Robin reliant on opposition, but can he fend off Fenty?

Readers may have noticed an item in the news concerning a tussle between superstar Rihanna and DC Comics over a name in which they have a mutual interest.  This tussle (kindly drawn to our attention by Chris Torrero) is ongoing, and this Kat is happy to host a post from Katfriend and former guest Kat Rebecca Gulbul (currently with the Chartered Institute of Patent Attorneys) on this very topic. Rebecca writes:

Oh na na, what’s her name? Rihanna faces trade mark opposition

Rihanna, 2015

Rihanna’s full name is Robyn Rihanna Fenty. She has previously filed trade mark applications for her surname Fenty, but now her application to register her first name (Robyn) has been opposed by DC Comics, who argue that the mark is too similar to their trade mark for the word 'Robin'. Robin has often featured as Batman’s sidekick in the Batman comic series. DC Comics believes that use of the mark Robyn would cause confusion, that consumers may be deceived and that their trade mark will be diluted and tarnished.  The trade mark application was filed in the USA for a service mark for “providing on-line non-downloadable general feature magazines”. The record on the USPTO register shows that the application was filed on 23 June 2014 and an opposition was filed on 11 November 2014. A corresponding Community trade mark (CTM) application is also being opposed. 

The CTM opposition has been made under Article 8(1)(b) of the Community Trade Mark Regulation which deals with relative grounds of refusal. It states that a trade mark should not be registered “if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.” 

Robin, 1993

DC Comics’ character Robin was born a long time before Rihanna, making his first appearance in 1940. The character has enjoyed fame ever since then, during which time much related merchandise has been sold, including action figures and comic books. DC Comics is worried that Rihanna’s trade mark may free-ride on its acquired reputation, or that the use of her trade mark may dilute theirs, or tarnish it. The names are pronounced in exactly the same way and their spelling differs by just one letter. If this can be shown to lead to a likelihood of confusion of relevant consumers as to the origin of goods and services, which is the purpose of trade marks, then Rihanna’s trade mark should not be granted. 

Another Robyn, 2011

Despite the marks' similarity, likelihood of confusion may not be so easy to show and Rihanna's application is likely to succeed if it can be shown that the respective marks are aimed at different publics for non-competing and non-complementary goods. The level of attention on the part of consumers is also a key factor: Batman's Robin is a well-known personality with a fully developed character, something that will not have escaped his fans and which provides a motivation for them to buy products relating to him. Likewise, Rihanna has her own following; according to the Rihanna Daily website she is the most viewed performer on Vevo/YouTube and has more than 90 million Facebook friends. However, the fact that her first forename is actually Robyn is not so widely known.

Somebody else who might have more to lose is the Swedish singer Robyn (above, right), who has not opposed the application yet. Rihanna wouldn’t be the first to want to trade mark her name. This application comes along a wave of celebrity awareness of the possibility of registering their names as trade marks and/or reserving domain names. Note for instance Taylor Swift’s registration of some of her song lyrics and domain names.  

Rihanna is no stranger to asserting her intellectual property. Earlier this year, the Court of Appeal, England and Wales, upheld a trial judge's ruling in her favour in the case concerning Topshop’s sales of T-shirts bearing her image [on which see Katposts here and here]. The photographer who took the photo of the singer had licensed its use to Topshop. However, the Court ruled that this use amounted to passing off because customers who bought the T-shirt may have believed that Rihanna had endorsed the product when she had not, thus affecting her goodwill.

More on the story here, here and here
Reliant Robin here
Oh na na what's your name: Trey Songz here