With ruling of June 7th 2023 (case T-735/21), the EU Court affirmed that the EU trademark depicting a bat in an oval frame has distinctive character because, even if associated to the fictional character Batman, allows anyway to identify the marked products as originating from DC Comics.
The case
On January 21st 2019, an Italian company filed with EUIPO an application for a declaration of invalidity of the EU trademark representing the well-known Batman logo, filed by the US company DC Comics on April 1st 1996.
In particular, the applicant asked that the trademark be declared invalid in respect to some articles of apparel and costumes included in classes 25 and 28, because lacking distinctive character. In support of its requests, the applicant stated that the trademark at issue did not contain any information on the characteristics of the goods bearing the trademark, because the target consumer associated the logo of the bat only to the costume of the comic book main character.
The Cancellation Division of EUIPO entirely dismissed the request of the Italian company that, subsequently, appealed the decision before the EUIPO Board of Appeals with the same motivations.
In July 2020, even the Board of Appeals dismissed the appeal of the applicant, stating that it did not provide enough evidences to show the lack of distinctiveness of the contested trademark. Moreover, in light of the evidence emerged during the proceeding, EUIPO concluded that consumers have always associated the character of Batman to its publisher and that, therefore, consumers recognize the origin of such symbol and consider it as trademark of DC Comics.
Following the second rejection, the applicant turned to the EU Court.
The decision of the EU Court
With decision of June 7th 2023, the EU Court dismissed the appeal of the Italian company, definitely recognizing the distinctive character of the DC Comics trademark.
The European Judges recalled that the distinctive character of a trademark must be evaluated, on one hand in respect to the goods or services for which the registration is filed and, from the other, in respect to the perception of the target audience.
On the basis of such considerations, the EU Court recognized that the target audience associates the bat logo to the Batman character as early as the date of the filing of the contested trademark, that is from April 1st 1996. As recalled by the EU Court, the relevant date to evaluate the intrinsic distinctive character of the contested trademark is, in fact, the date of the filing of the trademark registration application.
Moreover, the Court stated that the association of the trademark to a fictional character does not allow, in itself, to exclude that such trademark could be used also as indication of the origin of the goods that it distinguishes. According to the EU Court, “the applicants’ argument that the contested mark cannot enjoy the protection conferred by a mark, because the Batman insignia is a literary and artistic work which should be protected under copyright, cannot succeed, since the existence of copyright protection does not preclude the sign from being protected under trade mark law at the same time”.
Ilaria Feriti