A Superhero Trade Mark Battle: Wonder Mum vs Wonder Woman

The High Court has recently determined that DC Comics, the owner of the “Wonder Woman” trade mark is unable to prevent Unilever from launching “Wonder Mum” cosmetics in the UK.

“Wonder Woman” is DC Comics (Partnership)’s superhero comic book character that has been registered as an EU trademark since 18 November 2015.  However, Unilever Global IP Limited has successfully registered its trademark for “Wonder Mum” for various cosmetic goods following the IPO’s decision last year which was upheld by the High Court on appeal earlier this month.

Background

Unilever succeeded with the registration of the “Wonder Mum” trade mark last year. That was despite DC opposing the application on the basis that it first used “Wonder Woman” in the UK in the 1940s in relation to a variety of goods and services that fall under various classes of goods including Class 3 (i.e. for cosmetics and cleaning substances).

The IPO granted Unilever permission to register the “Wonder Mum” trade mark (for Class 3 goods and services) last year as it did not consider, based on the evidence before it, that the registration of that trade mark in that class would threaten “Wonder Woman’s” copyright nor would the cosmetic products threaten the superhero’s global reputation either.

Appeal

DC therefore appealed to the High Court. They disagreed with the IPO’s decision on a number of grounds relating to the IPO’s interpretation of the provisions of the Trade Marks Act 1994 and the evidence before it.  These included arguments that:

—  The “Wonder Mum” trade mark is similar to the “Wonder Woman” mark, and would be registered for goods and services identical with or similar to those for which the “Wonder Woman” trade mark is protected, and there is a likelihood of confusion on the part of the public, which includes the likelihood of association of the “Wonder Mum” trade mark with the “Wonder Woman” mark.

—  There was a likelihood of confusion between the “Wonder Mum” trade mark and the “Wonder Woman” mark.

—  The reputation of the “Wonder Woman” mark in the UK would be infringed (the IPO considered that DC’s evidence that relied on the superhero’s reputation generally was not sufficient).

—  The IPO should have been satisfied that DC did satisfy all three requirements of passing off, namely (i) goodwill or reputation; (ii) misrepresentation leading to deception or a likelihood of deception; and (iii) damage resulting from the misrepresentation (the IPO considered that DC had not proved sufficient goodwill in the UK attached to the words “Wonder Woman”).

Decision

The High Court did not accept any of DC’s grounds of appeal and held that the IPO had been correct in its findings and had not incorrectly interpreted DC’s evidence.

In simple terms, the High Court did not consider that DC’s appeal arguments sufficiently addressed the underlying basis for the IPO’s decision, namely that the average consumer would not consider that the use of the words “Wonder Mum” on cosmetic products meant that those products were connected with “Wonder Woman” based on the evidence before the IPO.

Conclusion

The above case is a useful reminder of the importance of the likelihood of confusion test, for trade mark infringement and, for the registration of a new (potentially infringing) trade mark.  It also demonstrates the importance of ensuring all relevant evidence is before the IPO at the time it determines an opposed application to register a new trade mark.

Our Disputes and Corporate and Commercial teams are highly experienced in advising businesses on IP issues including trade marks and passing off. If you would like advice about protecting your intellectual property or if it’s alleged that you have infringed the intellectual property of another, please get in touch.