In DC Comics (Partnership) v Unilever Global IP Limited, the High Court upheld the decision of the UK Intellectual Property Office (UKIPO) to reject DC Comics' opposition to Unilever Global IP's application to register the trade mark "WONDER MUM" in respect of goods in Class 3 (such as soaps, perfumery and deodorant). DC, owner of the EU trade mark "WONDER WOMAN" (registered in Classes 3, 9, 16 and 41), failed to overturn the UKIPO decision that Unilever's mark was unlikely to lead to confusion, and also that DC had failed to prove that its trade mark had sufficient reputation or goodwill in relation to the relevant goods and services.
The decision is a reminder of the importance of clear and specific evidence in order to establish the reputation of a trade mark or goodwill.
In 2019, Unilever filed a UK trade mark application for "WONDER MUM" covering goods in Class 3. DC Comics opposed the application under sections 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994, on the grounds that the mark was (i) confusingly similar to its "WONDER WOMAN" trade mark, (ii) its trade mark had a reputation in the UK and (iii) its trade mark had goodwill in the UK for the purposes of establishing earlier rights in passing off.
DC's main argument on appeal was that the Hearing Officer had incorrectly applied the relevant legal principles, which led to a faulty evaluation of the facts. However, Michael Green J found that the Hearing Officer had correctly assessed the evidence provided by DC.
“WONDER MUM” not confusingly similar to “WONDER WOMAN”
Whilst DC's appeal focused on the Hearing Officer's findings regarding reputation and goodwill, for understandable commercial reasons, the finding there was no likelihood of confusion was a central part of the decision.
Rejecting DC's opposition under Section 5(2)(b), the Hearing Officer had concluded that, while the signs had a medium degree of visual and aural similarity, the conceptual differences between "WONDER MUM" and "WONDER WOMAN" meant that conceptual similarity was low. Considering all of the relevant factors, the Hearing Officer had concluded that the average consumer was unlikely to be confused: they were unlikely to believe that cosmetic products labelled "WONDER MUM" originated from, or were commercially linked to, the same entity that owned the "WONDER WOMAN" trade mark. The Court rejected both grounds of appeal on the question of likelihood of confusion.
“WONDER WOMAN” did not have sufficient reputation in relation to relevant goods and services
The Hearing Officer's decision under Section 5(3) largely turned on the fact that DC had not provided evidence showing that the trade mark had sufficient reputation amongst a significant proportion of the public in the UK in relation to the goods and services for which it was registered. For example, in relation to the reputation of "WONDER WOMAN" for comic books (and other class 16 goods), there was data showing approximate worldwide comic book sales revenues, but no figures indicating the number of "WONDER WOMAN" comic book sales in the UK specifically. As such, there was insufficient evidence for the Hearing Officer to conclude that the trade mark had a reputation in respect of that class of goods in the UK.
Similarly, in relation to the trade mark's reputation for entertainment-related goods and services in classes 9 and 41, the evidence included box office revenues of the high–profile 2017 Wonder Woman film and other films featuring the Wonder Woman character. The Hearing Officer, however, cited the Dr No case (Danjaq LLC v EUIPO Case T-435/05) where the EU General Court did not accept use of 'Dr No' as the title of a film, as use as a trade mark, saying that the relevant trade mark would be 'James Bond'.
Here, the Hearing Officer had noted that the key issue was likewise whether there was use of "WONDER WOMAN" as a trade mark (i.e. as a badge of origin indicating that goods and services provided under the mark all came from the same source) as opposed to its use as the title of an artistic work. The Hearing Officer considered that "WONDER WOMAN" would distinguish the 2017 Wonder Woman film from other DC titles, but did not indicate the film's commercial origin. As such, the Hearing Officer held that the average consumer would not consider "WONDER WOMAN" to be a badge of trade origin as opposed to simply the title of a film, and therefore the trade mark did not have the requisite reputation in the UK for goods and services in Classes 9 and 41.
No goodwill in “WONDER WOMAN” for the purposes of passing off
Similarly, the Hearing Officer decided there was no goodwill attached to "WONDER WOMAN" for the purposes of passing off. Whilst DC had an extensive merchandising programme linked to the films, the Hearing Officer found that (i) many of the products did not feature the words "WONDER WOMAN" and instead used a logo or other get-up, (ii) where the words were used, they were used decoratively as opposed to indicating the commercial origin of the products, and (iii) no information was provided to show how many products were sold in the UK. The Hearing Officer therefore concluded that there was insufficient evidence to find that the words "WONDER WOMAN" were used to denote the commercial origin of the merchandise, and goodwill could not be established.
The Judge recognised that the conclusion that "WONDER WOMAN" did not have a reputation or goodwill may be a surprising one, but stressed that it was not a finding that the film was not a success, nor that the character was not well-known. Instead, the UKIPO Hearing Officer had found that the evidence was insufficient to establish that there was a relevant and qualifying reputation in the UK/EU in respect of the relevant goods and services.
Similarly, goodwill in passing off requires the proponent to show that it has educated the public to read its mark as a badge of origin. Based on the generality of the evidence provided, the Court concluded that the Hearing Officer had been entitled to find that the evidence was insufficient to establish this. As such, the appeal was dismissed and the "WONDER MUM" mark will be allowed to proceed to registration in the UK.