Canada: Trade Mark Infringement And Merchandising

Last Updated: April 9 2014
Article by John McKeown

A recent U.K. case dealt with merchandising where a licensing agency publishes artwork for licensing at all levels of the retail marketplace.

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 Decision

Passing Off

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 licences.

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 use.

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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John McKeown
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