A recent U.K. case dealt with merchandising where a licensing
agency publishes artwork for licensing at all levels of the retail
The Plaintiff's Position
The plaintiffs contend they are the successors of the originator
of the cartoon character Betty Boop, first shown in America in the
1930s. Their position was that they were the only legitimate source
of Betty Boop merchandise in the UK and alleged trade mark
infringement and passing off.
The plaintiffs own a series BETTY BOOP registered trade marks as
well as the following design mark:
The plaintiffs also claimed copyright infringement but this part
of the case was to be heard at a later date.
The Defendant's Position
The defendants contended that they were also a legitimate source
of Betty Boop "imagery" in the UK. They did not
dispute that Betty Boop imagery has been licenced and that the
goods which are sold to the public by their licensees are what the
plaintiffs alleged are unauthorised Betty Boop merchandise. The
defendants deny trade mark infringement on the basis that neither
they nor their licensees use Betty Boop as a trade mark. The Betty
Boop imagery appearing on these goods was asserted to be purely
decorative, made no representation about trade origin and did not
infringe. They denied passing off on the same basis.
The defendants said that they had reconditioned old movie
posters with Betty Boop in them and claimed that its imagery was
all derived from those old posters. The defendants contended that
they could reproduce images of Betty Boop from this source which
did not derive directly or indirectly from works in which the
plaintiffs owned copyright.
The Problem with Merchandising
The Judge said that the essential problem in cases involving
merchandising of the kind in issue in the case was one of fact. The
question is always concerned with what the relevant trade mark
signifies to the average consumer (or equivalent in a passing off
case). When famous names or images are applied to merchandise they
are not necessarily being used as indicators of origin of the
goods. For example, what better way is there to describe a poster
depicting the band LINKIN PARK as a "LINKIN PARK poster".
If a consumer asks in a shop for a LINKIN PARK poster, in that
context the mark is being used descriptively and it would be
difficult if not impossible for a trader to sell such a poster
without calling it a LINKIN PARK poster.
The Plaintiff's Use
In this case the Judge found that both the words BETTY BOOP and
the registered design (or immaterial variants) had been used as
trade marks consistently for years by the plaintiffs. They had been
used together with each other as well as with many other depictions
of Betty Boop, including the head of the character alone or of the
character in a myriad of styles and poses.
Because of this the plaintiff's trade marks were well known
and enjoyed a significant reputation. There was a clear and strong
association between the words and the character. The public
believed there was a single source of Betty Boop merchandise and
the trade marks related to trade origin.
The Judge concluded that the sale of the defendants' goods
were likely to lead the public to think that these goods originate
from the same source of Betty Boop merchandise that they were
familiar with. They were led to this view primarily due to the use
of images of Betty Boop and words like Boop. The fact that the
licensees and goods licensed by the defendants were described
respectively as "Official Licensee" or "Officially
Licensed Product" significantly enhanced the assumption by a
purchaser that the goods were official Betty Boop merchandise
emanating from the plaintiffs, the source with which they were
familiar. The public who wanted the genuine article would be
deceived. This deception damaged the plaintiffs' goodwill.
The Denial of Trade Mark Use
It was clear that defendants licences to use artwork did not
authorize the use of the plaintiff's marks on products.
The products were referred to as "BOOP"
merchandise. However, it was clear that the defendants used
the term BETTY BOOP in relation to the offering of the
The Judge concluded that use of the words BETTY BOOP in relation
to the offer of a merchandise licence which concerned goods
identical to those covered by the trade marks was infringing.
The decision presents a useful approach to cases involving
merchandising although in Canada consideration must also be given
to the application of the statutory definition of trade mark
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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