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5.13 Applications in respect of several cartoon characters

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In the Australian hearing decision Re Application by Johnson and Johnson¹³ the hearing officer considered whether an application in respect of the eight cartoon characters below constituted a series.

[image] Johnson and Johnson.

After considering the comments made in the Lynson¹⁴ decision Mr Williams formulated the following general guidelines regarding applications in respect of several cartoon characters:

It is not … sufficient if the only factor in common between the marks said to constitute a series is that they include the same character or characters. Weight should also be put on the extent to which the characters wear different (or no) clothes, hold or use different props, have or do not have names ascribed to them and assume different positions. Weighting should also go to the extent to which the props dominate the character: a swim-suited koala riding a bicycle should not in my view constitute a series with a koala in a business suit standing at a bar.

Where the marks constituting the series all consist of groups of characters, the matter is less easy to define. The individuals in a crowd are less significant than in a smaller group and there are many ways in which a large group can leave a total impression that is more than the sum of the individuals who comprise it. None the less, when comparing the marks as wholes, note should be made of the extent to which they do, or do not, comprise the same individuals doing the same things.

Of the eight marks applied for, only marks 5 and 6 were found to be a series. In regard to those marks the hearing officer remarked that:

Very clearly the characters are the same, and the same activity is being undertaken. The strength of the resemblance is such as to override the different position and the slight cropping of the device in version 6.

When considering whether an application in respect of several cartoon characters constitutes a series, examiners should consider a number of factors, including:

The similarity in appearance of the character(s) in the marks;
The clothing (if any) worn by the character(s);
Any props held or used by the character(s);
Any names ascribed to the character(s);
The positions assumed by the character(s);
The activities the character(s) are undertaking; and
The extent to which the props, costumes and/or activities dominate the character(s).

The variations between each version must be such that they do not substantially affect the identity of the mark.

Footnotes

¹³ Application by Johnson and Johnson above n 3.

¹⁴ Lynson above n 2.

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5.13 Applications in respect of several cartoon characters

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