Marvel Characters Inc v Charles

Marvel Characters Inc. (the Opponent) opposed the registration of trade mark application number 1298683 by Gary Charles (the Applicant). The dispute concerned the Applicant's proposed trade mark, which he stated he chose simply because he liked the name "Ghost Rider" and found it was not trade marked. The Opponent, a well-known producer of comic books and related merchandise, argued that the Applicant's proposed mark was confusingly similar to its famous "Ghost Rider" character, which has been published and distributed in Australia and internationally since 1972. The decision was made by Alison Windsor, a Hearing Officer for Trade Marks and Designs Hearings.

The primary legal issue before the Hearing Officer was whether the Applicant's proposed trade mark should be refused registration on the grounds of opposition, specifically concerning the likelihood of confusion with the Opponent's well-established "Ghost Rider" character and associated trade marks. The Applicant's defence rested on the assertion that his products were not similar to the Opponent's character and that he had no intention of representing Marvel's "Ghost Rider."

The Hearing Officer found that the Opponent had established a ground for opposition. The evidence demonstrated that the "Ghost Rider" character, with its distinctive features such as a flaming skull and flaming motorcycle, had a long history of publication and extensive merchandising in Australia, including a major motion picture released in 2007. The Applicant's own declaration, while asserting no intention to represent the Marvel character, acknowledged liking the name and that his products were currently limited to shorts under the "Ghost Rider" label, with potential for future expansion. The Hearing Officer considered the Applicant's analogy to "Dove soap and Dove chocolate" to be unconvincing in the context of trade mark law, where the focus is on the potential for consumer confusion.

The Hearing Officer concluded that the Opponent had succeeded in its opposition. Consequently, the registration of trade mark application number 1298683 was refused. The Applicant was ordered to pay the Opponent's costs.