Who: Graham Jules v Marvel Characters, Inc. and DC Comics Inc.
Where: UK IPO
When: May 2016
Law stated as at: 13 June 2016
What happened:
At the end of May 2016, Marvel and DC comics withdrew their opposition to businessman Graham Jules’ trade mark registration for ‘Zero to Superhero’. Mr Jules had written a self-help manual for business start-ups called ‘Zero to Superhero’ and had applied to register this title as a trade mark at the UK Intellectual Property Office (“UKIPO“)
Marvel and DC own the trade mark ‘super heroes’ and various similar marks. They objected to the use of the word ‘superhero’ and filed an opposition. Marvel and DC opposed Mr Jules’ registration on the grounds it would dilute their earlier marks and cause confusion. In response to this, Mr Jules put in an application asking the UK IPO to find that Marvel and DCs ‘super heroes’ mark was invalid. Mr Jules, who is a law student, did not instruct lawyers and did all the work himself.
After a battle which has been on-going for 2 and half years, the two goliaths have now withdrawn their opposition at the UK IPO, a mere 4 days before the opposition proceedings were set to commence. The reasons for this are not clear- the press has reported it was for ‘commercial reasons’- perhaps they decided they have bigger fish to fry or were worried about the press that may ensue if they continued with the opposition? DC and Marvel have a history of preventing others from using ‘superhero’ so it is interesting that they have let it go this time.
It is common in cases like this that the parties will agree that where an opposition is withdrawn, the counterclaim for invalidity will also be withdrawn. Interestingly, this agreement must not have been made in this case as the UK IPO published its decision on the invalidity proceedings on 26th May. Mr Jules’ claim for invalidity was based on 4 grounds in relation to ‘super hero’:
- it is generic;
- it is not sufficiently distinctive;
- it is contrary to the ‘free to use’ doctrine; and
- the term is used in a customary way in entertainment and fiction.
The invalidity decision was in Marvel and DCs favour. The UK IPO found that not enough evidence had been brought to invalidate the ‘super heroes’ mark. As the mark was filed in 1979, the evidence needed to demonstrate the position at this date, which Mr Jules did not do. However this doesn’t mean that another entity could not attack the mark in the future on these grounds with evidence from this date.
Why this matters:
Marvel and DC’s decisions not to pursue this opposition may mark a retreat from the hard line they have been taking with anyone who attempts to register ‘super hero’. Mr Jules’ mark has now been registered at the UK IPO. This makes it very difficult for Marvel and DC to bring a later claim for infringement so Mr Jules can comfortably use his mark. What a hero!
