Wonder Woman v Wonder Mum
The UK High Court has rejected an appeal by DC Comics (Partnership) (DC), owner of the 'WONDER WOMAN' trade mark, which sought to overturn a decision by the UK IPO to permit the registration of the mark 'WONDER MUM' by Unilever Global IP Ltd (Unilever).
In December 2019, Unilever filed a UK trade mark application for 'WONDER MUM', in class 3, for a range of toiletry products. The application was published in February 2020, at which point DC filed an opposition on three grounds under the Trade Marks Act 1994 (TMA).
DC argued that registration and use of the WONDER MUM mark by Unilever would:
- create a likelihood of confusion on the part of the public in relation to DC’s own WONDER WOMAN trade mark, which is registered in the UK for goods and services in multiple classes including class 3 (the Confusion Ground);
- enable Unilever to take unfair advantage of the reputation of DC’s WONDER WOMAN trade mark in the UK (the Reputation Ground); and
- give rise to a claim for passing off by damaging the goodwill that DC had built up in the WONDER WOMAN mark (and the superhero character more generally) in the UK (the Passing Off Ground).
The IPO’s Decision
In a decision published on 21 June 2021, the IPO Hearing Officer rejected all three of DC's grounds of opposition.
The Confusion Ground
When assessing the similarity of the marks, the Hearing Officer considered that there was no likelihood of confusion amongst the public. The Hearing Officer found there was a "low degree" of conceptual similarity between the two marks and “no more than a medium degree” of visual and aural similarity. On that basis, the Hearing Officer concluded that consumers were unlikely to be confused between the two marks or to wrongly associate Unilever’s WONDER MUM products with DC.
The Reputation Ground
Having assessed the evidence submitted by DC, the Hearing Officer concluded that it was insufficient to establish the reputation of the WONDER WOMAN mark amongst a significant part of the UK public. In relation to its evidence on the sales of Wonder Woman comics in the UK, DC had failed to provide any detailed revenue figures, instead stating in witness evidence that UK sales made up a "notable proportion" of worldwide sales.
According to the Hearing Officer, DC’s witness evidence contained merely generalised statements and opinions on the fame of Wonder Woman, including an assertion that she was the "most famous female comic book hero in the world". Such comments were not sufficient to prove the reputation of the WONDER WOMAN mark. Similarly, in relation to goods in classes 9 and 41 (entertainment related goods and services), DC failed to evidence that the average UK consumer would view WONDER WOMAN as a recognisable trade mark (i.e. as a badge of origin), rather than simply a film title.
The Passing Off Ground
DC submitted that it owned the relevant goodwill in the WONDER WOMAN name and the WONDER WOMAN character more generally, due to its longstanding use in the UK in connection with merchandising products for films, publications and entertainment services.
The Hearing Officer dismissed this ground on the basis that DC had again failed to properly evidence such alleged goodwill in the UK: many of the products that DC relied on to evidence this goodwill did not, in fact, contain the words WONDER WOMAN at all. Instead, the products featured logos or references to the character's costume. Even where products did use the words WONDER WOMAN, they were merely decorative and did not indicate the products’ commercial origin. In any event, regardless of the decision on goodwill, the Hearing Officer confirmed that DC’s opposition on this ground would still have failed due to the differences between the marks, which meant that DC’s customers were unlikely to be misled into thinking that Unilever’s products were commercially linked to DC.
The High Court's Decision
On appeal, the High Court agreed with the findings of the IPO, dismissing all of DC’s grounds of appeal.
The High Court found that the Hearing Officer had correctly applied the legal tests relating to the assessment of similarity between marks and the likelihood of confusion. The judge disagreed with DC that the Hearing Officer had wrongly considered the marks to be both similar and dissimilar when she had said "there is more that is different about the respective concepts of the mark than is the same"; instead the High Court found that the Hearing Officer had merely explained the thought process that led her to conclude that there was a low level of conceptual similarity between the marks. According to the judge, the Hearing Officer had also correctly carried out the global assessment of the likelihood of confusion: given the low conceptual similarity between the marks, the Hearing Officer was entitled to find that the likelihood of confusion between the marks was low, even in relation to identical goods.
The High Court also agreed with the Hearing Officer’s assessment of the inadequacy of DC’s evidence on the reputation and goodwill associated with the WONDER WOMAN mark in the UK. The judge clarified that the Hearing Officer had not sought to comment on the success of the Wonder Woman film franchise or whether Wonder Woman is a house-hold name. Instead, she was assessing whether the mark WONDER WOMAN had sufficient reputation / goodwill in the minds of UK consumers as a badge of origin. DC had failed to provide evidence to show that it did.
This case is an important reminder of the need to submit sufficiently detailed, robust and relevant evidence to demonstrate any alleged reputation / goodwill when seeking to oppose (or indeed defend) a trade mark. Opponents relying on these grounds must ensure that any supporting evidence is: (1) factual (rather than a statement of opinion); (2) precise (e.g. tangible sales figures, instead of estimates); (3) directly linked to the relevant market in which the reputation is alleged to exist; and (4) demonstrative of the mark being used as a badge of origin, rather than any other tangential use, such as decoration or the subject matter of a film of comic.