Betty Boop And Infringement Of A Word Mark By The Use Of An Image

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 decision1, 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...

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