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In the ever-expanding Marvel Universe, their latest Disney + offering follows the life of Jen Walters, an LA Attorney and newly turned superhero following an accidental blood cross-contamination with her cousin Bruce Banner. Of all the lessons of heroism and sacrifice that can be taken from the superhero world, Episode 5 of She-Hulk; Attorney At Law provides insight onto an issue ordinary people are far more likely to pay heed to – the importance of registering your trade marks.
Although not typically on a supervillain’s manifesto, Jen’s nemesis Titania registers the trade mark SHEHULK in relation to beauty products and uses this registration as grounds to sue Jen for trademark infringement. After being served a cease and desist notice, Jen is forced to take her fighting of supervillains to the court room as she is made to defend her use of the SHEHULK name.
In a somewhat unrealistic depiction of a court-case (it wouldn’t be Marvel if it wasn’t a little dramatised!) Jen relies on prior use and bad faith arguments to defend her use of the mark. Quickly learning that Titania has the upper-hand given she has registered the mark, Jen calls upon some questionable witnesses to help prove her use in any way possible. Jen provides enough evidence of her prior use of the name and wins the trade mark battle – in true superhero style! However, the battle quite aptly captures the difficulty of proving you have superior rights in a trade mark based on prior use when someone else has registered the brand name you are using or trading under, especially if you are not a superhero lawyer.
In fact, it is not just superhero lawyers that struggle to defend their use of a trade mark someone else has registered. In 2017, pizza restaurant owners of UK trade mark ‘CASPIAN’ and the accompanying logo mark, registered in 2005 and 2010 respectively, commenced action against another pizza restaurant CASPIAN that was claiming to have used the name since 2002. Just like Jen, the defendants here were relying on their prior use in a particular locality to not only defend the infringement claim, but to invalidate the registered mark. Although unregistered trade mark rights do exist in the UK, they are far harder to defend and especially when up against a similar or identical registered mark. In the case of REDD Solicitors LLP v. Red Legal Limited, the defendant was less successful in proving prior use and so faced infringement action. Similarly, in the Caspian case, had the claimants registered the mark when they first started using it in 1991, they would have been more likely to win the case. In the UK, there is no requirement to use a trademark prior to registering it or even declare an intention to use (something Jen would have had to consider in the US) and so there really is a strong argument to consider registering trademarks you are planning on using.
In the Marvel tale, Jen had failed to make a timely trade mark registration for her alias SHEHULK, making it harder to prevent someone else commercialising the name. Arguably, in the era of social media influencers and micro-celebrities, it has never been more important to protect a personal brand or alias as a registered trade mark. This is a cost effective way of securing rights that can be used to challenge third parties that aim to use identical or similar brands. The trade mark rights protected by registrations can then more readily be commercialised.
For example, Charli D’Amelio a well-known social media star, made famous on TikTok protected her own name as a trade mark in the US and has used the brand to make sound commercial partnerships with companies such as Dunkin’ Donuts. Emma Chamberlain, famous YouTuber has registered her name in relation to coffee and merchandise around the world and has gone on to make brand collaborations with Levi’s and Louis Vuitton. Under Class 35, a personal brand or influencer name can be registered for promotional services – for example Kylie Jenner has her name registered in relation to ‘advertising services’ and ‘endorsement services’. Linking the work influencers do to clearly defined goods or services, enables their social media handles or aliases such as SHEHULK to be registered as trade marks and protected.
In the case of Hayley Paige Gutman and JLM Couture, a failure to register her personal brand name before the collaboration with JLM Couture meant that when things turned sour, she was forced to give up the use of her name in any commercial sense having signed a contract designating the rights to them back in 2011. If Gutman had protected her name prior to the agreement, it may have given a stronger negotiating position.
A modest initial investment in trade mark registrations should help with commercialising your brand and may avoid costly litigation down the road – helping you to avoid those “supervillains” in court.
This article was written by Devyani Patel, trainee Trade Mark Attorney and Lucy Pope, Trade Mark Partner.
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