Oops, boop-oop-a-doop — unauthorised merchandising found not to be mere embellishment

The High Court recently handed down its judgment in the case of Hearst Holding Inc & Anor v Avela Inc and Ors [2014] EWHC 439 (Ch) regarding the use by the defendants of an image of Betty Boop and the word ‘Boop’ on merchandise. The defendants were held liable for trademark infringement and passing off both in respect of the use of infringing imagery on merchandise and also in the offering of merchandise licences. The decision of Mr Justice Birss fires a warning shot to licensors and distributors who believe that their use of images and words on merchandising is mere embellishment.

Hearst is the registered proprietor of a number of UK and CTM registered word marks for BETTY BOOP together with device marks featuring the character Betty Boop with or without an accompanying word mark in a selection of classes. The claimants claimed to be the successors of the originator of the cartoon character Betty Boop and the only legitimate source of Betty Boop merchandise in the UK. Avela licensed artwork, including images of Betty Boop and the word ‘Betty’ or ‘Boop’ for use on clothing merchandise. Avela’s co-defendants comprised its UK licensing agent (TPTL), UK licensees, distributors and merchandise retailers.

Hearst brought proceedings against Avela and others for trademark infringement (under section 10[1] of the Trade Marks Act 1994 for the word marks and 10[2] and 10[3] of the act for all of the claimants’ trademarks). In addition, Hearst claimed two cases of passing off: the sale of Betty Boop merchandise misrepresented as official merchandise to trade and the public; and the deception to Avela’s licensees that they had been granted a licence by the claimants or a party authorised by the claimants…

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