DC Comics wins trademark lawsuit for GOTHAM mark

　A Taiwanese lawyer, Mr. Wang successfully registered the Gotham mark with Taiwan IPO for use in books and periodicals, magazines, education, and scripts at the end of 2014.  Mr. Wang’s successful registration of the Gotham mark drew DC Comics’ attention and caused DC Comics to file an opposition with the Taiwan IPO on the ground that the Gotham mark is highly similar to DC Comics’ GOTHAM and GOTHAM CITY mark.  Taiwan IPO rendered a disposition to not sustain DC Comics’ opposition, for which DC Comics filed an administrative appeal with the Ministry of Economic Affairs but the appeal was dismissed.  In this regard, DC Comics instituted administrative proceedings with the Taiwan IP Court.  

　According to the Taiwan IP Court, the Batman series comic books published by DC Comics have been copyrighted in the US and “GOTHAM CITY” is a fictitious city in the comic books.  However, the word “city” is a general noun without distinctiveness required for a trademark, while “gotham” is a word created for the comic books and thus possesses distinctiveness.

　Moreover, the IP Court pointed out that DC Comics has authorized Warner Bros. Entertainment Inc. to release many Batman motion pictures and DVDs around the world, including Taiwan.  Also, the GOTHAM mark, GOTHAM CITY mark and other marks including the word “GOTHAM” have been trademarked in the US and Japan for designated use in Batman series comic books, movies, and peripheral products, and thus these marks are well-known marks.  Besides, Mr. Wang’s Gotham mark is highly similar to DC Comics’ GOTHAM and GOTHAM CITY mark, which similarity is likely to cause consumers confusion.  Based on the foregoing reasoning, the Taiwan IP Court ruled in favor of DC Comics, and hence, Taiwan IPO’s disposition for DC Comics’ opposition to the registration of Mr. Wang’s Gotham mark and the Ministry of Economic Affairs’ appeal decision should be vacated.  Taiwan IPO should render a new disposition.  This case is appealable.  (April 2018) 

/CCS