Mum’s the winner
[2022] EWHC 434 (Ch), DC Comics (Partnership) v Unilever Global IP Ltd, High Court, 2nd March 2022.
A super reputation didn’t impress, suggests Nawel Chemali
Key points
• General statements must be backed by objective evidence or risk being considered assertion rather than evidence
• Figures provided must be relevant to the territory in which evidence is required
• Where a trade mark relates to a fictional character or a film, evidence must be directed towards proving that it indicates, to the relevant public, the commercial rather than artistic origin
Unilever Global IP Ltd (Unilever) applied to register the trade mark WONDER MUM in class 3 on 17th December 2019 (No. 3452217). On 30th July 2020, DC Comics (Partnership) (DC) opposed this application under ss5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994 (TMA), relying on its earlier EU trade mark (EUTM) No. 14275739 WONDER WOMAN in classes 3, 9, 16 and 41, registered in 2015.
DC stuck to the soft 300‑page limit on evidence and submitted a witness statement accompanied by various exhibits in support of its opposition.
Upon careful consideration of all 279 pages, the Hearing Officer (HO) held that there simply was no likelihood of confusion between the words WONDER MUM on class 3 goods (such as bath, shower or hair products) and the trade mark WONDER WOMAN, or the eponymous fictional character for that matter.
All grounds of the opposition were rejected and DC appealed.
DC appealed the HO’s decision under six different grounds.
The first two grounds, relating respectively to the approach to conceptual similarity and to the interdependency principle, were quickly dismissed on appeal by Mr Justice Green.
The fifth ground of appeal was only to be considered if Ground 4 was successful (spoiler alert: it was not!). This leaves us with Grounds 3, 4 and 6.
Reputation
Considering Grounds 3 and 4, the HO found that WONDER WOMAN did not have reputation for comics nor for entertainment for the purposes of s5(3) TMA.
Although this decision can seem surprising at first, it is difficult to see how the HO could have decided otherwise given the facts of this case.
Indeed, the HO can only base a decision on the facts and evidence (or lack thereof) before it. In this case, DC had the burden to prove reputation for its mark in the UK and in the EU (as it was relying on its EUTM given the opposition was filed prior to Brexit).
DC stated that: “Wonder Woman is the most famous female comic book hero in the world with nearly 80 years of continuous use since her comic book debut in December 1941.”
The following was also included in the witness statement: “Sales of WONDER WOMAN comics have generated significant revenues for DC Comics.
The following are approximate figures for the worldwide revenue generated in the period 2009 to 2019 (the United Kingdom revenue figures will of course be less, but nevertheless a notable proportion of the whole)…”.
If actions – or in this instance, figures – speak louder than words, DC needed to refrain from making generalised statements and provide actual numbers of comic sales in the UK and EU.
Therefore, the HO, being presented with generalised statements, and finding these to be opinion evidence rather than factual evidence, failed to find that WONDER WOMAN had a reputation for comics (or any other class 16 goods).
DC appealed this finding and argued no detailed figures were required as it had already indicated that UK sales were “a notable proportion of the whole”.
On appeal, Mr Justice Green agreed with the HO’s findings and added: “What notable means in this context and whether a particular proportion is notable are matters of opinion…”.
Essentially, it was impossible to know what percentage of worldwide sales were attributable to the UK (including the EU) as there were no underlying figures.
Similarly, regarding reputation for entertainment, and although DC had actually provided figures to support this claim (the gross takings of its 2017 Wonder Woman film, and those of two other films in that period featuring Wonder Woman), the HO still found that this evidence was insufficient to prove reputation for entertainment goods and services in the UK and EU.
This was because the issue here was to decide whether WONDER WOMAN was used as a trade mark or as the title of an artistic work.
The HO referred to the Dr. No case and decided that the evidence was inconclusive. Mr Justice Green, agreeing with the HO’s reasoning, rejected both grounds.
Passing off
In the evidence filed by DC supporting its Ground 6 claim to goodwill (consisting mainly of listings of merchandise on amazon.co.uk and a Brand Assurance Report) the HO found that many of the products did not include the words WONDER WOMAN.
Furthermore, there was no information as to how many of such goods were sold in the UK.
As a result, the HO concluded that as DC was relying only on its “extensive merchandising programme linked to films” and not the films themselves, there was no substance to the claim to goodwill.
Consequently, the HO did not find that DC’s customers or potential customers were being misled into thinking that goods with WONDER MUM on them were commercially linked to DC.
DC claimed to own “goodwill in the United Kingdom in 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, publications and entertainment services”.
DC added that the relevant public would “know the WONDER WOMAN character and they know that those stories come from a certain source”.
Again, making such generalised statements does not amount to actual evidence, but rather to assertion, as Mr Justice Green explained on appeal.
He reiterated the position of the HO that “inadequate evidence of goodwill in relation to merchandising meant that there could have been no such misrepresentation” before rejecting this final ground.
Therefore, DC failed to heroically save the day and its appeal was dismissed entirely.
