takes unfair advantage of the distinctive character or the repute of the earlier mark (T 60/10, Royal Shakespeare).

It is a well-known fact that companies, such as the opponent (a comic book publisher that produces famous comic books such as SUPERMAN), exploit their sign in connection with a wide range of merchandise. Consumers would be conscious that the sign refers to the famous comic books and its attractive powers and fashionable features are used to promote the marketing of the relevant goods.

In view of the above, the Opposition Division considered it very likely that the use of the contested sign for all the contested goods in Class 28 would take unfair advantage of the reputation of the earlier trade mark and also the investment undertaken by the opponent to achieve that reputation.

Having concluded that the contested sign would take unfair advantage of the repute of the earlier trade mark, the Opposition Division held that the contested trade mark must be rejected for all the contested goods.

The Opposition Division did not deem it problematic that reputation could not be established in relation to all goods and services covered by the earlier mark. The EUIPO was able to extend its finding concerning the recognition for goods in Class 16 to goods under Class 28. This extension was sufficient to then establish a ‘link’ between the signs and, further, also find for a risk of risk of injury and unfair advantage.

The EUIPO also considered it insufficiently demonstrated that DC Comics’s sign enjoyed reputation for Class 41 services. Whilst this conclusion may appear surprising in the lay world, it is a useful reminder of the importance of the quality of the evidence filed before the Office (see here for an example of evidence fail not too long ago).