In Hearst Holdings Inc & Anor  v  A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch) Mr Justice  Birss held that A.V.E.L.A. Inc. and its co-defendants (together “AVELA”) have infringed  Hearst Holdings Inc.’s (“Hearst”) UK and European Community registered trade marks  and committed acts of passing off in relation to “Betty Boop” merchandise.

Background

Hearst claimed that it represented the originator of the 1930s American cartoon  character Betty Boop and, therefore, was the only authentic source of Betty Boop  merchandise in the UK. Hearst had UK and Community registered trade marks for the  words “BETTY BOOP” and an image of Betty Boop. AVELA argued that it was a legitimate  source of Betty Boop “imagery” in the UK. Both parties sold Betty Boop merchandise in  the UK and the wider European Community. Hearst alleged that AVELA committed trade  mark infringement and passing off by doing so. AVELA denied this and argued that  Hearst’s marks were invalid.

(In the proceedings as a whole, Hearst also alleged copyright infringement by AVELA.  However this claim was separated from the current trial and is due to be heard in  January 2015.)

Hearst contended that any unauthorised product which: (i) bore an image of Betty Boop  would infringe its figurative marks regardless of the pose of Betty Boop; or (ii) was  recognisable as Betty Boop would infringe its word marks regardless of the words  actually used. As to its passing off claim, Hearst contended that AVELA deceived the  average consumer into thinking that its Betty Boop merchandise was either official Betty  Boop merchandise or was authorised by Hearst as the official source of Betty Boop  merchandise.

It was AVELA’s case that it had reconditioned old movie posters of Betty Boop and only  used the imagery derived from those posters on its Betty Boop merchandise (i.e. not  Hearst’s words or images). AVELA further contended that it did not use Betty Boop as a  trade mark and that the Betty Boop imagery on the goods was purely decorative making  no representation about trade origin (and therefore no misrepresentation for the passing  off claim). AVELA also attacked the validity of Hearst’s marks for: (i) being devoid of  distinctive character because the marks constituted the name and/or image of a wellknown character; and (ii) consisting exclusively of indications of the goods for which they  were registered.

Decision

Birss J held in favour of Hearst, finding that the marks were valid, that AVELA had  infringed the UK and Community marks under sections 10(1), (2) and (3) of the Trade  Marks Act 1994 (and their equivalents under the Community Trade Mark Regulation) and  that AVELA had committed acts of passing off.

He rejected AVELA’s defence under s11(2) of the Trade Marks Act (and Art 12(b) of the  Community Trade Mark Regulation) that it was using the pictures of Betty Boop purely for  decoration because the merchandise examined had swing tags which used the words  "officially licensed" or similar indicating to the average consumer that the goods were  official Betty Boop merchandise. He also held that no defence of honest commercial  practices had been made out because AVELA knew of the existence of Hearst's marks,  knew that it would be likely to object to its actions and knew of its reputation but still  intended to take advantage of that reputation in direct competition and in the face of  expressed objections. Finally he did not accept AVELA’s contention that the Betty Boop  merchandise was film memorabilia as the Betty Boop character had largely been built up  by Hearst.

Comments

Birss J concluded that the work carried out by Hearst through 20 years of trading Betty  Boop merchandise in the UK meant that the average consumer saw the Betty Boop  cartoon character not only as decorative but also as a sign related to origin. This made  the cartoon character a valid trade mark, meaning that no other party was able to use  images of Betty Boop without the permission of Hearst. This case demonstrates that it is  possible to turn a cartoon character into a valid trade mark, if the average consumer can  be educated to see the cartoon character as a badge of origin and not merely as being  descriptive.