CANCELLATION No 10745 C (INVALIDITY)

Studio Peyo S.A, 36 Chemin Frank-Thomas, 1208 Geneve, Switzerland, (applicant), represented by Gevers S.A., Holidaystraat 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Pan Xianhao, Via Principe Amedeo 180, 00-185 Roma, Italy (EUTM proprietor).

On 04/08/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 10 502 706 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 10 502 706 . The application is based on a copyright to the character of Smurfette from the series ‘the Smurfs’.

The applicant invoked Article 53(2)(c) EUTMR in combination with, among others, Belgian copyright law.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that it owns the copyright to the character of the Smurfette from the series ‘The Smurfs’ which was created by Pierre Culliford, known as Peyo, and transferred to the applicant before his death. According to the applicant Peyo created this character, among other characters from the series, and it appeared in a comic in 1966. The applicant further refers to various trade mark registrations regarding the image of Smurfette. The applicant claims that the character was created in Belgium and therefore is protected by the Belgian copyright law. The applicant refers to the agreement with Mr. Culliford regarding the transfer to the applicant of copyrights to all the works of Mr. Culliford, including that of Smurffette. The applicant argues that the EUTM infringes this copyright because the image contained in it is similar to the copyright protected image of the Smurfette.

In support of its observations, the applicant filed the following evidence:

• Wikipedia extract in English about Peyo a.k.a. Pierre Culliford, which includes reference to an article in the New York Times dated in 1992 ‘Pierre Culliford, Smurf creator, dies at 64’ or to an article in the LA Times from 1992 ‘Pierre Culliford; created the widely popular Smurfs’.

• Wikipedia extract in English about the character of Smurfette.

• Printout from the first page of the comic book ‘Le Bebe Schtroumpf’ published by Dupuis in French, which includes images of different Smurfs including that of Smurfette, and which mentions Peyo.

• Printouts regarding an IR trade mark registration with the image of Smurfette.

• An image of Smurfette signed by Peyo.

• Copy of the Belgian copyright law in original and in English translation.

• Materials regarding the Bern Convention of the protection of the literary and artistic works.

• Copy of an agreement of 29/06/1990 between Mr. Pierre Culliford a.k.a. Peyo and Studio Peyo S.A. for the transfer of all the rights to the works and characters created by M. Culliford, including the series known as Smurfs. As attachment the images of different Smurfs, including that of Smurfette, can be seen.

The EUTM proprietor argues that there is no similarity between the EUTM and the copyright protected character on which the application is based because the two characters are depicted differently, so the consumers would not be confused by them. The EUTM proprietor quotes fragments of the judgement of the Italian Supreme Court regarding a conflict between trade marks and designs. The EUTM proprietor refers to the earlier right as a trade mark and makes a comparison on the assumption that one is a purely figurative right whereas his mark has both figurative and verbal elements. According to the EUTM proprietor the overall impression conveyed by its signs is different than the impression conveyed by the trade marks of the applicant. Therefore there will be no likelihood of confusion on the part of the public.

In support of its observations, the EUTM proprietor filed the following evidence:

• A document called ‘technical advice’ issued by Dr. Stefano Pasquetto and including a comparison between the contested registration and the trade marks owned by the applicant. At the end of the report it is concluded that: ‘there aren’t any elements or parameters between the marks at issue that could generate and/or cause confusion in the public customer’.

In reply to this the applicant in its observations indicates that the EUTM proprietor mistakenly regarded the application as an opposition and not as an application for declaration of invalidity and conducted an analysis based on the comparison of trade marks and the notion of likelihood of confusion, disregarding the fact that the action is based on a copyright infringement. Considering the above, the arguments developed by the EUTM proprietor are irrelevant. The applicant indicates that an inspection of both images, that of the Smurfette and that in the contested sign, shows that the typical features of the applicant’s character were clearly and slavishly copied in the latter image.

In reply to the above the EUTM proprietor states that the applicant has not clearly indicated how the two images were similar. The EUTM proprietor stresses that the two images are significantly different, and when comparing them there is not any figurative element that would make them identical or at least very similar. The EUTM proprietor again makes reference to the Italian law. The EUTM proprietor indicates the differences between the two images and files a further statement of Dr. Pasquetto regarding the comparison between the two images.

EARLIER COPYRIGHT — ARTICLE 53(2)(c) EUTMR

According to Article 53(2)(c) EUTMR, an EU trade mark shall be declared invalid on application to the Office where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular a copyright.

Pursuant to Rule 37 EUTMIR, the application for a declaration of invalidity must contain particulars of the right on which the application is based and particulars showing that the applicant is the proprietor of an earlier right as referred to in Article 53(2) EUTMR or that it is entitled under the national law applicable to claim that right.

In the present case, the applicant based its action on the image of a Smurfette claimed to be copyright protected under European Union law, international law and various national laws, including the Belgian law.

Although the European Union legislator has harmonised certain aspects of copyright protection (see Directive 2001/29/EC of the European Parliament and of the Council of 22/05/2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167, 22/06/2001, pages 10–19), so far there is no full-scale harmonisation of the copyright laws of the Member States, nor is there a uniform European Union copyright.

Therefore, the invalidity applicant had the burden of providing the necessary international and national legislation in force, and of putting forward a cogent line of argument as to why it would succeed under specific national law in preventing the use of the contested mark. A mere reference to the national law will not be considered sufficient: it is not for the Office to make that argument on the applicant’s behalf (see, by analogy, judgment of 05/07/2011 in case C-263/09 ‘Elio Fiorucci’, ECLI:EU:C:2011:452).

The notion of copyright protection is applicable irrespective of the goods and services the contested mark covers and merely requires a ‘copying’ of the protected work without a requirement that the contested mark as a whole has to be ‘similar’ to the protected work.

The Cancellation Division will start the examination on the basis of the Belgian law.

Copyright under Belgian law

The Opponent submitted the full text of Belgian copyright law with its translation in English.

The text governing the Belgian law on copyright is ‘Law on Copyright and Neighbouring Rights of June 30, 1994, as amended by the Law of April 3, 1995 (thereafter referred to as the ‘Belgian copyright law’). Belgium is also bound by the Berne Convention.

Entitlement to copyright protection

Pursuant to Article 6 of the Belgian copyright law submitted by the applicant ‘copyright shall belong as of origin to the natural person who has created the work. Unless proven otherwise, the author shall be presumed to be the person shown as such on the work by the fact of his name being mentioned or of a sign that enables him to be identified’.

Article 8 (1) of the Belgian copyright law provides that ‘literary works shall mean writings of any kind, also lessons, lectures, sermons or any other oral manifestations of thought’. Pursuant to Article 11 of the Belgian copyright law regarding the works of fine art ‘the works concerned must be original creations of the author or copies considered as such according to the usage of the profession’.

The work on which the application is based, whether considered as literary work or as a work of fine art, is clearly a manifestation of thought of the author and an original creation enjoying a copyright protection. This was not disputed by the EUTM proprietor.

The applicant submitted various pieces of evidence where the name of ‘Peyo’, a.k.a. Pierre Culliford, appears on the images of Smurfs, including that of the Smurfette, as well as publications and references to publications mentioning Pierre Culliford as the creator of the Smurfs. In the absence of any indication to the contrary all the evidence taken as a whole leads the Cancellation Division to conclude, in line with Art 6 of the Belgian copyright law, that he was the author of the work and the copyright was vested in him as stipulated in the law quoted above. This was not disputed by the EUTM proprietor.

Additionally the applicant submitted the copy of the agreement between the applicant and Mr. Culliford dated in 1990 in which the latter transferred to the applicant all the rights, including copyrights, to all his works. Consequently it is concluded that also the copyright to the work consisting of the image of Smurfette was transferred to the applicant.

Mr. Culliford died in 1992 and as the applicant argued according to Article 2 of the Belgian copyright law ‘copyright shall subsist for 70 years after the death of the author’. Since this time has not lapsed yet it is concluded that the copyrights to the works of Mr. Culliford have not expired yet and are currently vested in the applicant. This applies also to the copyrighted work on which this application is based, which consists of the image of the Smurfette.

The applicant is therefore entitled to execute the rights emanating from the copyright to this work.

The exclusive right to the copyright protected work

Article 1 (1) of the Belgian copyright law stipulates that ‘the author of a literary or artistic work alone shall have the right to reproduce his work or to have it reproduced in any manner or form whatsoever.

This shall also comprise the exclusive right to authorise adaptation or translation of the work.

The author of a literary or artistic work alone shall have the right to communicate his work to the public by any process whatsoever’.

Considering this, it can be concluded a contrario that other persons have no right to reproduce the work, adapt or translate it without authorisation of the owner of the copyright. As it was stated above, this right is currently vested in the applicant, and it has been so since 1990. This right was vested in the applicant on the filing date of the EUTM application (16/12/2011), and on the filing date of the current action (20/04/2015). Since it is clear that the EUTM proprietor is not the author of the work, it is clear that he does not have the right to reproduce, adapt or translate the copyrighted work on which the application is based. The EUTM proprietor did not provide any evidence to the contrary.

The signs to be compared are the following:

Earlier work	Contested EUTM

Considering these two images it is clear that the latter is a version of the original image belonging to the applicant. These two images share relevant similarities because they both include the representations of the figure of a Smurfette, with characteristic slightly bended knees, hands which are partly visible and seem to be hidden behind her back. They have similar figures, long hair with a fringe, slightly curved nose and very similar features of the face. The differences seem to be limited to the fact that in the EUTM the figure is dressed in a sports outfit consisting of sports shirt, shorts, cap and sports shoes, whereas the original figure is wearing a dress, female shoes and a typical Smurf’s cap.

While it is true that the contested EUTM is not an exact copy of the earlier work, it must be borne in mind that the partial reproduction and adaptation without the consent of the owner of the copyright are also in the exclusive domain of the copyright owner and cannot be performed without consent. The Cancellation Division considers this to be the case here. The contested EUTM has taken all the essential characteristic features of the prior work as mentioned above and reproduced in the image of the contested sign. The differences between the images are just small modifications which do not affect the overlap in the essential characteristic features of the earlier work. As partial reproduction and adaptation of the work also belong to the exclusive rights of the copyright owner, performing them without permission is unlawful and infringes the copyright vested in the applicant. The EUTM proprietor neither argued nor provided any evidence that it was authorised to do so.

As to the arguments of the applicant regarding the lack of likelihood of confusion and lack of similarity between the contested sign and the trade marks of the applicant, the Cancellation Division agrees with the applicant that these observations are irrelevant. They seem to result from a misconception on the part of the EUTM proprietor as to the nature of this dispute and the rights on which the application is based. This application is not based on any trade marks or on the notion of likelihood of confusion, but on copyright infringement. The reference to the Italian law is also irrelevant since this case is based on the Belgian law.

As to the argument of the EUTM proprietor that the contested sign also included additional verbal element which was not present in the original work, it should be noted that this does not alter the above findings. The presence of this additional verbal element does not affect the reproduction of the characteristic features of the original work in the contested sign.

Considering the above the Cancellation Division concludes that the contested sign infringes the copyright vested in the applicant because it reproduces and adapts this work without permission, even though the exclusive right to do so is vested in the applicant.

Following the above the request for a declaration of invalidity is upheld on the ground of Article 53(2)(c) EUTM and the European Union trade mark No 10 502 706 is declared invalid in its entirety.

Since the application is fully successful on the basis of the Belgian law, it is not necessary for the Cancellation Division to examine the claims based on other laws as invoked by the applicant.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

José Antonio GARRIDO OTAOLA

Ewelina SLIWINSKA

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.