DC Comics v Unilever – Wonder-full!

DC Comics’ filed an opposition against Unilever’s application for the mark WONDER MUM but it was categorically rejected by the UKIPO hearing officer who found in favour of Unilever on all grounds (5(2)(b), 5(3) and 5(4)(a) of the TMA 1994).

The UKIPO decision was appealed to the High Court. As an appeal the High Court’s role was to review the decision of the UKIPO, not to re-hear the opposition entirely. Upon intricately examining the review decision, the High Court considered the findings relating to the distinctiveness of the words WONDER WOMAN and WONDER MUM and in the relevant classes of goods and services.

Whilst it was accepted that the marks coincided in the WONDER element it was nonetheless deemed that the marks were nonetheless only similar to a “low degree” and given the differences in the goods/services there was no likelihood of confusion.

Moving to the 5(3) ground the Judge upheld the Hearing Officer’s decision on reputation, in particular that reputation of a trade mark is “cumulative” and taken from the perspective of the relevant customer, such that the majority of the relevant customers must be sufficiently “confused” by the similarities between the marks in order for there to be detriment to the reputation of the earlier mark.

The evidence of reputation in classes 9 & 41 was found to be “inconclusive” with consumer awareness of WONDER WOMAN being as a character from the movie (with the same name) rather than as a trade mark per se.

This decision is yet another case that shows that trade marks with seemingly similar (or even identical) elements may not result in confusion where they coincide only in non-distinctive elements. Particularly where the goods/services, and relevant customer bases, differ.

Read the judgment here.