In Hearst Holdings Inc & Anor v AVELA. Inc & Ors [2014] EWHC 439 (Ch) (25 February 2014), Mr Justice Birss’ (he of Rihanna fame) has upheld passing off and infringement claims by Hearst for the unauthorised distribution of merchandise bearing Betty Boop imagery.

The decision makes fascinating reading.

Mr Justice Birss has once again stressed that – in the merchandising space – the merits of a passing off case will stand or fall based on the specific facts. No surprises there.

He even provided a score card of the “many famous losers” in previous merchandising cases, like the fictional character Tarzan, the rock group Linkin Park and the pop group Abba, albeit going on to note that some cases had succeeded (the cartoon characters of the Teenage Mutant Ninja Turtles, and the race-car driver Eddie Irvine, and – most recently – Rihanna).

But what may be of most interest to those who will regularly encounter such issues is the breadth ascribed to Hearst’s word mark BETTY BOOP in the trade mark infringement context. In particular, the use of images of the Betty Boop character on merchandise infringed the BETTY BOOP word mark registration (in addition to infringing Hearst’s device marks). This note centres on that discreet issue, and provides a comparative perspective in terms of the Australian position.

Word v Image – a question of fact

Hearst relied on word and logo mark registrations in its infringement claim under section 10(2) of the UK Act / Article 9(1)(b) of the CTM regulation.

Unsurprisingly, AVELA relied on the decision of Geoffrey Hobbs QC sitting as the Appointed Person in La Chemise Lacoste [2011] RPC 4. That case involved an opposition against the word mark ALLIGATOR in classes 25 and 35 based on earlier registrations owned by Lacoste for its well known device mark, including the version shown below:

Click here to view image

In response, and with admirable brevity, Mr Justice Birss summarized the legal position from Lacoste as follows:

“[Mr Hobbs QC] found 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. However like so many points in this case, one needs to take care to distinguish between principles of law and questions of fact. Mr Hobbs noted (paragraph 47) that a concept is not a sign capable of being protected by a registration as a trade mark, that the rights conferred by registration are centred on the registered representation of the protected mark and that they do not enable the concept(s) of a mark to be protected without regard to the distinctive character of the mark as registered. I agree. He also noted (paragraph 55) 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 it is not the law that words can never infringe an image mark nor vice versa. It is a question of fact.

Consumers would “immediately recognize” a depiction of the character as Betty Boop, even without the words being present.

Bearing that in mind, and differently from the result in the Lacoste case, Mr Justice Birss held that:

This situation is the converse of the examples referred to by Mr Hobbs in Lacoste. Here it is the image [of Betty Boop] which triggers the perception of the words. The words will be perceived spontaneously and inevitably because they are the name of the character. Both the character and her name are well known and there is a strong association between the two. As I have said before I think many consumers would not even notice that the words BETTY BOOP are absent.”

It appears clear too that Mr Justice Birss considered that the marks were conceptually similar (rather than being phonetically and conceptually similar):

The conceptual similarity between the image and the word mark BETTY BOOP will cause the average consumer to think that the image conveys the same origin information as the words would. Accordingly they will be confused about the trade origin of the goods and so there is a likelihood of confusion

Infringement was established in respect of the word mark.

The Australian position

The Hearst decision raises the interesting question of exactly how word and logo marks should be construed in the infringement and registrability contexts.

The question of whether the same finding could be made under Australian law is an interesting one.

There is certainly a line of case law under which “the idea” (or “the vibe” for you fans of The Castle) plays an important factor when considering deceptive similarity.

However, there is clear authority from Australia’s High Court that there must first be visual or phonetic similarity before any “ideational” or conceptual similarity can even come into play (Cooper Engineering Company Proprietary Limited v Sigmund Pumps Limited (1952) 86 CLR 536: “ … it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive.).

If Mr Justice Birss’ decision in Hearst was based on “ideational” similarity, rather than on the aural similarity that might flow from referring to the depiction of the character as “BETTY BOOP”, then the same result would likely not flow in Australia under the Cooper Engineering test (albeit that it may be relevant to other grounds, including oppositions under section 60 (the reputation ground)).