BACKGROUND TO THE DISPUTE

On January 2019, Commerciale Italiana Srl, filed an application for declaration of invalidity of the following EU trademark for goods in classes 25 and 28, owned by DC Comics. On May 2020, the Cancellation Division dismissed the application in its entirety. On July 2020, Commerciale Italiana decided to file a notice of appeal against the Cancellation Division’s decision, which was dismissed by the Board of Appeal.

Commerciale Italiana and Luigui Aprile decided to appeal to the General Court against the contested decision.

DECISION

In this case, the appeal was dismissed, confirming the contested decision of the Board of Appeal in which the application for declaration of invalidity filed by Commerciale Italiana was rejected.

The applicant for annulment put forward four pleas in law, based on the infringement of Articles 95.1, 94.1 and 51.1 a), read in conjunction with Articles 7.1 b) and c), of Regulation 2017/1001.

The applicants for invalidity complaint about the joint analysis of the two grounds for invalidity, regarding Articles 7.1 b) and c) of Regulation 40/90, without giving a detailed statement of reasons with regard to the descriptive character of the contested mark. In this sense, the Court considered that the fact that that mark 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. It followed stating that the Board of Appeal correctly explained that the contested mark indicated the origin of the goods in question, since the relevant public will always associate the Batman character with DC Comics, and the mark referred only to goods originating from the trademark applicant.

As of the descriptive character of the mark, the Court found that the evidence did not show how the ‘bat logo’ could be descriptive of the goods in question, but, at best, they show that the Batman character has a reputation worldwide. The fact that the fictitious character is associated with a costume bearing the ‘bat logo’ does not mean that the mark in question conveys information on the characteristics of those goods. Moreover, it found that the arguments of the applicants for invalidity, regarding the descriptive character of that mark, were the same as those put forward in respect of its distinctiveness, based both on the premiss that that mark was not distinctive.

Finally, in relation with the argument that the contested mark cannot enjoy the protection conferred by a mark, because the Batman insignia should be protected under copyright, the Court reminds that the existence of copyright protection does not preclude the sign from being protected under trade mark law at the same time.

The appeal must be dismissed and, consequently, the Board of Appeal correctly rejected the declaration of invalidity. Mr. Luigi Aprile and Commerciale Italiana Srl are ordered to pay the costs of the proceedings.

[Case T‑ 735/21, ECLI:EU:T:2023:304, 07/06/2023]