Batman may be a superhero but it is the General Court who has come to the rescue following an invalidation action bought against DC Comics, a Warner Bros subsidiary, by Commerciale Italiana Srl, a wholesale retailer of costumes. In 2019, the Italian company applied for the invalidation of the well-known Batman logo (EUTM 000038158) for some of the goods in classes 25 and 28 (including clothing, footwear, and costumes), based on lack of distinctive character.

The Case

The invalidation action was refused by the EUIPO and subsequently by the EUIPO board of appeal. The reasoning given by the EUIPO for the refusal was that despite the somewhat original arguments put forward by the invalidation applicant the fact that the mark “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.”

In order for an invalidation action to be successful, the applicant must first prove that the trademark was non-distinctive at the time of filing. However, in this case none of the evidence submitted by the Commerciale Italiana proved that when the trademark application was filed back in 1996, the relevant public would not have associated the Batman logo with DC Comics. On this basis, the argument according to which the Batman character cannot be depicted without the Batman logo was unsuccessful. In fact, the popularity of Batman as a fictional character strengthens the origin function of the Batman logo, and consumers recognise the origin function of the trademark and rely on it for their commercial decisions.

Following the refusal by the EUIPO board of appeal, Commerciale Italiana turned to the General Court. However, the court upheld the EUIPO’s decision, ruling that “the evidence submitted to the General Court is not sufficient to show that the Batman logo was devoid of distinctive character or associated with another commercial origin on the date of filing” and that the mark is in fact distinctive for the goods of interest. Although, a further appeal to the Court of Justice is available, it seems unlikely as Commercial Italiana is now in liquidation and there may no longer be a commercial interest in pursuing this case.

Takeaways

This decision is welcomed by right holders of well-known marks in the entertainment industry that rely on trademark protection to sell official merchandise as a major revenue stream. This case confirmed that trademark owners can rely on the argument that well-known marks associated with fictional characters do not become generic or devoid of distinctive character only based on the association with such character made by the public. By contrast, the success of a mark and its widespread use in association with a fictional character support the trademark function of commercial origin and ensures that exclusive rights can be enforced long after the application date.