COMMUNITY TRADE MARK COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| (1) HEARST HOLDINGS INC
(2) FLEISCHER STUDIOS INC
|- and -
|(1) A.V.E.L.A. INC
(2) POETICGEM LIMITED
(3) THE PARTNERSHIP (TRADING) LIMITED
(4) U WEAR LIMITED
(5) J FOX LIMITED
Emma Himsworth QC (instructed by Hamlins) for the Defendants
Hearing dates: 29th, 30th, 31st Jan, 2nd, 5th Feb 2014
Crown Copyright ©
Mr Justice Birss:
|The claimants' case||3|
|The defendants' case||13|
|The average consumers||72|
|The impact of the many years of trading||77|
|Acts complained of||112|
|s10(1)/Art 9(1)(a) – double identity||141|
|s10(2)/Art 9(1)(b) – likelihood of confusion||150|
|s10(3)/Art 9(1)(c) – link||163|
|s11(2)/Art12 - defences||177|
|Conclusion on trade mark infringement in the UK||191|
|The position in the rest of the EU||192|
The claimants' case
i) UK registered trade mark 1487409 BETTY BOOP in classes 9, 16, 25 and 28 filed on 9th January 1992;
ii) UK registered trade mark 1487518 (device) in class 28 filed on 9th January 1992;
iii) UK registered trade mark 1487325 (device) in class 25 filed on 9th January 1992;
iv) UK registered trade mark 2134589 (device) in class 18 filed on 3rd June 1997;
v) UK registered trade mark 2460441 (device) in class 3 filed on 4th July 2007;
vi) Community Trade Mark 008596348 BETTY BOOP in classes 3, 14, 16, 18, 21, 24 and 25 filed on 6th October 2009;
vii) Community Trade Mark 008596546 (device) in classes 3, 14, 16, 18, 21, 24 and 25 filed on 6th October 2009;
viii) Community Trade Mark 009166323 BETTY BOOP in classes 9, 12, 35 and 38 filed on 10th June 2010;
ix) Community Trade Mark 009166349 (device) in classes 9, 12, 35 and 38 filed on 10th June 2010.
The defendants' case
Trade marks – double identity infringement under s10(1)/Art9(1)(a)
The case law of the CJEU establishes that the proprietor of a trade mark can only succeed in a claim under art.5(1)(a) of the Directive or art.9(1)(a) of the Regulation if six conditions are satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect or be liable to affect the functions of the trade mark: see in particular Arsenal Football Club Plc v Reed (C-206/01)  ECR I-10273;  R.P.C. 9 at , Anheuser-Busch  ETMR 27 at , Adam Opel AG v Autec AG Case (C-48/05)  ECR I-1017;  ETMR 33 at –, Céline SARL v Céline SA (C-17/06)  ECR I-7041;  ETMR 80 at  and UDV North America Inc v Brandtraders NV (C-62/08)  ECR I-1279;  ETMR 25 at .
Trade marks – likelihood of confusion infringement under s10(2)/Art9(1)(b)
"(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is similar to the trade mark; (v) it must be in relation to goods or services which are similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."
Infringement under s10(3)/Art9(1)(c)
Defence under s11(2) of the Act/ Art 12 of the Regulation
. . . shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts,
provided he uses them in accordance with honest practices in industrial or commercial matters.
Validity of the trade marks
Problems with merchandising
i) The fictional character Tarzan (TARZAN (CA)  RPC 450);
ii) The rock band Linkin Park (LINKIN PARK LLC's Application  ETMR 74 before Mr Richard Arnold QC as he then was sitting as the Appointed Person);
iii) The pop group Abba (Lyngstad v Anabas  FSR 62);
iv) The TV detective series Kojak (Tavener Rutledge v Trexapalm)  RPC 275;
v) The Wombles (Wombles v Womble Skip Hire)  FSR 488;
vi) Diana Princess of Wales (Executrices of Diana Princess of Wales)  ETMR 25, Mr Allan James in the UK Trade Marks Registry.
The average consumers
The impact of the many years of trading
i) a fairly plain Dunnes swing tag with the words "Cream Betty Fleece Top" on the back of the label.
ii) a larger red circular swing tag with the words "Betty BoopTM" in cursive script and an image of Betty Boop sitting on those words with one leg in the air looking over her shoulder. This pose is commonly used by the claimants. The reverse side of the circular swing tag shows the cursive words "Betty BoopTM" and an image of the device as registered in the various trade marks. The word TRADEMARK is written beside the device. The label carries small text "© 2011 King Features Syndicate, Inc./Fleischer Studios Inc. TM Hearst Holdings, Inc/Fleischer Studios Inc." and "www.bettyboop.com".
iii) a red neck label with "Betty BoopTM" in cursive script, Betty Boop's head and on the reverse "© 2011 King Features Syndicate, Inc./Fleischer Studios Inc. TM Hearst Holdings, Inc/Fleischer Studios Inc." and "www.bettyboop.com".
iv) a care label which, in addition to the care instructions carries a very small mark consisting of the words "St Bernard" in a box beside "for DUNNES".
v) a red external label sewn into a seam with "Betty BoopTM" in cursive script on both sides.
i) In the UK examples there is a black and white and pink make up bag prominently marked with the words "Betty BoopTM" and pictures of the character in a sitting pose with one leg raised. It contained soap and shampoo marked in the same way. The swing tag is also marked in the same way, carries the familiar © and TM notices, the registered device and also refers on the back to GROSVENOR with a UK address.
ii) There are many bags in the Spanish examples. One will do. It is a shoulder bag with a picture of the character dressed as a rock star in leathers carrying an electric guitar beside the words "Rock Star". There is a winged B logo on the guitar. The shoulder strap carries the words "Betty BoopTM" in cursive script. The outside of the folded swing tag shows the character in a sitting pose with one leg raised, the words "Betty BoopTM" in the jaunty block script. Inside the swing tag on one side are the © and TM notices, website and '348 CTM device. The other side is marked with a device for "KARACTER MANIA SL" and a statement that the product was made for Karacter Mania SL with an address in Barcelona.
Acts complained of
© 1985 All Rights Reserved
© 1985 All Rights Reserved
Distributed by Poeticgem
s10(1)/Art 9(1)(a) – double identity
s10(2)/Art 9(1)(b) - likelihood of confusion
S10(3)/Art9(1)(c) – link
i) a link, i.e. that there is a certain degree of similarity between the registered mark and the sign such that the average consumer makes a connection between them; and
ii) whether the use takes unfair advantage of the distinctive character of the claimants' marks; or
iii) whether the use causes detriment to the distinctive character of the claimant's marks.
s11(2)/Art 12 - defences
Conclusion on trade mark infringement in the UK
The position in the rest of the EU
|UK 1487409||9 Jan 1992||Class 9, 16, 25 and 28
|UK 1487518||9 Jan 1992||Class 28|
|UK 1487325||9 Jan 1992||Class 25:|
||3 Jun 1997||Class 18:|
|UK 2460441||4 July 2007||Class 3:|
|CTM 008596348||6 Oct 2009||Class 3, 14, 16, 18, 21, 24, 25
|CTM 008596546||6 Oct 2009||Class 3, 14, 16, 18, 21, 24, 25
|CTM 009166323||10 Jun 2010||Class 9, 12, 35, 38
|CTM 009166349||10 Jun 2010||Class 9, 12, 35, 38