IN THE UK OFFICE

A Game of CopyCat and Mouse

The applicant, Wayne Brown, applied for a device of a cat in a square box in relation to goods in Classes 16 and 25 and services in Classes 35, 40 and 42. Mr Brown used his logo in relation to a photocopying/printing business known as Copycats.

The accepted application was opposed by Turner Entertainment Co. who owned all intellectual property rights in the cartoon characters, Tom and Jerry. The main grounds of opposition were based on Turner’s ownership of copyright (Section 5(4)(b) of the 1994 Trade Marks Act), unregistered trade mark rights (Section 5(4)(a)) and registered trade mark rights (Sections 5(2)(b) and 5(3)) in and for images of the cartoon cat Tom and the cartoon cat and mouse duo Tom and Jerry. In addition, the application was opposed on the basis that the applicant did not have an intention to use the mark applied for in relation to all the goods and services claimed (Section 3(6) and 32(3)).

The Hearing Officer first reviewed the Section 5(4)(b) objection. Under that Section, a UK trade mark application must be rejected if use of the mark applied for in the UK is liable to be prevented by virtue of the law of copyright, design right or registered designs. On the evidence before him, the Hearing Officer found that

• Certain drawings of Tom and Jerry were original artistic works in which copyright subsisted at the date of Mr Brown’s trade mark application.

• Although it was not clear that Turner Entertainment owned the copyright in these Tom and Jerry drawings, it was established beyond doubt that Mr Brown did not own the copyright. Under Section 5(4)(b), it was not necessary for an opponent to show that he was the owner of the relevant copyright. It was sufficient to show that there was a relevant copyright, the applicant did not own it and the applicant’s use of the mark applied for would infringe the copyright.

• A comparison of the mark applied for and the drawings relied on by the opponent lead, in the absence of a convincing rebuttal by the applicant, to the conclusion that, either consciously or unconsciously, Mr Brown’s cat device had been indirectly copied from one of the opponent’s drawings of Tom cat.

• The mark applied for was a substantial proportion of an original artistic work. It was therefore likely that use of Mr Brown’s cat device would constitute an infringement of copyright in the UK.

 

On this basis, the Section 5(4)(b) ground of opposition succeeded.

The Hearing Officer then turned to Section 5(4)(a). Under this section, if use of the mark applied for could be prevented by the opponent in a passing off action, the application must be rejected. On the evidence provided by Turner, the Hearing Officer decided that they had failed to show a likelihood of trade source confusion or deception posed by Mr Brown’s use of his cat device. This was in part because the opponent had failed to show that they exercised any quality control over their licensed products.

This did not settle the matter, however, because it was also argued by the opponent that the applicant’s use of the mark applied for would amount to the applicant passing itself off as a licensee of the opponent’s copyright in numerous representations of the character Tom. This argument was based on the decision made in the earlier case of Mirage Studios v Counter-feat Clothing Co. Ltd (1991 FSR 145). In that controversial (in English judicial circles) case, an interlocutory injunction was granted against the defendant, who was licensing the use of humanoid turtle characters that had been designed to take only the concept rather than the form of the plaintiff’s Teenage Mutant Ninja Turtles. The plaintiff’s Turtle designs were, at the time, the subject of a considerable character merchandising industry. The Judge, in the Mirage Studios case, found that the plaintiff had an arguable case both in relation to copyright infringement and passing off. He distinguished his decision from earlier English High Court decisions (e.g. Wombles, Kojak and Abba) on the basis that licensing copyright material was different from licensing rights in a name, although he did comment that perhaps the latter activity might require judicial reconsideration.

Unfortunately for the opponent, this line of argument also failed, since the evidence they had provided did not establish that the public would expect that only licensed goods and services would bear images of the Tom and Jerry characters. Furthermore, in relation to the Class 35, 40 and 42 services claimed by Mr Brown the fields of activity represented by these services were too far away from the field of merchandising activities. Nothing in the opponent’s evidence suggested that the public had any possible reason to believe that they (the opponent) licensed its characters in respect of these (Class 35, 40 and 42) services. It followed that the opposition based on Section 5(4)(a) failed.

The opposition, in so far as it was based on Sections 5(2)(b) and 5(3) of the Act, was dismissed because Turner’s UK trade mark registration was for a composite mark featuring the words Tom & Jerry and images of both characters and was not viewed, by the Hearing Officer, as confusingly similar to the applicant’s cat device. (Turner’s registration should be contrasted with their most relevant copyright material which featured an image of Tom cat only).

Finally, the Hearing Officer turned to the opponent’s Section 3(6) objection which was based on the argument that the applicant did not have a bona fide intention to use his mark in respect of the Class 16 and 25 goods claimed. Under Section 32(3) of the 1994 Act, a UK applicant must have such a bona fide intention to use his mark in relation to all of the goods/services claimed. If he does not, then the application was made in bad faith and it can be rejected, as a whole or in part.

On the basis of the evidence before him, the Hearing Officer decided that the applicant had no bona fide intention to use his mark in relation to certain Class 16 goods, namely "paper, pictures, posters, photographs, printed matter and printed publications". One reason that he rejected this ground of opposition in relation to Class 25 goods was that he was unwilling to accept that there was an absolute rule that emblazoning a mark across the front of an item (that is "t-shirt use") could never constitute trade mark use of the mark in relation to the goods.

 

Comment

This case shows that the owners of copyright material can resist the subsequent registration of a similar device mark, even in the absence of relevant registered or unregistered trade mark rights. This decision is in line with an earlier case where an application to register a cartoon character taken from the film Pocahontas was also rejected under Section 5(4)(b). See the unreported case S. Tahir v Walt Disney Corporation.

Although, on the facts of the Tom cat case, the opponent was unable to sustain his opposition based on passing off, it seems clear that the owner of relevant copyright material could, under the right circumstances, successfully oppose a trade mark application on this ground (Section 5(4)(a)), before the UK Trade Mark Office, if he could show that the public expected goods and services bearing the relevant images only to be produced under licence. Whether the English Courts, who have been slow to recognise that licensing, or the opportunity to licence, can supply the necessary common field of activity between the plaintiff image owner and the defendant and that loss of royalties can constitute relevant damage, would agree with such an approach remains to be seen.

This opposition also dealt with another basis for a bad faith objection to a UK trade mark application, the argument that the specification of goods/services claimed is too broad and that the applicant cannot have had an intention to use the mark applied for in relation to all or some of those goods/services. In the writer’s view, this ground of opposition should be treated by both the UK and CTM offices much more seriously, given the unquestioning acceptance by both offices of excessively wide specifications. It is believed that, in these circumstances, the applicant should be required to show a reasonable justification for a wide claim and, if they do not provide a satisfactory explanation, the specification allowed should be narrowed accordingly. It is really not good enough for the Offices to argue that a third party simply has to wait five years from registration to challenge such awide list of goods/services on the ground of non-use. Having to wait such a length of time to challenge an unjustifiable monopoly in a given mark is anti-competitive and against the public interest.