SUPERMAN vs SB SUPER BERNARD – SWATCH vs SAMSUNG

SUPERMAN vs SB SUPER BERNARD

Super Bernard is a bear with super powers, character of animated cartoons aimed at a young audience. Apolo Films (the studio owning the rights in those works) sought to register as an EUTM the figurative mark with verbal elements “SB Super Bernard”, represented with the mentioned word elements, figurative elements underneath it and a pentagon with the initials “SB” inside. The classes designated were 9, 28, 41.

DC Comics, the owner of the trade mark “Superman”, filed an opposition before the EUIPO, to prevent the registration of the sought EUTM “SB Super Bernard”. The opposition was based on the earlier trade marks owned by DC Comics, consisting in a diamond/pentagon shape containing a stylised letter “S”.

The grounds on which the opposition was based were the likelihood of confusion and trade mark with reputation, pursuant to article 8.1.b) of the European Union Trade Mark Regulation (EUTMR) and article 8.5 EUTMR, respectively.

In the first place, regarding the comparison of the goods and services of the contested mark, some were found identical or similar to the goods and services of the EUTMs on which the opposition was based.

As regards the comparison of the signs, the Opposition Division reminded that “the global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks”. In this case, the outcome of the comparison was at follows:

• Visually: the signs in the pentagonal figure were different, since in the earlier EUTMs an “S” was depicted, while in the contested sign was “SB”. Moreover, the contested mark (SB) was a combination of 2 letters, not just one as the earlier EUTMs.
• Aurally: both signs only coincided in the sound “S”, meaning that the pronunciation was completely different.
• Conceptually: the relevant public will understand “SB” as Super Bernard and not as “Superman”. The letters “SB” will be perceived as the acronym of the verbal elements “Super Bernard”.

Therefore, the Opposition Division of the EUIPO considered that the signs had a low degree of visual and aural similarity and conceptually, they were dissimilar, thus diminishing the importance of the limited coincidences. As a consequence, no likelihood of confusion was appreciated.

In the second place, as regards the reputation of the trade mark according to article 8.5 EUTMR, the Opposition Division considered that the earlier mark “has a high reputation in the European Union and that the goods and services were closely connected, some even identical. However, this does not mean that the relevant public is likely to establish a link between the signs”. As the relevant public would not establish a link between the two signs, the opposition was rejected on this point.

The opposition was dismissed, both for the likelihood of confusion, as well as for the reputation.

We do not yet know whether DC Comics will appeal this decision, but what is certain is that Super Bernard won his first fight against Superman!

SWATCH vs SAMSUNG

Swatch, the jewellery and watch manufacturer, filed a lawsuit in the UK against Samsung, for infringing several trade marks owned by the group. The UK’s High Court issued a decision by which it considered Samsung to be liable for infringing Swatch’s trade marks.

More in detail, the dispute concerned some apps, for instance digital “watch face” designs for smartwatches, that were being commercialised and sold in the Samsung App Store.

These apps could be downloaded from the Samsung App Store directly into a Samsung smartwatch in order to replicate the appearance of a Swatch, Omega, Longines or Tissot watch. Therefore, a Samsung smartwatch could end up looking like a Swatch company one.

This case could shed some light on the liability of app stores owners/ app store developers as regards apps developed by third parties. In this case, the Court found that, although developed by third parties, these apps were made available for download by Samsung App Store thus, as the Court pointed out, Samsung could decide whether or not to sell these apps in the app store. Moreover, this company was obtaining an economic revenue from hosting and selling these apps in their virtual store. Even they if did not sell them directly, there was a commercial interest behind. As a consequence, Samsung was considered liable of trade mark infringement.