When do I register a trade mark – a Superhero approach
With the release of the much-anticipated live action superhero movie starring Gal Gadot, Wonder Woman is in the limelight as never before. DC's iconic heroine has never been difficult to find in comics, having been continually published since 1941, however, if you open up a Wonder Woman comic, you will notice the words “WONDER WOMAN is a trademark of DC COMICS”.
Trade marks are an important part of comic books. In terms of the current South African Trade Marks Act, a trade mark can consist of any sign that is capable of being represented graphically, including a word, name, letter, number, device, signature, shape, pattern, configuration, container for goods, ornamentation, colour or any combination of these signs. Examples of where trade marks are found in comic books could include obvious names like “Superman” or “Justice League”, whereas other examples could include the actual Justice League logo or the stylized font of Superman.
The process to register a trade mark is relatively simple; however it is advisable to seek assistance from a specialist intellectual property (IP) attorney when doing so.
The first step in the registration process is to conduct a trade mark availability search of the Trade Marks Register to ascertain whether the trade mark in question is available for use and registration in the relevant classes of interest and/or whether there are any prior marks that could pose difficulties thereto.
Provided that the search results are favourable, a trade mark application is then filed with the Registrar of Trade Marks at the Companies and Intellectual Property Commission.
Trade marks are classified into 45 different classes according to the nature of the goods and/or services in relation to which they are used, or are intended to be used. For example, in South Africa, DC Comics have applied to obtain protection of the “Wonder Woman” mark not only for comic books (classified into class 16), but separately for things like cosmetics (classified into class 03) and clothing (classified into class 25), amongst others.
The Registrar reviews the application and/or may set any conditions for acceptance of the application. Thereafter, once any conditions set have been complied with and the application formally accepted, it must be advertised for opposition purposes.
Third parties who believe the trade mark in question should not be registered have three months from the date of advertisement to object. Assuming that no third parties wish to oppose the application, the trade mark is then registered and the registration certificate issued. Protection is granted from date of application. The trade mark registration must be renewed every ten (10) years in perpetuity.
The nearly infinite nature of trade marks is the reason why iconic characters, such as Batman or Wonder Woman, will almost certainly never enter the public domain (or at least will not do so anytime soon). A trade mark registration not only gives the proprietor/owner the exclusive right to use the trade mark, but also the right to restrain the unauthorised use by a third party of not only an identical or confusingly similar trade mark, but also a company, close corporation, business, trading or domain name. Therefore, in a comic book universe, trade marks provide the strongest protection to keep large comic publishers from simply using successful comics from independent creators. Imagine if DC Comics could easily launch a comic called Game of Thrones?