The appellant, DC Comics (Partnership), is the owner of the trade mark WONDER WOMAN, associated with the superhero character. DC Comics opposed the registration of the trade mark WONDER MUM by the respondent, Unilever Global IP Ltd, on the basis that the use of this mark for shampoo bottles and other bath products would be likely to confuse the average consumer into thinking that these products were linked to or associated with WONDER WOMAN.
The Hearing Officer of the UK Intellectual Property Office (UKIPO) decided that there would not be any likelihood of direct confusion, as although there was no more than a medium degree of visual and aural similarity, there was a low degree of conceptual similarity. The Hearing Officer further found that DC Comics had not provided enough evidence to demonstrate the reputation of the WONDER WOMAN mark in the UK.
DC Comics appealed the decision to the High Court.
The court upheld the decision of the Hearing Officer and rejected all 6 grounds of opposition put forward by DC Comics. It was explained that the reason proof of reputation in the mark was required was to demonstrate that the consumer would link, in this case, WONDER MUM with WONDER WOMAN. This link is dependent on multiple factors, one of which being the strength of the reputation of the WONDER WOMAN mark. The Hearing Officer correctly required DC Comics to provide actual, specific evidence as to reputation, and their generalised statements such as WONDER WOMAN being ‘the most famous female comic book hero in the world’ was not sufficient for this purpose.
It is difficult to successfully appeal a decision of the UKIPO. This outcome is unsurprising and follows the norm of the court affirming the decisions of the UKIPO.
In the UKIPO, appeals can either go to the Appointed Person, or to the High Court, which, in theory, can then be appealed up until the Supreme Court. Practically, it may be cheaper and quicker to go via the Appointed Person route, particularly given that the courts generally uphold the decisions of the UKIPO. The drawback is that the Appointed Person’s decision cannot be appealed any further. To put the maximum amount of pressure on, instead of opposing, it may be more beneficial to commence a claim and litigate in the High Court.
The court particularly commented on DC Comics’ lack of sufficient evidence in relation to the UK and EU, as they only provided evidence of worldwide reputation. Brands should therefore ensure they collate sufficient evidence to prove reputation in each specific relevant territory by creating evidence banks.
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