25 February 2014Trademarks

UK court rules trademark infringement in Betty Boop case

A UK court has ruled that a US company, which publishes artwork for use on clothing and merchandise, has infringed trademarks belonging to the creator of cartoon character Betty Boop.

Fleischer Studios brought the action against Avela Inc. over its licensing of poster images of the 1930s character to use on handbags and t-shirts sold in the UK.

Fleischer, and its subsidiary company Hearst Holdings, accused the defendants of trademark infringement and passing off.

The lawsuit also said Avela’s UK licensing agent, The Partnership Trading Limited, alongside U Wear, J Fox and Poeticgem, which distribute the merchandise to retailers, were all liable.

The company failed to win a lawsuit in the US on the same grounds. However today, February 25, in a judgment at the UK High Court, Mr Justice Birss upheld Fleischer’s claims.

Fleischer, which says it is the sole licensee of Betty Boop merchandise, asserted five UK registered trademarks and devices as well as four community trademarks.

They were registered for the words ‘Betty Boop’, while the device showed an image of the character. Both covered a variety of classes, including clothing and merchandise.

Avela, which trades under the name Avenue LA, offers to licence artwork from its library of posters to merchandisers in the UK and US. Within its portfolio are images of Betty Boop.

According to the judgment, Fleischer became aware of Avela’s businesses in the US in 2006 and in the UK when it began there in 2009.

The judgment said the defendants did not dispute that the imagery was “unauthorised” but denied trademark infringement and passing off on the basis that neither they nor their customers used the registered trademark in full and used the image for decorative purposes.

However, Birss rejected the claims: “Both the character and her name are well known and there is a strong association between the two. I think many consumers would not even notice that the words Betty Boop are absent,” he wrote.

“I reject the defendants’ argument that … usage of a picture of Betty Boop and or the word ‘Boop’ are purely decorative. They are decorative but they are not purely so.”

Birss added that the defendants’ goods were all labelled “Official Licensee” or “Officially Licensed Product” and that the … presence of the Betty Boop character was “reinforced strongly” by the words.

Birss wrote: “Avela’s licensees have led their customers to believe that they have a licence from the source of Betty Boop merchandising licences, that is to say from the claimants. The licensees’ customers have been deceived.”

Earlier, Fleischer was unable to convince a US court of trademark infringement.

In a judgment (Fleischer Studios, Inc. v AVELA, Inc.) handed down in February 2011, the US Court of Appeals for the Ninth Circuit ruled that Avela was not using Betty Boop as a trademark but as a ‘functional product’.

“Avela is entitled to rely on the fact that it won the US litigation but I do not regard this as a strong point. The US litigation was not concerned with either party’s rights in Europe,” wrote Birss.

Damages will be assessed at a later date.

The claimants were represented by Field Fisher Waterhouse LLP and the defendants by Hamlins LLP.

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