DC Comics’ ‘Wonder Woman’ loses Unilever showdown
DC Comics has lost its bid to prevent Unilever from registering the trademark ‘Wonder Mum’, after failing to persuade the UK Intellectual Property Office (IPO) that it would infringe its ‘Wonder Woman’ mark.
The decision was handed down on June 21.
The dispute arose when Unilever Global IP applied for the trademark ‘Wonder Mum’ in December 2019 for goods in classes covering toiletries and cosmetics.
In July 2020, DC Comics filed an opposition to the application on the grounds that it bore too much similarity to its earlier registered EU trademark ‘Wonder Woman’, filed in 2015.
The entertainment brand argued that because the parties’ goods were identical or highly similar and the marks were highly similar, that there would be a likelihood of consumer confusion.
DC Comics also claimed that the use of Unilever's applied-for mark would tarnish the reputation of the earlier mark, erode its distinctiveness, and give an unfair advantage to the multinational consumer goods company in the marketplace.
In its opposition, DC Comics claimed that it first used ‘Wonder Woman’ in the UK in 1942 in connection with a beloved superhero character and in relation to a variety of goods and services and that it owns “goodwill associated with the mark in the UK. This, argued the company, entitled it to prevent the use of Unilever’s mark under the law of “passing off”.
Mum’s the word
But the IPO hearing officer, Judi Pike, disagreed, pointing out that the sole point of visual and aural overlap is the word ‘Wonder’ and that the second words, ‘Woman’ and ‘Mum’, did not share any visual or aural similarity.
“Balancing the similarities and the differences, there is no more than a medium degree of visual and aural similarity between the marks,” she noted.
She did concede that while there was some conceptual similarity because both “marks convey the impression of someone female who is very good or effective at something,” that the marks were conceptually similar to a low degree because ‘Mum’ was absent from the earlier mark.
There was more that is different about the respective concepts of the marks than is the same, and average consumers will notice the difference between the marks, concluded Pike.
She also contended that moving from ‘woman’ to ‘mum’ (or vice versa) would not be an obvious brand development for DC Comics. “One is a formal, official term for an adult human female, the other has an informal, colloquial and ‘cosy’ ring to it,” she said, adding that: “there is no likelihood of confusion, either directly or indirectly”.
Entertainment does not denote trade origin
Unilever had argued that the character of Wonder Woman is well-known by the UK public as a result of the “Wonder Woman” TV series that aired in the 1970s and 1980s, and a series of films released between 2016 and 2020 including “Batman v Superman: Dawn of Justice”, “Wonder Woman and Justice League”, and “Wonder Woman 1984”.
However, the hearing officer ruled that “entertainment which features a character does not equate to use denoting trade origin”.
She concluded that the burden was on DC Comics to show that its business had sufficient goodwill that was distinguished by the use of ‘Wonder Woman’ but determined that it had failed to do this.
Pike also noted that even if the opponent had established goodwill attached to ‘Wonder Woman’, it would have made little difference to her final decision given the difference between the earlier sign and the contested mark.
This was because it was unlikely that the opponent’s customers or potential customers would believe that ‘Wonder Mum’ branded goods were from the same source as the Wonder Woman films, comics or merchandise, or that they featured the opponent’s copyright works featuring ‘Wonder Woman’, she said.
The IPO dismissed DC Comics’ opposition and ordered the company to pay costs to Unilever.
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