Hearst Holdings Inc (Hearst) are the proprietors of a number of trade marks relating to the cartoon character Betty Boop and claim to be the only legitimate source of Betty Boop merchandise in the UK. Hearst contend that they own substantial goodwill and reputation in the UK in respect of the sale of goods bearing Betty Boop imagery and that any unauthorised product bearing such imagery constitutes an infringement of their rights. A.V.E.L.A. Inc (AVELA) (and others) had been selling unauthorised merchandise featuring Betty Boop imagery. Accordingly, Hearst alleged that AVELA’s actions constituted trade mark infringement, copyright infringement and passing off. AVELA denied the allegations.
On 25 February 2014, Mr Justice Birss found for Hearst in respect of the trade mark and passing off actions. The copyright infringement action will be heard at a later date.
AVELA had denied trade mark infringement on the ground that they were not using the Betty Boop imagery in a trade mark sense, their use being purely decorative. Unfortunately for AVELA this argument was not persuasive. Birss J held that the average consumer was likely to view the imagery as conveying information as to the origin of the goods. Of significance was the fact that AVELA used the images on swing tags attached to the merchandise.
Birss also stated that even if the imagery conveyed no origin information, its use was still likely to convey associations and ideas to consumers and that AVELA would be benefitting from the claimants’ work in instilling those ideas and associations in the mind of the average consumer.
This judgment is a reminder that it is possible to infringe a third party’s trade marks, even if you are using them in a way that is predominantly decorative, if your use conveys any origin related information to consumers, or is likely to lead to consumers inferring a link between your goods/services and those of the registered trade mark proprietor.
David Yeomans, Trade Mark Assistant