The caped crusader BATMAN has again secured another victory in IP Law, this time to maintain and protect his world-famous Batman logo (in case Luigi Aprile & Commerciale Italiana Srl v EUIPO (DC Comics) – T-735/21).

Background

Back in 2019, Luigi Aprile (the “Applicant”) had sought to invalidate the DC Comics’ (“DC”) European Union Trade Mark Registration no. 38158 for  (the “Batman Logo”) in respect of goods in Classes 25 and 28 including costumes and toy masks (one imagines in response to enforcement by DC), based on the Batman Logo being devoid of distinctive character and descriptive of the goods protected, under Articles 7(1)(b) and 7(1)(c) EUTMR. The Applicant’s claims were rejected by the EUIPO, at both the Cancellation Division and the Board of Appeal who maintained it was a valid trade mark registration.

Appeal before the General Court

The Applicant nevertheless pursued its fight and appealed to the General Court (the ‘Court’), arguing in essence:

• that the Batman Logo is directly linked to the well-known fictional character Batman and would therefore not be perceived as a trade mark by the public - but only as a symbol referring to the Batman character and as a decorative element on the goods; and
  
  
• that the Batman Logo describes one of the characteristics of the goods, as the Batman character cannot be depicted without it

The Court noted it was common ground that the Batman Logo refers, for the relevant public, to the Batman character, but sided with the Dark Knight and held that the Batman Logo had distinctive character on an inherent basis, stating that, “the fact that that mark consisting of a bat in an oval surround is associated with a fictitious character does not, in itself, make it possible to rule out that that mark can also serve as an indication of the origin of the goods in question”.

Furthermore, the Court held that the Board of Appeal was correct in finding that, “the Batman character was always associated with its publisher… and that the applicant had failed to demonstrate that, at the time of filing of the contested mark, the Batman insignia was associated with another origin.”

The Court also dismissed the descriptiveness claim, as the Applicant did not submit sufficient reasons or evidence why the Batman Logo was capable of describing the characteristics of the Batman character and those of the goods in question.

The Court concluded that the Batman Logo was inherently registrable as consumers immediately recognise DC as being the source of origin for goods bearing that sign.

Thus the DC trade mark registration survives to fight another day.

Comment

It is interesting or satisfying (to Batman fans at least) that this case was about what the Batman Logo “indicates”, when in the Batman mythos the Batman Logo, in the form of the “bat-signal”, is beamed into the sky as a method of contacting and summoning Batman in the event that his help is needed, but also as a weapon of psychological intimidation to the villains in Gotham City.

On the facts it is hard to see how the Court could have found otherwise, but this case does raise some interesting and fundamental issues about the nature of a trade mark.

One of the primary and essential functions of a trade mark is to denote commercial origin. Some commentary on this case has looked at this from a more fundamental perspective and argued whether the name of a well-known fictional character (or the symbol of that character) should ever be presumed to be able function as such a badge of origin inherently? That inherently the relevant form of IP protection would be copyright and trade mark protection only be available in cases where the owner can show that in fact consumers do see the symbol as functioning as a trade mark and indicating commercial origin (i.e. it has acquired the necessary trade mark distinctive character through use).

There is case law (as cited in this case by the Applicant) to support famous fictional character names being treated differently when assessing inherent registrability as trade marks. In the Pinocchio case (R1856/2013) Disney’s trade mark application was refused for certain goods as it was held that name has entered the common language and is incapable of being attributed any meaning other than just a particular story and so that name is actually devoid of distinctive character in relation to certain goods and services such as films, books, comics, toys and plays since consumers will think that these goods and services refer to the story and character of Pinocchio, this being the only meaning of the word. In the DR NO (T-435/05) and OCTOPUSSY (R526/2008) cases it was held that these names of famous stories (as well as characters), when used on DVDs, books, model cars and watches, indicate artistic origin only and not commercial origin.

What the Applicant was unable to do in this case was overturn the presumption that the Batman Logo could function as a trade mark inherently and that the public would assume DC was behind all merchandise. They could not for example point to the artistic works being out of copyright (as in the Pinocchio case) nor that there were multiple non-DC commercial origins of Batman products etc.          

Whilst it was not made out in this case and would have needed (likely illusive) evidence, I do have some sympathy with the Applicant’s argument about the perception of the Batman Logo when used on specific types of clothing namely not just on clothing (or costumes) per se like this but on clothing such as a “Batman” costume. In this case, how would the average consumer (perhaps me buying my son a Halloween costume) perceive this sign – as indicating this costume is ultimately from DC (or a least the Batman people) or as being merely decorative or telling you this is a costume of the Batman character?

Take-aways

Whilst fictional character names and logos are protectable as trade marks both in the UK and EU, it is important to be aware of the technical pitfalls. We also advise registering these types of marks as soon as possible and keeping licensing records to show control of the marks once they have been registered. Moreover, it is crucial to continuously educate the public so that they perceive goods/services bearing the mark as originating from your company only.

To read about a previous legal outing by the Dark Knight see Savan’s 2010 article on BATMAN v BATSMAN (on page 40).