The trade mark adventures of Lara Croft

The protection of fictional characters presents various challenges. Their external appearance can be protected by copyright, design, trade mark or unfair competition law, though there are limits. An obvious one is the duration of most IP rights. The US copyright for Winnie the Pooh expired in 2021 and it will expire for the original (‘Steamboat Willie’) Mickey Mouse in 2024. Fortunately, there is no limitation on trade mark renewals. Figurative and three-dimensional trade marks for a character can prove to be an effective tool to prevent third parties from exploiting the reputation of the character’s appearance acquired during the term of copyright protection.

Obtaining trade mark registrations for the names of fictional characters like Mickey Mouse, James Bond or Indiana Jones is quite easy because names are generally considered to be inherently distinctive for any goods and services. If they are well-known, they enjoy a broad scope of protection as a recent decision of the EUIPO’s Opposition Division in a case concerning the famous tomb raider Lara Croft shows (case 3180999). 

 

Background

On 12 July 2022, Wuhan Shuncheng Electronic Commerce Co., Ltd. filed an application for EU trade mark no. 18731202 ‘LoraCraft’ covering essentially packaging and stuffing materials as well as ropes in class 22.

Relying on a likelihood of confusion (Art. 8(1)(b) EUTMR) and the protection of a trade mark with a reputation (Art. 8(5) EUTMR), Square Enix Newco Limited (‘Square Enix’) filed an opposition based on EU trade mark no. 549006 ‘LARA CROFT’ registered inter alia for ‘computer games software, computer games’ in class 9. 

 

 

The EUIPO’s decisions

The Opposition Division briefly denied a likelihood of confusion because the goods are dissimilar (Art. 8(1)(b) EUTMR).

Regarding claims based on a trade mark with a reputation (Art. 8(5) EUTMR), the EUIPO found that ‘LARA CROFT’ and ‘TOMB RAIDER’ have been used as trade marks since 1996 throughout the world for computer games, computer game services and a wide range of merchandising products. Lara Croft has featured, inter alia, in music videos (e.g. here), car advertisements (here) and Hollywood films. Several Guinness world records are held by and associated with Lara Croft, including best-selling video game heroine. From 1996 to 2023 the total number of worldwide sales of Lara Croft video games amounted to 95 million units. In the EU (without the UK) Square Enix sold 14 different video games with a total of over 7 million units, generating an eight digit US Dollar turnover.

The Opposition Division concluded that the earlier EU trade mark enjoyed a strong reputation in the EU, in particular in Germany and France, for computer games in class 9.

As regards the similarity of signs, the EUIPO held that both signs will be perceived as the first and last name of a female. The signs are visually and phonetically highly similar on account of the coincidence in the letters ‘L*ra Cr*ft’ and the letters ‘o’ and ‘a’ being merely exchanged. Conceptually the signs were considered not to be similar.

On the question whether the relevant public would establish a link between the marks, the Opposition Division found that the goods and their market sector are only remotely connected. Despite the dissimilarity between video games and packaging material etc., the EUIPO held that merchandising of video game characters is a common practice and an important source of income. Hence it is found to be normal that the earlier mark is exploited outside its market sector, for instance, through licensing or merchandising. The contested goods could easily be used for further merchandising the famous Lara Croft trade mark. Considering this and the high visual and phonetic similarity, the Opposition Division concluded that the relevant public would establish a link.

The EUIPO also accepted that the use of ‘LoraCraft’ on the contested goods would take unfair advantage of ‘LARA CROFT’. Trade marks with a strong reputation will be recognized in almost any context. The exchange of the position of two letters will not impede that recognition. The use of ‘LoraCraft’ for the goods in class 22 will benefit from the attention paid to the highly similar and very well-known mark ‘LARA CROFT’ and will become associated with the aura of fame surrounding the latter. Consumers may think that there is a direct connection between the applicant’s goods and the famous Lara Croft character.

Comment

This decision raises the interesting question whether titles of works (such as ‘TOMB RAIDER’ or ‘LARA CROFT’ for video games or a video game character) are perceived as trade marks by the relevant public, i.e. as indications of origin. The answer impacts the questions whether a trade mark for the title of the work (1) is inherently distinctive, (2) can acquire a reputation for specific goods, (3) is genuinely used and (4) can be infringed by third party use of identical or similar signs.

The German Supreme Court held that use of a sign as a title does usually not amount to use as a trade mark. The purpose of a title of a work is generally only to distinguish one work from another but not to indicate the commercial origin. German case law makes exceptions, inter alia, for well-known titles (case Kinderstube at para. 41) and a series of works published under the same title (e.g. Higher Regional Court of Hamburg, case 5 U 147/09). Adding the ® or TM to the title is also considered to be helpful to establish trade mark use.

As regards the questions of distinctiveness of titles of work, the Grand Board of Appeal of the EUIPO will have the chance to decide whether the trade marks ‘1984’ and ‘ANIMAL FARM’ are registerable inter alia for ‘motion picture films’ and ‘books’. The Fifth Board of Appeal referred the cases to the Grand Board because the decisions on the distinctiveness of (famous) titles are not consistent. On the one hand, ‘THE JUNGLE BOOK’, ‘PINOCCHIO’ and ‘Frühlingsfest der Volksmusik’ (‘Spring festival of folk music’) were considered to be non-distinctive and descriptive for goods in classes 9 or 16. On the other hand, ‘Le journal d’Anne Frank’ and ‘Der kleine Hey’ (‘The little hey’) were considered to be registerable (see R1922/2019-5).

It seems that guidance from the CJEU is required as to the criteria for demarcating (mere) titles and trade marks.

The picture is by Square Enix, Inc.