Batman returns: Bat in oval surround found to be distinctive.

In Aprile v European Union Intellectual Property Office (EUIPO) (Case T-735/21), the General Court has handed down a judgment in favour of DC Comics, the proprietor of the Batman logo, rejecting an invalidity challenge from Italian clothing retailer Commerciale Italiana Srl and upholding the validity of the EU trademark (EUTM).

Background

In April 1996 DC Comics, the publisher of the Batman comic books, filed an application with the EUIPO to register the figurative sign depicted below (the ‘Batman logo’) (EUTM No 38158):

The mark was granted registration in February 1998 in Classes 9, 14, 16, 21, 24, 25, 28, 30, 32 and 41 - in particular for:

• “Hats and caps; shorts; jackets; shirts; sweatshirts; t-shirts; tank tops; bathrobes; gloves and mittens; jogging outfits; trousers; jeans; rainwear; swimwear; underwear; pyjamas; costumes; suspenders; slippers; slipper socks; hosiery; sneakers; thongs; sandals; shoes and boots; fabric belts” in Class 25; and
• “Toys, games and playthings; parts and fittings for all of the aforesaid goods; masks (except for sports); novelty buttons, novelties and party hats” in Class 28.

In 2019 Italian clothing company Commerciale Italiana Srl (in liquidation) and its single shareholder, Mr Luigi Aprile, sought to invalidate the Batman logo in relation to a part of the goods - namely:

• “Hats and caps; shorts; jackets; shirts; sweatshirts; t-shirts; tank tops; gloves and mittens; trousers; costumes; slippers; slippersocks; hosiery; thongs; sandals; shoes and boots; fabric belts” in Class 25; and
• “Masks (except for sports); novelty buttons, novelties and party hats”, “clothing” and “carnival items” in Class 28.

This challenge was rejected by the Cancellation Division of the EUIPO, and the decision was subsequently upheld by the Board of Appeal on the following grounds:

1. The Cancellation Division was correct to refuse to limit the scope of the invalidity request to the goods listed above, as the requested limitation contained different terms which were not covered by the actual EUTM registration. The Board of Appeal noted that “headgear” was a broader category than “hats and caps” for which the mark was registered. In addition, the board stated that, “if the invalidity request was only granted for the goods claimed, the wording of the remaining specification of the EUTM registration would lead to legal uncertainty”. 
2. The cancellation applicant had not demonstrated that, at the time of the filing of the Batman logo, the mark was associated with another origin (ie, that it was widely in use in the EU marketplace on the goods at issue by third parties without authorisation from DC Comics). The board concluded that consumers did recognise the origin of the Batman insignia and associated it with DC Comics.

The Italian company and Mr Aprile, unhappy with the verdict, appealed to the General Court to overturn the decision.

Decision

The applicants appealed on four grounds, which can broadly be summarised as follows:

1. The Board of Appeal had erroneously carried out a joint analysis of the two grounds for invalidity and failed to provide a detailed statement of reasons relating to the descriptive character of the contested mark.

This plea was rejected as unfounded by the General Court relying on Soprema v OHIM (Case T-763/14), where it was held as follows:

“The Board of Appeal cannot be required to provide a statement of reasons which would exhaustively follow one by one all the arguments put forward by the parties before them. The statement of reasons may be implicit, provided that it enables the parties concerned to know the reasons for its decision and for the competent court to have sufficient information to carry out its review.”

2. The Board of Appeal had incorrectly considered that the public always associated the Batman character with DC Comics and should have concluded that the mark was devoid of distinctive character.

The court denied this on the grounds that the applicants had not provided any evidence on the relevant public’s knowledge and perception of the contested mark on the date of filing of the Batman logo EUTM application, such as survey evidence.

3. The Board of Appeal had failed to recognise that the contested mark was descriptive of one of the characteristics of the goods in question, on the basis that the Batman character cannot be depicted without it.

The court rejected this plea, stating that the mere fact that the mark was associated with a fictitious character, namely Batman, did not, in itself, preclude it from serving as an indication of origin. The applicants had not adduced sufficient evidence to back this claim.

4. The Board of Appeal had erroneously refused to restrict the scope of the application for invalidity, hence affecting the assessment of the distinctive and descriptive character of the contested mark.

The court disagreed. 

Comment

This is an interesting case which focuses on the issues involved when seeking to invalidate an EUTM. In invalidity proceedings, there is a presumption of validity of the mark and it is for the complainant to invoke specific facts which call the validity of that mark into question. This case highlights the importance of the complainant being able to provide sufficient and suitable evidence to support its claim. It remains to be seen whether the Italian company will appeal this decision to the Court of Justice of the European Union.

This article first appeared in WTR Daily, part of World Trademark Review, in June 2023. For further information, please go to www.worldtrademarkreview.com.