Introduction

There have been numerous examples of both celebrities and the owners of well-known fictional characters failing to prevent third parties using their images on merchandise.  However, there have also been some winners (including most recently Rihanna).  And we can now also add Betty Boop to the roster of winners.

In a recent decision[1], the High Court has ruled (among other things) that the use of a Betty Boop image infringed the word trade mark for BETTY BOOP.  The breadth of protection afforded  to the word mark in the context of trade mark infringement is perhaps surprising, and this summary focuses on that aspect of the decision.

Face the facts

The claimants, Hearst Holdings Inc, are the owner of a Community Trade Mark for the words BETTY BOOP.  A.V.E.L.A Inc, the first defendant, licensed various images of Betty Boop to a number of licensees who in turn sold Betty Boop merchandise to various retailers, including Primark.  A.V.E.L.A had obtained old movie posters of Betty Boop and had 'reconditioned' them.  It claimed that the imagery to which it granted licences was derived from these old posters.

Part of the claimants' case was that the merchandise which featured Betty Boop imagery infringed the BETTY BOOP word mark under Article 9(1)(b) of the CTM Regulation even though those words did not in fact appear on the products in question. 

Unsurprisingly, A.V.E.L.A and its licensees sought to rely on a decision of Mr Geoffrey Hobbs QC as the Appointed Person in La Chemise Lacoste [2011] RPC 4.  In that case it was decided that the similarity between the word ALLIGATOR and the well-known Lacoste crocodile device was not sufficient to give rise to a likelihood of confusion.  Mr Hobbs noted in that case that a concept was not a sign capable of being protected by a registration of a trade mark – the rights conferred by a trade mark are centred on the registered representation of the protected mark. They do not enable the concept(s) of a mark to be protected without regard to the distinctive character of the mark as registered.

However, Mr Hobbs also mentioned in the Lacoste case that the outcome of the comparison between a word mark and a device might be different if the word had the power to trigger perceptions and recollections of the imagery of the earlier mark with the same degree of spontaneity and specificity  as (say) the images conjured up by the words MONA LISA, EIFFEL TOWER and STARS AND STRIPES. In other words, as the judge in the Betty Boop case remarked, it is not the law that words can never infringe an image mark nor vice versa.  It is a question of fact in each case.

The facts in this case are the converse of those in Lacoste.  Here it is the image which triggers the perception of words.  The judge determined that on seeing an image of Betty Boop, the words Betty Boop will be perceived spontaneously and inevitably because they are the name of the character.  Both the character and the name are well known and there is a strong association between the two.

The judge concluded that the conceptual similarity between the Betty Boop image and the words BETTY BOOP would therefore cause the average consumer to think that the image conveyed the same origin information as the words would.  Accordingly there was a likelihood of confusion under section Art 9(1)(b) of the CTM Regulation and, as such, infringement was established in respect of the word mark.

The success of Hearst in this case highlights that it is indeed possible for an image to infringe a word mark and vice versa. The decision may result in celebrities who own trade mark registrations for their names seeking to use those registrations to prevent the use of their images on merchandise, even though their images may not be protected as trade marks. This could be an interesting development in the area of so-called "image rights". It may also be of wider significance bearing in mind that the principles referred to in this case are of universal application and not necessarily confined to character merchandising.