The EU’s General Court has sided with an EU Intellectual Property Office (EUIPO) decision that DC Comics’ Batman logo has sufficient distinctive character to qualify for an EU trademark (EUTM).

According to the court, the “fact that that mark consisting of a bat in an oval surround is associated with a fictitious character does not, in itself, make it possible to rule out that that mark can also serve as an indication of the origin of the goods in question”.

Italian clothing retailer Commerciale Italiana Srl and its single shareholder, Luigi Aprile, had applied in 2019 to invalidate the trademark at the EUIPO. They argued it was devoid of distinctive character and was descriptive, both of which preclude registration of the trademark and warrant, where appropriate, a declaration that it is invalid.

The invalidity application was rejected by EUIPO, first by its cancellation division and then by its Board of Appeal. The applicants then brought their grievances to the Luxembourg-based general Court of the EU.

The General Court noted that the Board of Appeal correctly found that the contested mark was distinctive. The court noted that the Board of Appeal takes the view that the Batman character was always associated with DC Comics and that the evidence put forward by the company and Aprile “is not sufficient to show that this was not the case on the date of filing of the application for registration. Or that, on that date, the trademark was associated with another commercial origin”.

EUIPO therefore correctly found that the contested mark was distinctive.

Regarding the allegation the trademark was descriptive, precluding it from registration, the court rejected the argument that the trademark describes one of the characteristics of the goods, on the ground that the Batman character cannot be depicted without that trademark.

The court found that the Italian retailer did not give sufficient reasons why the trademark was capable of describing the characteristics of the Batman character and, all the more so, those of the goods in question. The court added: “They merely submit that that mark was necessary to depict the Batman character and do not, moreover, put forward any evidence in that connection in the context of the present plea.”

In 1996, DC Comics filed an application at the EUIPO for a figurative sign of the Batman logo and the trademark was granted in 1998. In 2019, the Italian company led an application with the EUIPO for a declaration of invalidity of the trademark in respect of goods in Classes 25 and 28 of the Nice classification system for the purposes of registering marks; those two classes cover clothing and carnival items.

Associate and attorney at IP firm Mewburn Ellis, Emily Sullivan, said: “For an invalidity application like this one to be successful, the applicant must demonstrate that the mark was non-distinctive at the time of filing. During the proceedings, the applicant brought several pieces of evidence, however, this evidence didn’t pertain to the time of filing (1 April 1996). The applicant would have needed to provide evidence that the Batman logo was non-distinctive in April 1996 by presenting, for example, a market survey." 

The EC suggested that the applicant should have presented a market survey providing evidence of the public’s knowledge and perception of the Batman logo on the date of filing, so almost 30 years ago. 

Sullivan noted: “Before filing invalidity applications in the EU, applicants should consider what kind of evidence they can obtain from the time of filing to avoid this pitfall. The applicant can try to appeal the decision to the European Court of Justice, but they’ll have to request that the appeal be allowed to proceed and set out significant issues with the decisions. Generally, this hurdle is difficult to overcome",  she concluded."

The General Court has ordered the company and Aprile to pay the costs.