Introduction

With the release of the much-anticipated live action superhero movie starring Gal Gadot, Wonder Woman is in the limelight as never before. DC Comic's iconic heroine has never been difficult to find in comics, having been continually published since 1941. However, when opening a Wonder Woman comic, readers will notice the words "WONDER WOMAN is a trademark of DC COMICS".

Trademarks are an important part of comic books. Under the existing Trademarks Act, a trademark can consist of any sign that is capable of being represented graphically – including a word, name, letter, number, device, signature, shape, pattern, configuration, container for goods, ornamentation, colour or any combination of these signs. Examples of where trademarks are found in comic books include obvious names such as SUPERMAN or JUSTICE LEAGUE, whereas other examples include the Justice League logo and the stylised Superman font.

Registration process

The process for registering a trademark in South Africa is relatively simple; however, it is advisable to seek assistance from a specialist IP attorney when doing so.

The first step in the registration process is to conduct a trademark availability search of the Trademarks Register to ascertain whether:

  • the trademark in question is available for use and registration in the relevant classes; and
  • prior marks exist which could make registration difficult.

Provided that the search results are favourable, a trademark application is then filed with the registrar of trademarks at the Companies and Intellectual Property Commission.

Trademarks are classified into 45 different classes according to the nature of the goods or services for which they are used or intended to be used. For example, in South Africa, DC Comics has applied to obtain protection of the WONDER WOMAN mark not only for comic books (Class 16), but also for cosmetics (Class 3) and clothing (Class 25), among other things.

The registrar reviews the application and may set conditions for its acceptance. Once any conditions set have been complied with and the application has been formally accepted, it must be advertised for opposition purposes.

Third parties which believe that a trademark should not be registered have three months from the date of advertisement to object. Assuming that no third parties wish to oppose the application, the trademark is then registered and the registration certificate issued. Protection is granted from the date of application. The trademark registration must be renewed every 10 years in perpetuity.

Comment

The almost infinite nature of trademarks is the reason why iconic characters, such as Batman and Wonder Woman, will almost certainly never enter the public domain. A trademark registration gives the rights holder the exclusive right to use the trademark and prevents the unauthorised use by a third party of not only an identical or confusingly similar trademark, but also a company, close corporation, business, trading or domain name. Therefore, in the comic book universe, trademarks provide the strongest protection against large comic publishers using the successful comics of independent creators.

For further information please contact Chezanne Haigh at KISCH IP by telephone (+27 11 324 3000) or email (chezanneh@kisch-ip.com). The KISCH IP website can be accessed at www.kisch-ip.com.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.