The trade mark adventures of Lara Croft

On 12 July 2022, Wuhan Shuncheng Electronic Commerce Co., Ltd. filed an application for EU trade mark no. 18731202 ‘LoraCraft’ covering essentially packaging and stuffing materials as well as ropes in class 22.

Relying on a likelihood of confusion (Art. 8(1)(b) EUTMR) and the protection of a trade mark with a reputation (Art. 8(5) EUTMR), Square Enix Newco Limited (‘Square Enix’) filed an opposition based on EU trade mark no. 549006 ‘LARA CROFT’ registered inter alia for ‘computer games software, computer games’ in class 9. 

The Opposition Division briefly denied a likelihood of confusion because the goods are dissimilar (Art. 8(1)(b) EUTMR).

Regarding claims based on a trade mark with a reputation (Art. 8(5) EUTMR),
the EUIPO found that ‘LARA CROFT’ and ‘TOMB RAIDER’ have been used as
trade marks since 1996 throughout the world for computer games, computer
game services and a wide range of merchandising products. Lara Croft
has featured, inter alia, in music videos (e.g. here), car advertisements (here)
and Hollywood films. Several Guinness world records are held by and
associated with Lara Croft, including best-selling video game heroine.
From 1996 to 2023 the total number of worldwide sales of Lara Croft
video games amounted to 95 million units. In the EU (without the UK)
Square Enix sold 14 different video games with a total of over 7 million
units, generating an eight digit US Dollar turnover.

The
Opposition Division concluded that the earlier EU trade mark enjoyed a
strong reputation in the EU, in particular in Germany and France, for
computer games in class 9.

As regards the similarity of signs,
the EUIPO held that both signs will be perceived as the first and last
name of a female. The signs are visually and phonetically highly similar
on account of the coincidence in the letters ‘L*ra Cr*ft’ and the
letters ‘o’ and ‘a’ being merely exchanged. Conceptually the signs were
considered not to be similar.

On the question whether the
relevant public would establish a link between the marks, the Opposition
Division found that the goods and their market sector are only remotely
connected. Despite the dissimilarity between video games and
packaging material etc., the EUIPO held that merchandising of video game
characters is a common practice and an important source of income. Hence
it is found to be normal that the earlier mark is exploited outside its
market sector, for instance, through licensing or merchandising. The
contested goods could easily be used for further merchandising the
famous Lara Croft trade mark. Considering this and the high visual and
phonetic similarity, the Opposition Division concluded that the relevant
public would establish a link.

The EUIPO also accepted that the
use of ‘LoraCraft’ on the contested goods would take unfair advantage
of ‘LARA CROFT’. Trade marks with a strong reputation will be recognized
in almost any context. The exchange of the position of two letters will
not impede that recognition. The use of ‘LoraCraft’ for the goods in
class 22 will benefit from the attention paid to the highly similar and
very well-known mark ‘LARA CROFT’ and will become associated with the
aura of fame surrounding the latter. Consumers may think that there is a
direct connection between the applicant’s goods and the famous Lara
Croft character.

Comment

This decision raises
the interesting question whether titles of works (such as ‘TOMB RAIDER’
or ‘LARA CROFT’ for video games or a video game character) are perceived
as trade marks by the relevant public, i.e. as indications of origin.
The answer impacts the questions whether a trade mark for the title of
the work (1) is inherently distinctive, (2) can acquire a reputation for
specific goods, (3) is genuinely used and (4) can be infringed by third
party use of identical or similar signs.

The German Supreme
Court held that use of a sign as a title does usually not amount to use
as a trade mark. The purpose of a title of a work is generally only to
distinguish one work from another but not to indicate the commercial
origin. German case law makes exceptions, inter alia, for well-known
titles (case Kinderstube at para. 41) and a series of works published under the same title (e.g. Higher Regional Court of Hamburg, case 5 U 147/09). Adding the ® or TM to the title is also considered to be helpful to establish trade mark use.

As
regards the questions of distinctiveness of titles of work, the Grand
Board of Appeal of the EUIPO will have the chance to decide whether the
trade marks ‘1984’ and ‘ANIMAL FARM’ are registerable inter alia for
‘motion picture films’ and ‘books’. The Fifth Board of Appeal referred
the cases to the Grand Board because the decisions on the
distinctiveness of (famous) titles are not consistent. On the one hand,
‘THE JUNGLE BOOK’, ‘PINOCCHIO’ and ‘Frühlingsfest der Volksmusik’
(‘Spring festival of folk music’) were considered to be non-distinctive
and descriptive for goods in classes 9 or 16. On the other hand, ‘Le
journal d’Anne Frank’ and ‘Der kleine Hey’ (‘The little hey’) were
considered to be registerable (see R1922/2019-5).

It seems that guidance from the CJEU is required as to the criteria for demarcating (mere) titles and trade marks.

The picture is by Square Enix, Inc.