Batman wins EU trade mark dispute

The evidence submitted to the General Court is not sufficient to show that the EU trademark represented by a bat in an oval frame was devoid of distinctive character at the time of its registration. The General Court has dismissed in its entirety the action brought by Luigi Aprile and Commerciale Italiana (“applicants”) seeking the invalidity of the EU trade mark registered by DC Comics. 

On 21 January 2019, Commerciale Italiana sought a declaration of invalidity of the EU trade mark registered by DC Comics for goods in classes 25 (hats and caps; shorts; jackets, etc.) and 28 (Masks; novelty buttons, novelties, and party hats) of the Nice Classification. On 21 May 2020, the Cancellation Division dismissed the invalidity application, so the applicant filed an appeal with the EUIPO against the Cancellation Division's decision. On 6 September 2021, the Second Board of Appeal of the EUIPO dismissed the appeal lodged by Commerciale Italiana. The applicants now asked the General Court to annul this decision.

The action alleges infringement of Article 7(1)(b) and (c) of Regulation (EU) 2017/1001 on the European Union trade mark (“EUTMR”). The applicants submit that the mark at issue is, first, devoid of any distinctive character and, second, that it describes one of the characteristics of the goods in question.

Regarding the first argument, the applicants submit that the mark at issue is devoid of distinctive character in accordance with Article 7(1)(b) in that it is not perceived by the relevant public as an indication of the origin of the goods in question, but as a symbol referring to the character Batman.

The General Court points out that, for a trade mark to possess distinctive character within the meaning of Article 7(1)(b), it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking. In particular, the distinctive character of a trade mark must be assessed, on the one hand, by reference to the goods or services in respect of which registration of the mark is applied for and, on the other hand, by reference to the relevant public's perception of them. The Court states that the Board of Appeal correctly found that the relevant public associated the contested mark with the insignia of the Batman character, and that that insignia was always associated with DC Comics. It further argues that the existence of copyright protection of the Batman character does not preclude the sign from being simultaneously protected by trade mark law.

Regarding the second plea, the applicants submit that the contested mark describes one of the characteristics of the goods concerned and therefore that it is descriptive as per Article 7(1)(c) EUTMR. The Court points out that, for that to be the case, the sign must suggest a sufficiently direct and concrete link with the goods or services concerned to enable the relevant public to perceive immediately a description of those goods.

The General Court considers that it is not established that the relevant public perceives the contested mark as a reference to the fact that the goods in question contain a depiction of the Batman character including that mark. And it confirms that the Board of Appeal was right to find that the contested mark referred to the origin of the goods in question, since the relevant public associated that mark with DC Comics regarding all of those goods.

Thus, the General Court upholds the contested decision and recalls that, in the context of invalidity proceedings, given that the registered trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call into question the validity of that trade mark. In the present case, the General Court considers that it has not been established that the mark is devoid of distinctive character or that it describes one of the characteristics of the goods in question. It therefore dismisses the appeal in its entirety.