Character wars: Trademark and copyright protection for fictional characters

One of the most popular panel discussions at this year’s INTA conference examined possible methods of IP protection for fictional characters. Panelist Chantal Koller sets out the European perspective.

When you think about fictional characters, you might think first of popular characters that appear in books, films and cartoons, such as Harry Potter, Superman or Peppa Pig, and their wide-ranging use in merchandising. However, there are also many organisations that create and use mascots to further their brands, such as the International Olympic Committee (IOC) and the International Sports Federation, which has its home in Switzerland where I am based. Their mascots are also valuable characters that need to be protected.

As we set out in our ‘Character wars’ panel discussion at this year’s INTA Annual Meeting, IP laws can provide robust protection for fictional characters, but there are considerable differences in the approach taken in each jurisdiction. In the EU and Switzerland, for example, there is no specific IP right available for such characters; instead, organisations need to call on copyright, trademark and design laws to obtain protection.

Copyright versus trademark protection

In Europe, as in many other jurisdictions, copyright is not a registered right. Different systems also apply in common and civil law jurisdictions when it comes to protecting an author’s rights to their characters. By comparison, trademark laws (in both the EU and Switzerland) allow for the registration of characters, as word marks (e.g. the character’s name) and figurative marks (e.g. the characters reproduced in 2D).

The EU’s recent trademark reform package sought to loosen the rules for ‘graphical representation’ in trademark applications. This means that organisations can now also call on non-traditional trademarks to protect their characters across the EU, such as 3D or motion marks; for example, to cover a mascot’s shape or movement. However, analysis shows such rights are rarely used at present.

The challenges of trademark protection

While trademarks are the popular choice for protecting characters, there are also limits to trademark protection, which need to be considered when reproducing the character. In particular, the visual aspect of the character mark will be limited to the graphical reproduction of the mark that was filed in the application; i.e. the character will have been depicted in a certain position and in specific colours.

In addition, the trademark application will have been made for specific classes of goods and services in specific jurisdictions. These classes and territories will need to be regularly reviewed if a business or organisation plans to extend its use (e.g. in merchandising) into other types of goods and services, or new markets. As with all trademark assets, a balance also needs to be found here between cost and purpose/use.

Don’t overlook design protection

Where a business plans to use the character in a new market for only a short time, the cost of acquiring trademark protection may not always be appropriate. In that case, a combination of design and trademark rights can provide the best solution. Design law also provides more options for protecting a character’s 3D shape or its use in multiple positions.

However, acquiring registered design protection also comes with its own challenges; in particular, when it comes to the requirement of novelty, which stipulates that no identical drawing or model must have been previously made available to the public.

As important, the quality of the reproduction in the design application will define the rights that the applicant will enjoy. Organisations are advised to be extremely cautious about what is included in the drawings therefore.

Unregistered trademark rights

There are some specific trademark protection provisions for unregistered rights in the EU and Switzerland, that apply under quite strict conditions.

• Article 6b of the Paris Convention allows for an exception to the principle of territoriality (and registration) of IP rights subject to certain conditions, namely: the right needs to be registered abroad and be well-known (the principle of speciality). This was described by the EU Advocate General (AG) in Chevy (C-375/97) as: “an exceptional type of protection afforded even to unregistered marks. It would not be surprising therefore if the requirement of being well-known imposed a relatively high standard for a mark to benefit from such exceptional protection.”

The requirement for being well-known is higher than the requirement for marks with reputation, as the AG went on to explain: “there is no need to impose such a high standard to satisfy the requirement of marks with reputation,” illustrating that it is trademark registration that represents the line between a well-known mark (article 8(2)(c) EUTMR) and a mark with reputation (article 8(5) EUTMR). The assessment for both is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public. For this reason, providing the necessary level of evidence to prove that a sign is well-known (or indeed has reputation) can cause problems. The required level of recognition to be considered well-known can also differ between member states, since there are no specific legislative criteria to assess marks (click here for further guidance on the assessment of well-known marks).

• In addition, from a Swiss perspective, article 15 of Swiss Trademark Law (LPM) also provides an exception to the principle of specialty, which confers protection in unregistered classes for ‘unique’ and positive images with a high reputation. The condition of prior registration is hotly debated however: the majority thinks no registration is necessary. The recognition rate among the entire Swiss public must also be very high (50-70%).

The word mark ‘HARRY POTTER’ is a good example of a character right protected under Art 15, LPM. It was ruled a ‘high reputation’ mark in the 2013 Swiss case, Warner Bros v Magic X (Cantonal Court of Schwyz, confirmed by the Federal Court in 4A_224/2013). While the character of ‘Harry Potter’ is of course famous worldwide, the merchandising products are not. It is questionable therefore whether the well-known status of the character is enough to confer the status of ‘high reputation’ on the word mark as used on the merchandising products.

Other unregistered rights

The unregistered EU design right protects a design for three years from the date it was made available to the public, making it ideal for short-life products. As with the registered design, it must satisfy the requirements of ‘novelty’ (on first use) and ‘individual character’. It also protects only against intentional copying. Nonetheless, it is a good fall-back plan where it is not possible to obtain a registered design because novelty has been destroyed.

Other relevant unregistered rights in the EU include passing-off (in the UK) and the author’s right that exists in civil law jurisdictions. As with copyright, the latter comes into being automatically on creation and does not require registration (other than for evidence purposes). Also, as with copyright, certain conditions apply: The work must be original (i.e. the author’s own creation, Infopaq) and meet a certain level of creativity (i.e. "making free and creative choices, and thus stamping his personal touch", Football Dataco).

Unfair competition laws can provide an additional layer of protection to support IP rights.

Merchandising a character

When it comes to monetising a character, merchandising is the most popular choice. Here it is typical to protect for use on goods on which a character can be reproduced in 2D; for example, classes:

• 25: Clothing, footwear, headgear with a picture of the character (2D trademark)
• 28: Toys, games, ornaments
• 16: stationary and writing material, stickers
• 18: bags, umbrellas
• 14: keychains, pins, medals, trophies
• 9: electronic games
• 41: online games, video/music content, event ticketing for live shows

More ‘untypical’ merchandising that we also see includes class 30 (cereals, confections). This is particularly interesting from a Swiss perspective, as there are limitations to the use of famous character names on chocolate and sweet/candy products. We take our status as a chocolate nation very seriously!

Just because a business or organisation seeks to register a character name in these classes doesn’t mean they will be accepted of course. The dispute over ‘RAPUNZEL’ (CH 637280 – B-3815/2014) provides a good example of limitation in this respect. Here, we saw a very specific split between accepted and refused goods/services, which the Swiss examiners/court explained on the grounds that the refused elements needed to remain in the public domain.

A similar explanation was given in the EU case of ‘WINNETOU’ (EUTM2735017 – T-501/13). Here the ‘thematic content’ of the character was not accepted for use on goods/services in classes 9, 16, 28 and 41. The applicant argued that other registrations existed with similar descriptions of goods (for James Bond, Asterix, Harry Potter, Sherlock Holmes, Mickey Mouse, Iron Man, Batman, Superman…), but it did not help.

Enforcing rights

Like all brand owners, the creators and owners of fictional characters are not immune from copying or counterfeiting. For the organisers of large sporting events, such as the Olympics, or the Football World Cup, the problem is further exacerbated by instances of ambush marketing by legitimate businesses.

Civil and criminal law provides the means to act against many such cases of infringement, but it is not always an easy or cost-effective system to navigate, and can be particularly problematic in the context of an international event when rapid action is necessary.

As with all enforcement and anti-counterfeiting strategies, preparation is of course key. This means taking the appropriate IP measures ahead of the event by ensuring trademarks/designs are registered in appropriate classes and jurisdictions; setting up a watching programme to identify sources of infringement (online and off); and developing an enforcement strategy to deal with infringement and counterfeiting once it has been identified. Don’t overlook the risk of counterfeiting in other unrelated classes: a large scope of protection is needed to cover all bases.

Events should also work with their local organisers to ensure they make best use of the private law measures that are at their disposal in the different jurisdictions, and ensure that they have the support of local authorities, such as customs and the police. As with all anti-counterfeiting strategies, educating the public is also important. (For additional advice and insight on developing an anti-counterfeiting strategy, please download our white paper: 'Is your anti-counterfeiting strategy up to scratch?'.)

For further guidance on any of the topics discussed in this article, please speak to your Novagraaf attorney or contact us below. 

Chantal Koller is Managing Director – Trademarks at Novagraaf in Switzerland.