For the relevant public, that distinctiveness makes it possible to associate, according to EUIPO, the goods covered by the trade mark with DC Comics and to distinguish them from those of other undertakings.
On 1 April 1996, DC Comics, the publisher of Batman, filed an application with the European Union Intellectual Property Office (EUIPO) for registration of an EU trade mark for the following figurative sign:
That trade mark was registered on 2 February 1998.
In 2019, the company Commerciale Italiana Srl filed an application with EUIPO for a declaration of invalidity of that trade mark. The application, regarding certain classes of goods, such as clothing and carnival items, was rejected by EUIPO, first by its Cancellation Division then by its Board of Appeal: EUIPO considers that, in the evidence submitted to it, the Batman character was always associated with its publisher and that it had not been shown that consumers had associated that trade mark with another origin.
The company Commerciale Italiana and its single shareholder, Mr Luigi Aprile, ask the General Court of the European Union to annul the decision of EUIPO. They dispute, inter alia, that the trade mark is distinctive and argue that it is descriptive, both of which preclude registration of the trade mark and warrant, where appropriate, a declaration that it is invalid.
The Court finds that the decision of EUIPO contains sufficient reasons since it makes it possible for the company Commerciale Italiana and Mr Aprile to understand the Board of Appeal’s reasoning, despite the Board of Appeal’s reference to part of the Cancellation Division’s findings.
As for the distinctive character of the trade mark, the Court recalls that distinctive character means that the trade mark serves to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings. Further, in invalidity proceedings, as the registered trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question. According to the Court, the mere fact that that trade mark is associated with a fictitious character, that is, Batman, does not, in itself, make it possible to rule out that that trade mark can also serve as an indication of the origin of the goods in question. Further, the Board of Appeal takes the view that the Batman character was always associated with DC Comics and that the evidence put forward by the company Commerciale Italiana and Mr Aprile is not sufficient to show that this was not the case on the date of filing of the application for registration or that, on that date, the trade mark was associated with another commercial origin. EUIPO therefore correctly found that the contested mark was distinctive
Last, regarding the allegedly descriptive character of the trade mark, the Court rejects the argument made by the company Commerciale Italiana and by Mr Aprile that the trade mark describes one of the characteristics of the goods, on the ground that the Batman character cannot be depicted without that trade mark. According to the Court, the company Commerciale Italiana and Mr Aprile do not give sufficient reasons why the trade mark is capable of describing the characteristics of the Batman character and, a fortiori, those of the goods in question.
More information: CURIA