EUIPO Opposition Division Upholds ‘Recognition’ Claim of DC Comics
Going to the past, say about 60-years ago, when negligible amount of people were in possession of TV sets and other electronic devices, the sources of entertainment were extremely limited. Those were the days when instead of mobile phones, people had their eyes buried into newspapers, books, comics and other written and literary materials . Alas! The times have changed, the fragrance and feel of that newly printed book is lost somewhere in the wheels of time. Well, interesting notable fact being, all these comics and similar books containing doodled characters have their own, distinct and exclusive legal protection under Copyright Laws. Simple and logical reasoning behind this is to protect the authors from illicit usage of their work, wherein they invested days-and-days of unquestionable hard-work and determination.
A historical yet interesting decision was recently delivered by the European Union Intellectual Property Office (EUIPO) Opposition Division, remarking the high-degree of recognition of the vintage “SUPERMAN” mark owned by people’s very-favourite DC Comics.
The backdrop goes like this; in April 2018 one Magic Box applied for trademark registration before EUIPO for the mark “SUPERZINGS” under Class 28 of Nice Classification for goods including “decorations for Christmas trees, games, toy figures, board games, game boards for trading card games, video game apparatus, and toys.” Disappointed by such an application, the 86-year old American comic book publisher, DC Comics opposed the application on the claims that its own classical “SUPERMAN” mark is internationally-recognized by masses and moreover, has its own considerable reputation in the EU. Additionally, while extending their claims in accordance to Article 8(1) and Article 8(5) for EU Trademark Regulation in terms of ‘Earlier Right of Proprietor to Oppose the Registration’ and ‘Reputation of Earlier Trade Mark in the Union’, respectively, DC Comics added that the applied mark is in conflict with its reputed mark designating goods and services under Classes 3 (soaps and perfumery), 9 (cinematographic films, sound and/or video recordings, computer games and video games), 14 (jewelry), amongst many others.
While upholding the decision in favour of the American-comic giant, EUIPO observed that the visual, aural and conceptual details featured in both the marks were similar in one or more aspects. Factually, at one point the opponent was faced by a challenge to prove well-known reputation of the mark especially in not-so-used classes of goods and services, to be exact, Class 16 and 41. However, DC evidenced it in a beautiful manner and hence, passed this hurdle with flying colours. While concluding, EUIPO analyzed the risk of injury and unfair advantage by the applicant and found that the impugned mark is likely to face deception and hence, a linkage between might be created between both the conflicting marks, one being a highly-reputed mark under the risk of unfair advantage by the other.
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