Disney is not (Guus) lucky

admin-ajax.phpA trademark registration provides a powerful weapon against abuse of your brand. For many, especially famous people, this is an important argument for the registration of the trademark. However, one of the most important restrictions of a trademark is the one of genuine use: a trademark has to be used as a commercial indication of goods or services. Therefore, just being famous does not constitute use of a trademark, use of the name as a trademark for certain products or services is needed.

For well-known cartoon characters, the same applies. In this respect, the cancellation division of EUIPO recently rendered  several interesting decisions concerning characters of Disney like Mickey, Pluto, Minnie, all registered as device marks in the European Union. The Danish company Hummel filed applications for revocation against these trademarks and contested the use of these marks. Disney filed many examples of products with for example Minnie Mouse. In response Hummel stressed that use of a character as merchandise did not constitute use and was not use of the trademark registered. In response, Disney argues that since the images refer to the same character, the distinctiveness of the mark is not altered.

The EUIPO  is quite firm and emphasizes that “similarity of the signs assessed is not the relevant criteria as regards the analysis of whether the mark was used as registered. The issue to be resolved is not whether consumers would assign the same economic origin to products sold under the mark as used and products sold under the mark as registered, but whether they would consider such signs to be the same signs.”

Moreover, according to this division characters are protected by copyright. “By registering a figurative trademark representing an animal, the owner does not receive protection for all possible variations of representations of similar animals. The function of a trademark is to distinguish commercial origin of goods and services, not to protect creative works of art.” As a result, all the trademarks of Disney are invalidated.

So, registering characters as a trademark gives you protection for 5 years but when the use requirements apply, it will be quite difficult to prove the use of a trademark for products and services. This means that a trademark is not a logical replacement of copyrights that expire.

Knijff Merkenadviseurs

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