Marvel (Marvel Comics and Marvel Entertainment, LLC) has been around in some form for almost 80 years (Marvel began life as Timely Publications in 1939, by the 1950s it was known as Atlas Comics and by the 1960s the Marvel branding had begun).
In that time the intellectual property rights in the Marvel brand and characters (in particular trade marks and copyrights) have generated enormous sums of money for Marvel (through the publication of comics, through TV and movie syndication deals and through merchandise licensing deals).
In short, the Marvel IP portfolio is a money-making machine and any attempt by any third party to benefit from it, unfairly or without authorisation, is unlikely to go unchallenged.
Everybody wants to be a HULK …
Perhaps unsurprisingly, third parties frequently do try to benefit, often unfairly and without authorisation, from the Marvel IP portfolio.
The Marvel universe is home to the Avengers, the X-Men, the Fantastic Four and the Guardians of the Galaxy, as well as some of our most well-known superheroes including Spider-Man, Captain America, Iron Man, Thor, Wolverine and – last but not least – the Incredible Hulk.
Most recently, a Chinese company (Huangzongwen of Shenzen) sought to obtain trade mark protection for CANDY HULK in relation to clothing, prompting Marvel to challenge the application on the basis of its prior registered and unregistered rights (Marvel has approximately 20 trade marks relating to the HULK and THE INCREDIBLE HULK and, since at least January 1962, it has used the HULK and THE INCREDIBLE HULK trade marks in commerce; having first appearing in comic books, the Hulk is now a well-known Hollywood star).
The next step is that Huangzongwen is required file a response in the cancellation proceedings (which doesn’t seem likely!) and in the absence of any such response Marvel will be successful in its cancellation application by default.
Previously, Marvel have also had to contend with applications for Hulk Fitness, Hulk Juice, Hulq automotive leasing and Thor screen protection devices!
IP is a powerful tool. As the HULK saga indicates, IP is a powerful tool, not just for generating money though publishing, syndication and merchandising, but also for batting off competitors who may seek to ride on the coattails of your success!
IP portfolios require management. The HULK saga is, in a way, a cautionary tale. The reason Marvel had to file a cancellation application is because it missed the earlier opposition deadline (it is significantly quicker, cheaper and easier in most jurisdictions to oppose trade mark applications before they are registered, than it is to seek to have trade marks revoked or invalidated after they have been granted). If you are serious about protecting your trade mark portfolio you should have watching services in place (i.e. trade mark and domain watching services) and you should be carrying out regular searches online, on social media and elsewhere for potential infringements.
Finally, always take action. Marvel has had to be proactive in order to prevent third parties from benefiting unfairly from its valuable IP portfolio. As above, it has already had to fend off trade mark applications for confusingly similar brands such as Hulk Fitness, Hulk Juice and Hulq automotive leasing. Similarly, you need to be proactive about reacting to infringements of your intellectual property rights, e.g. by issuing take-down notices, by opposing conflicting applications, by sending cease and desist letters and, if necessary, by issuing proceedings to prevent competitors from unfairly and without authorisation benefiting from your valuable IP. This doesn’t necessarily need to cost and arm and a leg and Briffa can assist by providing cost-effective ways to nip infringements in the bud!
Briffa advises on all aspects of trade mark law and practice, including new applications, portfolio management (including watching services), advising on and managing trade mark opposition cases and advising on and managing trade mark infringement cases. If you have any trade mark or other IP issue that you would like to discuss, please give us a call or drop us an email to arrange a free consultation on 020 7288 6003 or firstname.lastname@example.org.
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