The EUIPO has upheld an opposition by DC Comics to protect its well-known SUPERMAN mark, despite the fact that the applicant's mark covered a different class of goods than the SUPERMAN mark.

Magic Box INT. Toys S.L.U. applied to register the SUPERZINGS figurative mark (the Contested Mark) for goods in Class 28 (decorations for Christmas trees, toys, games, appliances for gymnastics and toy for animals) (the Contested Goods).

DC Comics (the Opponent) filed an opposition based on Article 8(1)(b) and 8(5) EUTMR. The opposition was based on its SUPERMAN logo mark (the Earlier Mark) for goods and services in Classes 3, 9, 14, 16, 21, 24, 25, 28, 30, 32 and 41.

The decision

For an opposition based on Article 8(5) to succeed, the following cumulative conditions must be met:

• The marks must be identical or similar.
• The opponent's mark must have a reputation.
• Use of the contested mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.

The signs must be identical or similar

Following a comparison of the marks, the Opposition Division concluded that the two marks were visually and aurally similar to an average degree, and conceptually similar to a low degree.

The opponent's mark must have a reputation

The Opponent claimed that the Earlier Mark had a reputation in the EU for all the goods and services covered by it. However, they had only referred to Classes 16 and 41 in their observations. Consequently, the Opposition Division only examined the Earlier Mark's reputation in relation to goods and services in those two classes, namely:

• Class 16: Printed matter; printed periodical publications; books.
• Class 41: Entertainment services all relating to the production and distribution of films, video tapes, cassettes, tapes, records and compact discs.

On the evidence, the EUIPO found that the Earlier Mark had achieved a significant degree of reputation in the EU for goods in Class 16, in particular for comic books. However, as the evidence referred to films (Class 9 goods) and not to the production and distribution of films, the evidence did not demonstrate that the Earlier Mark enjoys reputation for services in Class 41. Consequently, the EUIPO's examination proceeded on the basis of reputation for goods in Class 16.

Risk of injury

In order to establish the existence of a risk of injury, it is necessary to demonstrate that the relevant public will establish a link between the two marks (C-408/01, Adidas; C-252/07, Intel).

The EUIPO found that customers were likely to establish a link between the two marks. It noted that:

• the marks are visually and aurally similar to an average degree, and conceptually similar to a low degree
• the goods and services covered by the marks target the same relevant public (the public at large, who possess an average degree of attention), and
• the Earlier Mark has a significant degree of distinctiveness due to its reputation in the EU for goods in Class 16.

The EUIPO also found that there was a market connection between the Contested Goods in Class 28 and the Opponent's reputed goods in Class 16. It reasoned that it was common for comic book publishers to enter into agreements that permit third parties to manufacture a range of merchandise, which may include the Contested Goods.

The EUIPO subsequently concluded that use of the Contested Mark for all the Contested Goods would take unfair advantage of the repute of the Earlier Mark. It observed that consumers are conscious that the Contested Mark refers to the Opponent's famous comic books and that its attractive powers and fashionable features are used to promote the marketing of merchandise. 

It followed that use of the Contested Mark in relation to the Contested Goods could be more attractive for consumers due to the reputation of the Earlier Mark and, therefore, could facilitate the marketing of the Contested Goods.

Other types of harm and infringement under Articles 8(1)(b) and 8(4)

As the EUIPO concluded that the Contested Mark would take unfair advantage of the repute of the Earlier Mark, it found that it was unnecessary to examine the other grounds of opposition.

Analysis

The decision confirms that, for the purposes of establishing the existence of a risk of injury under Article 8(5), a link between two marks may be demonstrated in spite of the fact that the marks cover goods in different Classes. In this instance, the link arose largely from the Earlier Mark's reputation and the commercial connections between the two classes of goods in question.

Case Reference: B 3 060 398