Marvel Films and Registering Trade Marks

Whilst we await part two of Marvel’s (currently untitled) sequel to ‘Avengers: Infinity War’, focus shifts to the upcoming stand-alone films and how they may add to the ‘Infinity War’ story. In October 2014, Marvel Studios announced an upcoming film for ‘Captain Marvel’ and a quick look at TMView reveals that various trade marks for “CAPTAIN MARVEL” were filed by Marvel Characters, Inc. at a similar time as the announcement of the film, so why was this?

Analysis

Generally speaking, having a registered trade mark means that you can prevent someone else from registering or using the mark (in the territory that the trade mark is registered) with identical or similar goods/services to those that the trade mark is registered for. Having a registered trade mark means that you have a trade mark certificate that you can use to prove your rights and this is often easier than relying on unregistered rights, such as passing off in the UK which requires proving each of the elements of goodwill, misrepresentation and damage.

The brief search of TMView revealed that Marvel Characters, Inc. had protection already for “CAPTAIN MARVEL” such as for “publications, particularly comic magazines and stories in illustrated form” in the US (filed 1972) and “printed matter, newspapers and periodicals and books” in the UK (filed 1967). Whilst this would likely cover Marvel for its ‘Captain Marvel’ comics in the UK and US, it needed to file new trade marks to cover the new goods/services that it would be providing because of the upcoming film. Therefore, it filed in the US (in October 2014) for various new goods and services including goods/services relating to cosmetics, jewellery and watches, audio books, video game software, clothing, footwear and headwear, figurines, action figures and accessories, bags and backpacks and TV show programmes and it subsequently filed in the EU for various additional goods/services.

Therefore, as trade marks will only protect you for the goods/services that you have registered and in the territory that the trade mark is registered, it is important to regularly review your trade marks as to whether they provide you with sufficient coverage of goods/services and in the markets (territories) that you are using the mark in. For additional trade mark advice please contact us at Briffa.