HomeInsightsHigh Court dismisses appeal against IPO Hearing Officer’s decision that use of WONDER MUM on shampoo would not lead consumers to think it was linked to WONDER WOMAN

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Facts

On 17 December 2019, Unilever Global IP Ltd applied to register a UK trade mark for WONDER MUM in Class 3 covering, “Soaps; skin care preparations; shampoos; conditioners; cosmetics; …”.

DC Comics (Partnership) opposed the application under ss 5(2)(b) and 5(3) of the Trade Marks Act 1994, relying on its earlier EU registered trade mark for WONDER WOMAN in Classes 3, 9, 16 and 41. It also opposed under s 5(4)(a) of the 1994 Act, stating that it owned goodwill in the UK in the words “Wonder Woman” and the Wonder Woman character more generally as a result of its use in connection with a range of goods and services for an extensive merchandising programme linked to films.

The Hearing Officer rejected all three grounds of DC’s opposition, essentially on the basis that there was no likelihood of confusion.

DC appealed. At the heart of its appeal was DC’s concern at the Hearing Officer’s finding that DC had not established on the evidence a sufficient reputation in the UK of the WONDER WOMAN mark or of goodwill in “Wonder Woman” generally in order to establish a passing off claim.

Decision

Section 5(2)(b)

Conceptual similarity

The Hearing Officer had found “no more than a medium degree of visual and aural similarity between the marks”. She had said that there was “some conceptual similarity”, as both marks conveyed the impression of “someone female who is very good or effective at something”, but that, given the connotations of the word MUM, which was not present in DC’s mark, the degree of conceptual similarity was low overall. She explained this further as, “there is more that is different about the respective concepts of the marks than is the same”.

DC said that this last sentence undermined the finding of a low degree of conceptual similarity and was an incorrect application of the law. It argued that the Hearing Officer had wrongly considered the marks to be both similar and dissimilar when the only question was how similar the marks were.

Mr Justice Michael Green disagreed, finding that the Hearing Officer had properly concluded that there was a low degree of conceptual similarity and had then simply explained partly how she had got there by reference to the differences between the marks. In Green J’s view, DC had “overinterpreted the … words to eke out a point of law when none really exists”.

Failure to apply the interdependency principle

Although the Hearing Officer had considered and set out the interdependency principle, i.e., that a lesser degree of similarity between goods and services can be offset by a greater degree of similarity between the marks and vice versa, DC said that she had failed to apply the principle properly. Having found some of the goods to be identical, DC said she should have analysed better how identical goods and medium visual and aural similarity between the marks did not mean a likelihood of confusion.

Green J disagreed, finding that the Hearing Officer had clearly balanced a finding of identical or similar goods with her findings on the levels of similarity between the marks. At best to DC would have been a balance between identical goods and medium level, “but no higher” (as the Hearing Officer had said) visual and aural similarity between the marks. However, in the overall assessment, as the Hearing Officer had reasoned, the fact that there was only a low degree of conceptual similarity also needed to be taking into account.  Even with identical goods, , this low degree of conceptual similarity would not sufficiently  offset the low to medium degree of visual and aural similarity of the marks such as to lead to a finding of a likelihood of confusion. The Hearing Officer’s analysis was, in Green J’s view, a reasonable application of the interdependency principle.

Section 5(3)

Failure to find a reputation for comics and other goods in Class 16

DC’s main evidence came in the form of a witness statement, which the Hearing Officer had found made only general statements on the reputation of WONDER WOMAN and did not provide any actual evidence of a reputation in the UK/EU in relation to comics or any other Class 16 goods. DC said that the Hearing Officer had erred in this respect, but Green J disagreed, finding that the Hearing Officer had been correct to hold that statements such as, “Wonder Woman is the most famous female comic book here in the world with nearly 80 years of continuous use since … 1941” did not constitute evidence of reputation without evidence of sales figures of comics in the UK to back it up, and these were not provided.

DC argued that the witness evidence was a factual statement that UK sales were a “notable proportion” of the worldwide sales, not just an opinion (as the Hearing Officer had found), and that it did not therefore need to provide actual detailed figures for the UK. Green J disagreed, finding that what “notable” meant in this context and whether a particular “proportion” was “notable” were matters of opinion. It was impossible to know whether the witness meant that it was 5%, 20% or 50% of worldwide sales that were attributable to the UK. Indeed, other people might disagree that it was a notable proportion, once they knew the actual figures.

Failure to find a reputation for entertainment-related goods and services in Classes 9 and 41

DC had relied on evidence of the release in 2017 of the film Wonder Woman, which grossed £19.5 million at the UK box office, as well as Batman v Superman: Dawn of Justice, from 2016, with UK gross receipts of over US$53 million, and Justice League, from 2017, with UK gross receipts of US$24 million, which featured the Wonder Woman character. DC said that this evidence alone demonstrated that the Hearing Officer had been wrong to conclude that WONDER WOMAN had no reputation in the UK.

Green J said that the Hearing Officer had not found that WONDER WOMAN had no reputation in the UK, but that the evidence provided did not prove a sufficient reputation in the mark as used in the UK/EU in relation to Class 9 goods and Class 41 services. A key issue had been the use of WONDER WOMAN as a trade mark compared to it being used as the title of an artistic work. The Hearing Officer had considered whether the mark had been used as a badge of origin and whether the average consumer would assume that goods or services using the mark had come from a single source. This was the correct approach. She had considered all the evidence, including figures for feature films, reviews, publicity, sales of DVDs and other formats, the TV series, etc., against what DC had to prove and had found it wanting, as it did not show that WONDER WOMAN had been used by DC as a trade mark such that it indicated its commercial origin.

Green J said that, while a finding of no reputation in the UK in these Classes might be a surprising conclusion, it was important to recognise that the Hearing Officer had not been deciding that the Wonder Woman film was not a success or that the fictional character of Wonder Woman was not well-known. She had been deciding whether the WONDER WOMAN trade mark had a relevant and qualifying reputation in the UK/EU at the relevant date amongst a significant part of the relevant public in respect of the registered classes of goods and services and had found that the evidence was insufficient. In Green J’s view, this was a conclusion open to her.

In any event, she had then gone on to find that, for the purposes of s 5(3), without a qualifying reputation there could be no link in the mind of the relevant public between WONDER WOMAN and WONDER MUM. In other words, the real point of s 5(3) and the proof of a qualifying reputation in the earlier mark was that when the consumer is confronted with the later mark, here WONDER MUM, they will link it to the earlier mark of WONDER WOMAN. Whether they did was dependent on several factors, including the strength of the reputation in the earlier mark.

Section 5(4)(a)

Failure to find goodwill for the proposes of passing off

The Hearing Officer’s main finding was that DC had not proved sufficient goodwill in the UK attached to the words “Wonder Woman”. DC disputed this.

At first instance, DC had relied on its “extensive merchandising programme linked to films”, not the films themselves, which consisted mainly of listings of merchandise on amazon.co.uk and a Brand Assurance Report. Examining the listings, the Hearing Officer had found that many of the products did not even have the words “Wonder Woman” on them. Instead, they employed the logo or other get-up of the character. When they did show the words “Wonder Woman”, the Hearing Officer had found that they were more decoration than indicators of commercial origin. Further, there were no sales figures for the UK.

Green J agreed with DC that, to a certain extent, the Hearing Officer had elided the two elements of goodwill and misrepresentation when considering the evidence, but found that she had effectively decided that there was insufficient evidence that the use of “Wonder Woman” on merchandising in the UK had led to DC’s customers being misled into thinking that goods with WONDER MUM on them were commercially linked to DC. In other words, inadequate evidence of goodwill had meant that there could be no such misrepresentation. In Green J’s view, the Hearing Officer had not materially erred in law or in principle.

Finally, the Hearing Officer had said that even if she had found goodwill or was wrong on the goodwill point, she would still have rejected the s 5(4)(a) ground of opposition because there was no likelihood of deception. In Green J’s view, that finding was reasonable for the Hearing Officer to have formed: the average consumer would not be confused or misled by use of the WONDER MUM mark into thinking that it was linked to or associated with WONDER WOMAN or DC as its commercial origin.

The appeal was dismissed. (DC Comics (Partnership) v Unilever Global IP Ltd [2022] EWHC 434 (Ch) (2 March 2022) — to read the judgment in full, click here).

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