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Batman Rises Again: Euipo Boards Of Appeal Dismissed The Claim Of Invalidity For The Bat Symbol

Batman, one of the most important fictional super heroes, is the covert identity of a rich business person Bruce Wayne. Having devoted himself to fight against crime after witnessing tragic death of his parents, Bruce Wayne takes inspiration of his covert identity from a bat hitting his window.

After being created for the first time in 1939, this super hero has featured not only in comic book series, but also in tens of movies, television serials and video games since then. Batman figures and the famous bat symbol have also commercialized by time, and a lot of elements of Batman universe have been the subject of many design and trademark registrations. Batman-related materials have so far been used on a great many of commodities within a wide range from toys to game consoles from stationery items to costumes.

The inspiration taken by Batman’s costume “Batsuit” from bat can be easily seen in cap, cape and arm parts of costume. In addition to them, a bat figure with arms spread wide enclosed in an ellipse shape features on the bosom of costume.
The mentioned figure is composed of a bat with arms spread wide enclosed in “Bat-insignia”

ellipse. This bat sign is one of the most well-known popular culture symbols.
This  article is going to  focus on a decision (no. R1447/2020-2) of the Boards of Appeal of the European Union Intellectual Property (EUIPO) taken regarding a claim of invalidity relied upon the argument that bat symbol is descriptive for Batman costumes.
“Detective Comics” or more widely known and abbreviated as “DC Comics” (trademark holder) is the holder of a registered figurative European Union (EU) trademark. The trademarks is solely composed of the

figurative sign. This trademark has first been registered in EUIPO on 2 February 1998 and its registration has then been renewed twice. The registration covers the goods and services in classes 9, 14, 16, 21, 24, 25, 28, 30, 32 and 41.
In 2019, “Commerciale Italiana S.R.L.” (applicant for invalidity) has filed a claim for partial invalidity to EUIPO Cancellation Division on the ground that the trademark is descriptive and is devoid of distinctive character.
The Cancellation Division has first mentioned about the arguments and defenses of the sides and then made assessments on descriptiveness and distinctiveness.
This stage of the dispute may be summarized as follows:
• According to both sides, it is an undisputable truth that the trademark in dispute is associated by consumers with Batman character. At this point, the Cancellation Division states that Batman is closely related with its publisher DC Comics since its creation in the year 1939. Considering the long life of the character and its book, comics, TV serials and movie adaptations, it is generally accepted that the concerned public knows and recognizes “bat symbol” in the trademark. The word Batman and its “bat symbol” are understood and interpreted by the public as a reference made to cartoon character created by Bill Finger and Bob Kane.
• According to the applicant for invalidity, this symbol is perceived by the public not as a trade mark, but as an ornament belonging to Batman character. This means to say that the symbol makes reference to wearing a Batman costume, e. to the purpose of use of the commodity.
• However, trademark holder argues that it uses this trademark in order to distinguish the goods belonging to its own franchise from the goods of other firms. The EU trademark will surely be associated with Batman, not with any other comic-book character, and for this reason, it is distinctive. The Cancellation Division agrees with the trademark holder in connection therewith, and and states that the trademark in dispute is a highly stylized symbol, rather than a natural portrayal of a bat.
• Trademark holder has further argued that considering its history of around eighty years, its being a worldwide known comic book publisher and its producing materials containing a great many of famous super hero characters, including Batman, DC Comics, with these publications and the characters included therein, is worldwide known, also including the European Union as a whole. Batman and its symbols are being commercially used by DC Comics on many effects, objects and licensed consumer products. According to trademark owner, consumers of related goods in classes 25 and 28 perceive any uses of bat symbol as a use originating from DC Comics and/or as an indicator of quality emerging from a relationship with DC Comics.
• Evidences presented by both sides describe the emergence and history of Batman character and associate it with its publisher DC Comics. The evidences do not denote that bat symbol may be descriptive for the related goods. Furthermore, all references are comprised of fairly important and known sources pointing out the reputation of Batman character all over the world also including the European Union. As a conclusion, the Cancellation Division has come to the conclusion that the EU trademark in dispute will surely be associated by the concerned public only with Batman character of DC Comics due to intensive use of it by trademark holder, and will not be associated or related with any other comic book or super hero story or franchise.
• Under these circumstances, given that bat symbol is well-known by the general public, it can by no means constitute a base or ground for an alleged deprivation of the trademark in dispute from distinctiveness. These arguments of the applicant for invalidity are mainly based on Pinocchio decision of the Board of Appeal. However, according to the Cancellation Division, as also stated by trademark holder, “Pinocchio” decision is not enforceable or applicable on the dispute in hand. “Pinocchio” is the title of a story written for children, and has “become a part of language” as an expression referring only to that story. Thus, the trademark has been invalidated especially for the goods that may make a reference to this story. However, in the dispute in hand, trademark will be associated only with Batman character of DC Comics, because it is an inherent essence of a fictional character to have some certain features making it recognizable by the general public both in appearance and behaviorally. In the existing dispute, consumers will assume that the related goods are launched and offered for sale with a prior consent of trademark holder.
• The association of a fictional character with a costume bearing a ‘bat symbol must not ever connotate that the trademark in dispute transfers information about features of the disputed goods. Genuine use of a symbol as a trademark means that it is attached and appended to the goods or their packs. As the symbol is distinctive, there is no legal reason or ground for its non-registration. The evaluation of genuine use of a trademark is not a reason of invalidity, but a reason of cancellation, and for this reason, it is unrelated to the pending legal proceedings.
• The applicant for invalidity has further asserted that when affixed on the products, trademark will serve only a decorative function and therefore, cannot be perceived as an indicator of origin of the goods. The Cancellation Division has in response expressed that a trademark’s serving a decorative function is not alone sufficient for refusal. Typical decorative elements such as strips, points and/or any types of designs are elements which cannot be distinguished by consumers due to common use of them. Considering certain features of the trademark covered by the claim of invalidity, there is no reason to assume that consumers will entirely perceive the trademark decoratively when it is printed on clothing items or any other goods. Even if they are used for decorative purposes, the elements may be accepted by the public as distinctive and may thus signalize a commercial origin.
• The arguments of the applicant for invalidity pertaining to the descriptive character of the trademark in dispute are nothing more than a duplication of the distinctiveness arguments, and are based on the assumption that the symbol opposed therein is not distinctive. However, as seen and stated above, the trademark is seen by the Cancellation Division as distinctive for the related goods, and on these grounds, the argument of the applicant for invalidity pertaining to the descriptive character of the trademark in dispute is found unbased.
Upon dismissal of the claim of invalidity by the Cancellation Division in its decision dated 21 May 2020, this decision is appealed by the applicant for invalidity. The case file is escalated to EUIPO 2nd Board of Appeal.
The applicant for invalidity has, at the stage of appeal, asserted the following claims, apart from repeating its previous arguments:
• It is unequivocally obvious since the emergence of character that bat symbol is a part of Batman costume. This symbol will be immediately perceived by the related public segment as an ornamental element of goods and as a descriptive symbol indicating the purpose or features of the products.

• trademark affixed on the bosom of a costume will be understood and taken not as an indication of source, but as a part of a copy of the original Batman costume in cartoons. • Trademark application has not gained distinctiveness (a second meaning) as a result of use on the part of the goods covered by the claim of invalidity. • Trademark holder does not take any action in order to prevent the association of its trademark directly with a character, because there is not any necessity to use these symbols in certain situations – when there is the probability of non-perception of trademark as a commercial source. However, it is seen that trademark holder uses its trademark without TM and ® symbols in spite of the aforesaid necessity. • Under such circumstances, it is a requirement of public benefit to make some expressions / figures to be used on products free from such sole and exclusive rights as a trademark right. Hence, after termination of copyrights related to the famous character of Batman, everyone must be free to use the trademark in dispute on costumes making a reference to his famous costume. Responses given by trademark holder against the aforesaid arguments are as follows: • The highly stylized bat portrayal inserted in the bat symbol is by nature distinctive, and is being used commonly by trademark holder in order to distinguish its goods from goods of other enterprises. • Consumers see and perceive the bat symbol as a feature distinguishing the trademark holder’s goods from other entertainment franchises, and consumers are informed that certain goods and services are licensed by trademark holder. Had third parties been free to use this bat symbol on clothing items, it would affect the source designation function (and probably also the investment, advertising and communication functions) of bat symbol of trademark owner. Popularity of Batman as a character does not weaken the distinctiveness of the trademark, but on the contrary, it reinforces its source designation function. For this reason, consumers recognize the source of bat symbol and trust in it as a trademark of DC Comics. • Even if it is considered that trademark is devoid of distinctiveness, it will be demonstrated by evidence that it has gained distinctiveness through use. In the light of the information, arguments, evidences and documents summarized above, the Board of Appeal has reviewed the claim of appeal and has dismissed the claim on the following grounds: • It is beyond doubt that the trademark will be associated with the symbol affixed on bosom of costume of Batman. However, Batman character has at all times been associated with its publisher DC Comics. The applicant for invalidity has not presented any evidence verifying that the trademark in dispute is being used in the market without a prior consent of trademark holder as of the date of application. • The applicant for invalidity has relied upon its arguments that bat symbol, when used on a costume, is so famous that it cannot serve the source designation function and will be understood and perceived as an ornament of original Batman costume. This argument of applicant has also been found by the Board of Appeal unbased as it is not proven that bat symbol is used by other firms on the specified goods. • According to the Board of Appeal, the popularity of Batman character does not weaken the distinctiveness of the trademark. On the contrary, it reinforces and strengthens the source designation function of bat symbol. Consumers recognize the source designation function of bat symbol, and know and trust that it is the trademark of DC Comics. • Use of the trademark with or without ® symbol is by no means important, because the use of this symbol intends to give information to customers that the sign is used as a trademark, and is only for information purposes. On the grounds cited above, the Board of Appeal has found the arguments of the applicant for invalidity baseless and unfounded, and has approved the decision of the Cancellation Division. The primary conclusion derived out of this decision is that according to EUIPO, a symbol’s being one of the famous figures of popular culture does not alone constitute an adequate reason for the symbol’s being devoid of distinctiveness. The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. by Cansu Çatma Bilen and Melike Gülşah Yardimci 22 December 2021