Man and Superman

The IPKat has learnt of an interesting decision from the OHIM Second Board.

DC Comics applied to register SUPERMAN as a word mark (CTM) for lots of goods and services. This was opposed by the proprietor of the German MAN stylised word mark for a number of identical and similar goods or services.

The Opposition Division rejected the opposition and the OHIM Second Board agreed.

The fatal fact for the owner of the MAN mark was that it was just not similar enough to the SUPERMAN mark for any of the relative grounds to stick. Although there was some visual and phonetic similarity due to the presence of MAN in both marks, the conceptual meaning of SUPERMAN as the famous superhero meant that conceptually the two marks were very different. In reaching this conclusion, the Board took ‘judicial’ notice of the fame of Superman, the comic book hero and also noted that, while usually SUPER would be discounted as descriptive and non-distinctive, here it turned an ordinary word into something with a strong conceptual meaning.

The strength of the conceptual element of the mark and its distance from the term MAN meant there was no likelihood of confusion. It also put pay to an Art.8(4) claim since, according to OHIM, there are no national laws which do no require similarity of marks. The distance between the two marks also meant that consumers would not make the link between them required for Art.8(5).

The IPKat reckons that this is a common-sense decision. He’s a bit worried though. Were it not for the fame of SUPERMAN, would the proprietors of the MAN mark have been able to stop the registration of any mark containing an element as basic as ‘man’?