AVOID Making a Betty Boop - Case Law on Trade Mark Infringement and Passing Off in Respect of Merchandising
- AuthorChristopher Buck
This is some learning which would be of interest to any businesses who might find themselves having used Trade Marked names on merchandising. In this case - I share how a business (the defendant) was found to have passed off an association with a fictional character (Betty Boop).
The High Court has ruled in the case of Hearst Holdings Inc and another v A.V.E.L.A. Inc and others  EWHC 439 (Ch) that the use of “Betty Boop” imagery for a range of merchandise amounted to Trade Mark infringement and passing off of "BETTY BOOP" word and figurative marks.
Under Section 10 of the Trade Marks Act 1994, infringement of a Trade Mark occurs when a third party uses, in the course of trade, a sign which is:
- Identical to that Trade Mark, for goods or services which are identical with those for which the Trade Mark is registered (section 10(1)).
- Identical to that Trade Mark, for goods or services which are similar to those for which the Trade Mark is registered, or similar to that Trade Mark for goods or services which are similar or identical to those for which the Trade Mark is registered, and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark (section 10(2)).
- Identical with or similar to that Trade Mark where the Trade Mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Trade Mark (section 10(3)).
The elements of the tort of “passing off” are:
- A goodwill or reputation attached to the relevant goods or services.
- A misrepresentation by the defendant to the public (whether or not intentional) leading, or likely to lead, the public to believe that the goods or services offered by the defendant are those of the claimant.
- Damage to the claimant, arising from the erroneous belief (caused by the defendant's misrepresentation) that the source of the defendant's goods or services is the same as the source of those offered by the claimant.
The claimants in this case owned registered United Kingdom and Community trade marks for the word BETTY BOOP and a figurative mark for merchandise in a number of classes.
The claimants contended that a series of defendants had committed Trade Mark infringement under section 10(1) in relation to the word marks, and under sections 10(2) and 10(3) in relation to all the marks, and had also committed passing off, all by virtue of their merchandising activities.
Conclusion: The judge found that the defendants had infringed the claimants’ United Kingdom and Community Trade Marks and committed acts of “passing off”.
The judgment in this case contains some interesting comments about merchandising and when Trade Mark infringement and passing off actions will be successful in this context. This case differs from cases involving merchandise that depicts real people and issues of endorsement as it concerns a fictional character, and shows how a fictional character can act as a sign of origin.
At Franklins, my team and I regularly advise businesses and individuals on both contentious and non-contentious intellectual property matters and have been extensively involved in advising clients on Trade Mark and passing off issues.
It is important to look at registering your Trade Mark(s) if you have not done so already as it represents an important outward protection of your brand and intellectual property which can contribute quite significantly to the value of your business, service or product.
If you require assistance in respect of Trade Marks or would even like a conversation about how to register your Trade Mark - then please feel free to contact me on 01908 660 966 or e-mail me at firstname.lastname@example.org. I’d be pleased to help provide some legal advice on the matter.