Hearst Holdings Inc. v AVELA Inc.

JurisdictionEngland & Wales
JudgeThe Hon. Mr Justice Birss,Mr Justice Birss
Judgment Date25 February 2014
Neutral Citation[2014] EWHC 439 (Ch)
Docket NumberCase No: HC12D01447
CourtChancery Division
Date25 February 2014

[2014] EWHC 439 (Ch)





Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL


Mr Justice Birss

Case No: HC12D01447

(1) Hearst Holdings Inc
(2) Fleischer Studios Inc
(1) A.V.E.L.A. Inc
(2) Poeticgem Limited
(3) The Partnership (Trading) Limited
(4) U Wear Limited
(5) J Fox Limited

James Mellor QC and Thomas Moody-Stuart (instructed by Field Fisher Waterhouse) for the Claimants

Emma Himsworth QC (instructed by Hamlins) for the Defendants


Approved Judgment


Hearing dates: 29th, 30th, 31st Jan, 2nd, 5th Feb 2014


I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

The Hon. Mr Justice Birss Mr Justice Birss





The claimants' case


The defendants' case


The witnesses


The history


The law


The facts:


The average consumers


The impact of the many years of trading


Acts complained of




Passing off


Trade marks




s10(1)/Art 9(1)(a)double identity


s10(2)/Art 9(1)(b)likelihood of confusion


s10(3)/Art 9(1)(c)link




Conclusion on trade mark infringement in the UK


The position in the rest of the EU


Joint tortfeasance







1. The claimants contend they are the successors of the originator of the cartoon character Betty Boop, first shown in 1930s America. Their case is that they are the only legitimate source of Betty Boop merchandise in the UK. The first defendant (AVELA) contends that it is also a legitimate source of Betty Boop “imagery” in the UK. The third defendant TPTL is AVELA's UK licensing agent. The second and fifth defendants (Poeticgem and J Fox) are UK licensees of AVELA. The fourth defendant (U Wear) distributes product supplied by J Fox. Poeticgem, J Fox and U Wear sell Betty Boop merchandise to retailers. U Wear also sells online directly to the public. The claimants contend that the defendants have committed acts of trade mark infringement and passing off. The defendants deny this and contend the trade marks are invalid.


2. The action as a whole also includes a claim for copyright infringement however that claim was separated from the trade mark and passing off claim in December 2013. This passing off and trade mark trial is also subject to certain conditions set out in the December 2013 order. The copyright claim is to be tried in January 2015. The split was the price the defendants had to pay to be permitted to make very late wholesale amendments to their case on copyright. Ideally it would have been much better to try all the issues together but the fact that the court cannot do that is the defendants' fault. As well as the claimants' copyright claim, one of the defendants' trade mark invalidity attacks (bad faith) was split off since it is linked to the copyright arguments.


The claimants' case


3. The claimants' trade mark rights are specific to its particular registered trade marks and CTMs. They relate to the words “BETTY BOOP” and to a particular device. Schedule 1 to this judgment sets out the complete specifications of the marks. In summary they are:

i) UK registered trade mark 1487409 BETTY BOOP in classes 9, 16, 25 and 28 filed on 9 th January 1992;

ii) UK registered trade mark 1487518 (device) in class 28 filed on 9 th January 1992;

iii) UK registered trade mark 1487325 (device) in class 25 filed on 9 th January 1992;

iv) UK registered trade mark 2134589 (device) in class 18 filed on 3 rd June 1997;

v) UK registered trade mark 2460441 (device) in class 3 filed on 4 th July 2007;

vi) Community Trade Mark 008596348 BETTY BOOP in classes 3, 14, 16, 18, 21, 24 and 25 filed on 6 th October 2009;

vii) Community Trade Mark 008596546 (device) in classes 3, 14, 16, 18, 21, 24 and 25 filed on 6 th October 2009;

viii) Community Trade Mark 009166323 BETTY BOOP in classes 9, 12, 35 and 38 filed on 10 th June 2010;

ix) Community Trade Mark 009166349 (device) in classes 9, 12, 35 and 38 filed on 10 th June 2010.


4. The device the subject of the device registrations is set out below. The devices registered are all the same although some have the words BETTY BOOP in small letters at the foot. The registered device is:


5. The claimants contend that the marks have been put to very substantial use in the United Kingdom and the Community by or with the consent of the claimants with the result that they have a reputation for the purposes of s10(3) of the Trade Marks Act 1994 and Art 9(1)(c) of the Community Trade Mark Regulation.


6. The true nature and extent of the claimants' use of these marks and, for passing off, their goodwill, needs to be examined with care. In outline the claimants contend that they are the owners of a substantial goodwill and reputation in the UK in the sale of goods bearing an image of Betty Boop, the words BETTY BOOP or BOOP or slogans containing those words such that the use of these indicia has come to denote to the trade and the public products which emanate from the claimants or their licensees. Further the claimants' trade in licensing Betty Boop merchandise has led to them acquiring a substantial goodwill and reputation as the parties entitled to grant licences in respect of official Betty Boop merchandise.


7. The acts complained of all involve what the claimants call “unauthorised Betty Boop merchandise” which means products bearing signs depicting Betty Boop which are similar to the device the subject of the trade mark registrations and/or incorporating the words BETTY BOOP or BOOP. They are unauthorised because the claimants have not licensed them. The claimants' position is that any unauthorised product which bears an image recognisable as Betty Boop will infringe the device marks regardless of the pose of the character. The claimants' position is also that any unauthorised product which bears an image recognisable as Betty Boop will infringe the word mark marks regardless of whether the words BETTY BOOP or BOOP (or a slogan like “Boop oop a doop”) appear.


8. The claimants' case is that the manufacture and/or import into the United Kingdom and the Community and subsequent sale and offer for sale of unauthorised Betty Boop merchandise will infringe the trade marks. The claimants also contend that by granting licences AVELA has infringed or is liable for the infringements of others as a joint tortfeasor. TPTL is also said to be liable on a similar basis as a result of its activities as AVELA's licensing agent.


9. An infringement case based on double identity (s10(1)/ Art 9(1)(a)) is relied on in relation to the word marks (UK registered trade mark 1487409 and CTM 8596348).


10. An infringement case based on likelihood of confusion (s10(2)/Art 9(1)(b), similar signs and similar or identical goods) is relied on for all the trade marks.


11. Infringement cases based on unfair advantage and on detriment to the distinctive character under s10(3)/Art 9(1)(c) are also relied on for all the trade marks.


12. Two cases of passing off are advanced. The claimants contend two deceptions have been caused by the defendants. The first deception is that the Betty Boop merchandise sold under licence by AVELA is authorised by the claimants or is official Betty Boop merchandise. This deception is said to have been practised on both the trade and the public. The other is a deception practised on AVELA's licensees, that they have been granted a licence in respect of Betty Boop by the claimants or by a party authorised by the claimants (being the official source of Betty Boop merchandise).


The defendants' case


13. AVELA has gone to the trouble of reconditioning old movie posters with Betty Boop in them and claims that its imagery is all derived from those old posters. AVELA has found what it contends is a source from which it or its licensees can reproduce images of Betty Boop which do not derive directly or indirectly from works in which the claimants own copyright. This is a form of copyright laundry and there is nothing wrong with it from a copyright point of view if it works.


14. The defendants do not dispute that AVELA offers licenses of Betty Boop imagery and that the goods which are sold to the public are what the claimants call unauthorised Betty Boop merchandise. The defendants deny trade mark infringement on the basis that neither they nor their customers use Betty Boop as a trade mark at all. The Betty Boop imagery appearing on the goods is purely decorative, makes no representation about trade origin and so cannot infringe. They deny passing off on the same basis. The Betty Boop imagery on the products makes no representation about trade origin at all and therefore no misrepresentation. The defendants rely on the defences to trade mark infringement provided by s11(2)/ Art 12.


15. As for the allegation of passing off by offering licences, the defendants contend there is no misrepresentation since AVELA has a library of images to licence to third parties. One of the sub-issues which relates to this question concerns AVELA's claim to be licensing its own copyright in the images in AVELA's own collection. At one stage the defendants submitted it was part of their case that AVELA owned and was licensing UK copyright in these images and invited me to decide that question but during the trial there was a change of tack and the defendants submitted that I did not need to decide that question and all the court...

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