Written by Diana Soitu, Legal intern.
Edited by Gunna Freivalde, Attorney at Law and Arbitrator for Arts.
Introduction
The cinematography industry is full of Trademarks marketing strategies for products placement. In the movies, the characters consume famous soda brands, meanwhile these brands are advertised on huge screens on the buildings of big cities. The movies bring back discontinued popular products among consumers and create huge revenues. For example, the case of Szechuan Sauce by McDonalds in a Rick and Morty episode. Similarly, fictional products popular among cinephiles, like the Hoveboard (from Back to the Future) have become real products distinctively linked to the original movie. At the same time, due to the skillful directing, Fictional Trademarks create a perfect imitation of Real Trademarks in this virtual world. The Krusty Krab Restaurant is one of the most recognizable Fictional Trademarks that immediately create an association with the characteristic features of the Real Trademarks, such as: marketing campaigns, distinctive dress code and strategies for trade secret protection from the Plankton's shrew attempts to steal it. The multimedia industry is a place where any brand or virtual character meets its perfect loyal customers. And just like the fictional characters Garfield or Paddington Bear, they become Real Trademarks. However, among other criteria and similarly to Real Trademarks the criteria of distinctiveness, as per Article 6 quinquies (b) ii of the Paris Convention for the Protection of Industrial Property 1 must be met by the Fictional Trademarks to receive registration.
The Increasing Role of the Fictional Trademarks in the Multimedia
To avoid extensive complex deals with real brands for product placements, but also to avoid decrease of the artistic or intellectual merit of a work, the movie industry has increased the role of Fictional Trademarks. Likewise, the Real Trademark when used on the screen can make the scenes appear too impactful and realistic in the perception of the viewer, so that the cinematographic suspension of disbelief migh dissipate, which can be also the intent of the author 2. A Fictional Trademark or Character product placement is coherent to the imaginary world of a movie and therefore, holds on the suspension of disbelief among the audiences, who understand that what they perceive is not real. Quentin TARANTINO is one of the best-known directors that has created and used his own virtual companies and products, in avoidance of the Real Trademarks. Whether it is Cabo Air, Red Apple Tobacco, or G.O.Juice there is a cross reference to Real Trademarks used for the purpose of storytelling and connection with the public 3.
In other words, Fictional Trademark and Characters are perfectly adjusted to the movie screen. They play an important role by exploiting the wishes of Real Trademarks, for example the immediate customer recognition resulting from the use of arbitrary, fanciful, or suggestive names. Additionally, it allows the director to create satire, to criticize, to parody real brands commercial behavior, and their impact in the society, thus distorting the image of a Real Trademark in the minds of the consumers. And vice versa, although largely imitating the commercial behavior of the Real Trademark, the essence of a Fictional Trademark can become different in the real world,once it is "defictionalised" by registration.
The Distinctiveness Assessment
To be registered, Fictional Trademarks must "walk" the same path as Real Trademarks. One of the challenges is to meet the criteria of Article 4 (a) of the EUTMR: the Fictional Trademark "must distinguish the goods or services of one undertaking from those of other undertakings" 4. Therefore, the question is: When is it the most appropriate time to approach the trademark registration office?
The owner of the Fictional Trademark could test if the consumers clearly identify products or services placed in the movie, in association with a Fictional Trademark. The consumers should be able to distinguish that these products or services all come from a specific source. Therefore, an evaluation of the relevant point in time when the trademark become precisely distinctive based on the perception of the public is significant 5. The same applies to Fictional Trademark or Characters part of a videogame. Yet, there is a very niche audience in the gaming industry compared to the Cinematography for the scope assessment of the distinctiveness of the Fictional Trademark. Nonetheless, the practices inside European Union show that it is not required to prove a higher-than-average degreee of inherited distinctiveness and reputation recognized by the relevant public 6. Similarly, in US, where most of the Fictional Trademarks and Characters received registration, it is sufficient for the pertinent public in a relevant market sector to recognize the origin of a virtual brand from a video game to proceed with the registration. For example, ZeniMax Media Inc. registered the Trademark Vault-Tec, based on the Fictional Trademark Vault-Tec, based on the Fictional Trademark Vault-Tec Corporation from the Videogame Fallout. The registration with USPTO was granted in 2009, way before the appearance of the popular series Fallout in 2024, considering that the first Fallout videogame was released in 1997.
Well known or Not so Well-Known Fictional Trademark.
The SKYNET Case.
The reputation of a Fictional Trademark plays a role in the distinctiveness analysis for the registration. Yet, the fame acquired as a result of a continuous and consistent use creates a strong psychological association of products with its origin in the minds of the consumers 7. Though there are cases when the well-known Fictional Trademark is successfully registered without authorization, in other cases the so-perceived famous Virtual Brands registration may be hindered, obviously, due to the lack of authorization from the rightful owner, after a Fictional Character copyright enters the public domain, but also due to the likelihood of confusion in the opposition procedures.
Article 6 bis of the Paris Convention allows the well-known trademark to be protected, without the requirement of use in a territory where it is not registered. Whether a Fictional Trademark is "defictionalised" by a sufficient and consistent use of the reverse product placement, the so-called "productisation" in a specific territory, there is no precise criteria to define what a famous trademark is. Yet, the requirement of well-known trademark is significantly higher than the reputation thereof. Further, according to the explanations of the EU Advocate General in Chevy (C-375/97), "it is the trademark registration that represents the line between the well-known mark and a mark with repuartion"8. Therefore, it is not always possible to reflect the distinctive character of he well-known Trademarks. Even so, the Chevy decision has set some non-exhaustive factors for assessment of the well-known marks: the market share held by the trademark, the intensity and geographical extent and the duration of its use and the size of the investment made in promoting it 9.
Such an example was the in the Opposition decision for the word trademark Skynet filed with EUIPO in 2020 fr classes 9 and 42 (Nice Classification) and rejected in its entirety in. The opponent, Sky International AG opposed the Skynet application, claiming, (based on its earlier EU figurative trademark, registration Nr. 14 897783),likelihood of confusion, unfair advantage detrimental to distinctiveness or repute. The applicant argued that the word "SKYNET" referred to the well-known Terminator movies to which the relevant public is accustomed with, specifically to associate "SKYNET" with "A fictional distributed artificial intelligence system that is aware of the physical world and acts autonomously through robots and computer control systems".
And although the Applicant submitted printouts from the Terminator films, showing that "SKYNET" is an AI computer network, it did not suffice to prove that an average, well informed customer immediately associated this word with the Terminator film. Based on the conceptual similarity and the likelihood of confusion, the Opposition Divistion found relevant the assessment of the consumers in the English-speaking countries in Europe, Ireland and Malta . The consumers identified the workd "SKY" in both earlier mark and the contested sign. Further, the Court explained that the average consumer breaks down the elements composing the word mark by meaning or resembling words known to them. In this case,the word "SKY" was identified with the earlier registered trademark. In addition, despite the argument that the opponent does not operate and does not have the interest in the classes 9 and 42, specifically in areas of blockchain, crypto-currency and data management and storage, the Opposition Division explained "that the comparison of the goods and services must be based on the wording indicated in respective lists of goods and or services". Therefore, the actual or intended use of goods and services was set aside as it was not relevant or the exmination. 10
The case of Skynet reveals that there is a thin line between the recognition by the public according to Article 7 (1)(b) of the EUTMR, the recognition of a well-known Fictional Trademark and its distinctiveness at a relevant point in time. To be prevalent in cinematographic pop culture is sometimes not sufficient to prove distinctiveness in the trademark sense. The Fictional Trademark, well-known at the time, may remain forever a Proto Brand if the perception by the public has changed. And in this case, one significant role is played by the use of the trademark's components in a relevant market 11 and the examination against the earlier trademark registration with reputation under Article 8 (5) EUTMR 12. Additionally, the overall assessment of a virtual mark for likelihood of confusion is challenging to the applicant, especially when there is no authorization and no copyright ownership to back up the distinctiveness per se of the sign. The decision of Skynet in Europe contrasts with the US Court decision to protect the "The Krusty Krab" well-known Fictional Trademark in the case Viacom Int'l Inc.v. IJR Capital Invs, LLC. Viacom has successfully validated and protected its unregistered but famous Fictional Trademark by proving the acquired distinctiveness by use, obtaining the refusal for registration by IJR, probability of confusion by the relevant public and unfair competition. Although IJR argued that "The Krusty Krab" was not used in the real trade and that SpongeBob is not as famous as Superman, the Court found that the mark is eligible for trademark protection because it is a recurring element of the "SpongeBob SquarePants" show. This decision was based on the preponderance of evidence presented by Viacom, where "The Krusty Krab" was the key-element, consistently used in the TV show in over 150 episodes since 1999, featured films in 2004 and 2015 with total earnings of 470 million dollars, a musical and licensed consumer merchandise.
In regard to Skynet decision the question is: could have this Fictional Trademark eventually acquire distinctiveness or reverse product placement, and would the average consumer be able to recognize this sign in association with a single source, the Terminator movie series that were released from 1984 til 2019? 13 . Undoubtedly, this would have been an individual case-by-case evaluation.
Well-known Authorial Works and Trademark Distinctiveness
The trademark is seen as a way of IP protection continuum and one of the favorite methods of the companies to extend and diversify the commercialization of popular characters and brands merchandise, by extending their lives endlessly (Micky Mouse trademark). When searching to provide an effective protection to the word or figurative embodiments of a Fictional Trademark or Character, it is not always an effortless exercise to assess the distinctiveness and lack of descriptiveness principles when the Fictional Trademark or Character are well known authorial works. There is an increasing difficulty to demonstrate when the public perceives a Virtual Character or Trademark associated with the story-telling, that represents the essence of the copyright, and when there is an inherited or acquired distinctiveness due to use in commerce: an essential criterion for trademark registration. Well-known Fictional Characters like Anne of Green Gables and Pinocchio were denied registration in certain classes for lacking the capacity to indicate the origin of services and goods. Moreover, both works are already part of the public domain and have become customary of the ccurent language 14, according to Article 7(1) d EUTMR. Additionally, as per the Vigeland decision by the EFTA Court it is fundamental to preserve these works for the common use by the society. Secondly, to avoid monopolization of works, which intellectual protection expired in agreeement with the Article 7(1) f EUTMR, by other IP regimes. However, as Prof. Eleonora Rosati points out, the risk of misappropriation of a work contrary to the public policy and accepted principles of morality may be relevant in certain circumstances. The registration of a trademark is arguable under these principles when a famous Fictional Character, (or Trademark), is part of a certain of a certain country'sheritage. 15
In this context, it is remarkable that "Cinderella" is registered both as figurative and word trademarks with inherited distinctiveness, different classes and business entities autonomously coexisting in the European Union 16. Furthermore, the European Genearl Court's decision on Winnetou directs the attention to the protection of the principles of autonomy and independence, and brand consumer recognition by dismissing the argument of descriptiveness of the book fictional Indian called "Winnetou"17. In contrast with the distinctiveness assessment of the well-known Fictional Character for works fallen in public domain, the Batman decision demonstrated acquired distinctiveness for the Batman logo in liaison with merchandise and associated with DC Comics by the reasonably well informed, reasonably observant and circumspect conssumers. 18
Alongside the Batman decision, it is relevant to mention the recognition of the cumulative rights of copyright and trademark. As the authors have the exclusive rights over the commercial exploitation of their intellectual works and the derivates therof, it is essential to seek their authorization as per Article 2 of he Directive 2001/29/EC. Obtaining the rights for manufacturing, use, marketing and commercialization are not only to avoid infringing on the third-party copyrights but can become a useful tool to meet the distinctiveness criteria of the trademark.
The EU trademark registration of the Paddington Bear reveals how consumer perception can be distinguished between the popularity associated with copyright material and the trademark requirement for distinctiveness. Consequently, the Michael Bond's "A Bear called Paddington" stories, which become a symbol in the British culture, we can distinguish consumer's association from the soft toy Paddington Bear created by Shirley Clarkson, followed by a granted license to manufacture and sell this toy by Michael Bond. 19 Many TV adaptations, musicals, product placement like branded chocolate bar in 1977, movies, and advertisement 20 have followed since then, resulting in the inherited distinctiveness. This long-term consistent use of the Fictional Character Paddington Bear was decisive for obtaining the EU trademark in 2000 by the Paddington and Company Limited. 21
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1 Paris Convention for the Protection of Industrial Property.
2 Fictional Brand, Ultimate Pop Culture Wiki. Creative Commons. CC-BY-SA https://ultimatepopculture.fandom.com/wiki/Fictional_brand
3 Tarantinos in the Attic: a brief history of Quentin Tarantino's use of trademarks in storytelling. Rodolfo C.Rivas 17.07.2019
4 REGULATION (EU) 2017/1001.
5 Trademark guidelines, 3.2.2.2 Relevant point in time. Published on 01.02.2020 EUIPO
6 Trademark Guidelines. Examination of Distinctiviness. Published on 01.02.2020, Edition 2020 EUIPO.
7 Acquired distinctiveness & secondary meaning, TRAMA.
8 Character wars: Trademark and copyright protection for fictional characters, Chantal Koller 21.06.2019.
9 The protection of fictional characters under EU intellectual property law, Valentine Labaume, Stockholm Intellectual Property Law Review Volume 4, Issue, Dec. 2021.
10 SKYNET 018302790, date 10.11.2023 EUIPO
11 Trademark guidelines, 3.2.2.2 Relevant point in time. Published on 01.02.2020 EUIPO
12 Trademark guidelines,2.1.2 Relationship between marks with reputation (Article 8(5) EUTMR) and well-known marks (Article 8(2)(c) EUTMR) Published on 01.02.2020 EUIPO
13 The protection of fictional characters under EU intelllectual property law, Valentine Labaume, Stockholm Intellectual Property Law Review Volume 4, Issue, Dec.2021
14 Fictional characters and titles as European Union trademarks, Zuzanna Nyc, published on 21.06.2017 SKIPIP Blog
15 Branderella: trademarks and fictional characters, Eleonora Rosati forthcoming in Yann Basire (ed), Propriété Intellectuelle et Pop Culture, LexisNexis, coll. IRPI,2020
16 EUIPO eSearch Plus, Cinderella Trademark
17 EGC: Winnetou to retain trademark protection for time being. Global Law Experts, 2016
18 The protection of fictional characters under EU intellectual property law, Valentine Labaume, Stockholm Intellectual Property Law Review Vol.4, issue 2 , December 2021
19 All about Paddington
20 Paddington Bear Fictional character in children's literature by Michael Bond, Wikiwand
21 EUIPO eSearch Plus, Paddington Bear Trademark
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