Insight
It is International Women’s Day – a day for considering the social, economic, cultural, and political achievements of women in the UK and all over the world.
Coincidentally, the English High Court just recently considered the ‘achievements’ of Wonder Woman herself.
In DC Comics (partnership) v Unilever Global IP Ltd [2022] EWHC 434 (Ch), the court considered, amongst other things, whether the ‘Wonder Woman’ trademark had achieved sufficient reputation and goodwill in the UK to prevent registration of the mark ‘Wonder Mum’ by Unilever for a range of shampoos and other bath, shower and hair products.
The UKIPO had previously granted Unilever permission to register the ‘Wonder Mum’ mark, despite DC Comics’ opposition due to its earlier EU Mark, on the grounds of a likelihood of confusion under the Trade Marks Act 1994 s.5(2)(b), taking unfair advantage of the reputation of the earlier mark pursuant to s.5(3), and giving rise to a claim for passing off within s.5(4)(a).
The court held, among other things, that it had been shown that the IPO had properly concluded that there was a low degree of conceptual similarity. The court held that there would be no likelihood of direct confusion, even in relation to the goods which were identical. An average consumer or a customer or potential customer of DC Comics would not be confused or misled into thinking that the use of the ‘Wonder Mum’ mark had been linked to or associated with ‘Wonder Woman’ or DC Comics as its commercial origin.
This case highlights the need for reputation to be built up around the words themselves in a word mark, rather than any visual “get up” or character, if an earlier trade mark holder wishes to oppose the registration of a competing or similar word mark under ss 5(2)(b), 5(3) or 5(4)(a) of the Trade Marks Act 1994.
Although Wonder Woman has no doubt won plenty battles throughout a long and illustrious career – in this particular battle over ‘conceptual similarity’, it is ‘Wonder Mum’ who has prevailed.
The full IPO decision can be read here: