'Wonder Woman' versus 'Wonder Mum' - DC Comics’ appeal against UKIPO decision is dismissed in England and Wales High Court

Back in June 2021, an unexpected outcome arose in the UKIPO when a Hearing Officer determined that all of the grounds of opposition submitted by DC Comics (‘DC’), the owner of the ‘WONDER WOMAN’ EU trade mark, should fail in relation to an application for registration of a UK trade mark for ‘WONDER MUM”, as submitted by Unilever Global IP Limited (‘Unilever’).

Such a case would inevitably make a reappearance, this time before the England and Wales High Court (EWHC), which found - in its decision of 2 March 2022 - that DC’s appeal should be dismissed once more.

With DC’s grounds of appeal including such points as a failure by the Hearing Officer to find a reputation for comics and for entertainment - with regards to the ‘WONDER WOMAN’ trade mark, of all things - the decision, at face level, appears baffling. Let’s see what happened.

Did someone say trade marks? And... superheroes?

Background

On 17 December 2019, Unilever applied to register  ‘WONDER MUM’ as a trade mark for goods in Class 3 including: soaps; perfumery; essential oils; deodorants and antiperspirants; hair care products, etc.

On 30 July 2020, DC filed a Notice of Opposition and Statement of Grounds. There, it relied on its EU word mark ‘WONDER WOMAN’ and submitted grounds of opposition relating to sections 5(2)(b), 5(3), and 5(4)(a) of the Trade Mark Act 1994 (‘TMA’). DC filed evidence to support its opposition in the form of a witness statement from the Senior Vice President of Legal Affairs at DC in California, and also exhibited documents said to prove reputation and goodwill in the UK.

Unilever asked for an extension of time to file evidence in answer, but this was rejected, resulting in only a letter (containing criticisms and observations of DC’s submitted witness statement from Unilever’s trade mark attorneys at the time) being submitted in response. Nevertheless, despite the fact that the evidence  pointed out how DC’s evidence was lacking, no further evidence was submitted by DC (which had ‘only’ submitted 279 pages, of a potential 300 pages, of evidence).

The Hearing Officer rejected all three grounds of opposition, on the basis that DC had neither established sufficient reputation in the UK of the WONDER WOMAN mark nor goodwill in WONDER WOMAN generally for the purposes of a passing off claim.

This decision was appealed.

The EWHC judgment

As a preliminary point, the EWHC noted that special caution is required when overturning such decisions. In any event, a decision of this kind will be treated as wrong where it is: (a) unsupportable; (b) simply wrong; and (c) where the view expressed is that the Appointed Person (Judge) is doubtful of but, on balance, concludes that it was wrong.

On this basis, DC's appeal was based upon 6 grounds: (1) that there were errors relating to the approach of similarly under s5(2)(b) TMA; (2) that there was a failure to apply the independency principle in s5(2)(b) TMA; (3) that there was a failure to find reputation for comics for the purposes of s5(3) TMA; (4) that there was a failure to find reputation for entertainment for the purposes of s5(3) TMA; (5) if Ground 4 was successful, then there was a failure to find a link for the purposes of s5(3) TMA; and (6) that there was a failure to find goodwill for the purposes of passing off under s5(4)(a) TMA.

Grounds 1 and 2: section 5(2)(b) TMA

On the first Ground of appeal, it was submitted by DC’s counsel that the Hearing Officer had considered the marks to be both similar and dissimilar, by stating that they “found the marks are conceptually similar to a low degree; i.e. there is more that is different about the respective concepts of the marks than is the same” (emphasis added). This was quickly dismissed by the Judge, stating that the Hearing Officer had properly concluded that there was a low degree of conceptual similarity and that no point of law was to be found there.

Turning to the second Ground of appeal, it was submitted that the independency principle had not been applied properly as per Canon v MGM. The Judge found that the Hearing Officer was clearly balancing a finding of identical or similar goods with her findings in relation to levels of similarity between the marks (also considering the Hearing Officer’s finding of a low degree of conceptual similarity between the marks). This would not lead to a finding of likelihood of confusion as, even with identical goods, this would not offset the low to medium degree of similarity of the marks. Thus this ground was also dismissed.

Ground 3: Reputation for comics for the purposes of s5(3) TMA

The third ground of appeal concerned the Hearing Officer’s findings in relation to DC’s class 16 goods. She had found there was a burden on DC to prove its reputation in the UK/EU, that there needed to be actual evidence as to reputation in the UK/EU, and that generalised statements about Wonder Woman, including her being “the most famous female comic book hero in the world”, did not discharge this burden.

In the present case, the Judge noted that the reputation that needed to be proved in the UK/EU must be in relation to the goods and services covered by DC’s earlier trade mark and, whilst it did not have to be the same goods and services as the later mark, a general reputation would not be good enough. Given DC had produced evidence 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 Judge agreed that reliance on such generalised statements were to be highly criticised, and that specific evidence of comic book sales in the UK were necessary to support the claimed reputation of the mark in the UK. Whilst DC had also produced approximate worldwide revenues in US dollars for 2009-2019, it was stated that “the United Kingdom figures will of course be less but nevertheless a notable proportion of the whole…” To this, the Judge agreed with the Hearing Officer’s finding that the witness statement was opinion evidence and that it was unclear what a “notable proportion” of worldwide sales would amount to, due to the lack of underlying figures in the provided evidence. The Judge even went so far as to state that the evidence “was so lacking in detail in this respect as to be almost worthless in demonstrating that there were a significant number of sales of comics in the UK such that a reputation in the mark was established for that class of goods”, resulting in the third ground of appeal also being rejected. [Ouch.]

Six Grounds of Appeal = a lot to cover in this decision!

Ground 4 (and 5): Reputation for entertainment for the purposes of s5(3) TMA

Along similar lines, Ground 4 queried the finding of a lack of reputation of the mark in the UK/EU in respect of entertainment-related goods and services in classes 9 and 41, with focus placed on the release of the 2017 Wonder Woman film, featuring Gal Gadot, and other such films featuring her character. A key issue identified by the Hearing Officer was the use of WONDER WOMAN as a trade mark and the comparisons that could be drawn between it being used as the title of an artistic work. In this regard, the Hearing Officer had found that DC’s evidence did not answer the question as to whether WONDER WOMAN had been used by DC as a trade mark such that it indicated to the relevant public its commercial origin. Much like the 2005 EU case of ‘Dr No’, where it was found that Dr. No indicated the artistic, but not the commercial, origin of the James Bond films, and that the signs of ‘007’ and ‘James Bond’ indicated commercial origin, it was found that WONDER WOMAN did not indicate commercial origin.

The Hearing Officer had found that the evidence was inconclusive in demonstrating whether the average consumer considered that the title WONDER WOMAN denoted a trade mark and badge of origin, or simply denoted the name of the film. Other such shortcomings and lack of UK/EU focus meant she was therefore unable to conclude that the opponent had a sufficient reputation in the earlier mark in relation to the Class 9 and 16 goods and the class 41 services relied upon, either in the UK or EU at the relevant date.

In relation to this, the Judge clarified that the Hearing Officer was not deciding whether the Wonder Woman film was not a success or that the Wonder Woman fictional character was not well-known - instead, it was whether the trade mark WONDER WOMAN had a relevant and qualifying reputation in the UK/EU at the relevant date amongst a significant part of the relevant public. The Judge maintained that this was a decision that was open to the Hearing Officer, and so rejected the fourth ground of appeal.

The fifth ground queried the failure to find a link, if it was found that the Ground 4 was successful. The Judge commented briefly that the same reasoning which led to Ground 1 failing could be drawn upon here to find that no link would be found, even if reputation was found as per Ground 4. Thus, it too failed.

Ground 6: Failure to find goodwill for the purposes of passing off under s5(4)(a) TMA

Section 5(4)(a) prevents a trade mark from being registered where its use is liable to be prevented by virtue of any rule of law (in particular passing off) protecting an unregistered trade mark or other sign in the course of trade. In the case of passing off, this requires that there be: (i) goodwill; (ii) misrepresentation; and (iii) damage (potential or actual).

On this basis, the Judge also found that generalised statements had been made which were assertions, not evidence - as set out by DC, and flagged by the Judge:

“[DC] owns 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.”

In this regard, the Judge noted the reliance on DC’s “extensive merchandising programme linked to films…and entertainment services”, and not the films themselves. This, linked with the lack of evidence of sales of such merchandising in the UK and whether goodwill had been established as a result of trying in the UK, led to the conclusions reached by the Hearing Officer which, did not pose distinct or material errors in law or principle, such that the Judge stated he would therefore be slow to interfere in the original Decision. Thus, this ground also failed.

Comment

If you ever needed a case that stressed the importance of the specificity of evidence, then you need not look further than this saga. Protecting fictional characters by way of trade marks already faces significant challenges, in the initial registration of such marks (on the basis of absolute grounds for refusal), and also in what other marks can be opposed. Even if one makes it past all of these hurdles, they must also be wary of the evidential challenges that can even have an effect on Wonder Woman - regardless of how famous you are, it seems, one had better have the sales figures to support it, lest risk being unsuccessful…

Images: IPKat doodles are my own.