From The IPKat:

The protection of fictional characters presents various challenges. Their external appearance can be protected by copyright, design, trade mark or unfair competition law, though there are limits. An obvious one is the duration of most IP rights. The US copyright for Winnie the Pooh expired in 2021 and it will expire for the original (‘Steamboat Willie’) Mickey Mouse in 2024. Fortunately, there is no limitation on trade mark renewals. Figurative and three-dimensional trade marks for a character can prove to be an effective tool to prevent third parties from exploiting the reputation of the character’s appearance acquired during the term of copyright protection.

Obtaining trade mark registrations for the names of fictional characters like Mickey Mouse, James Bond or Indiana Jones is quite easy because names are generally considered to be inherently distinctive for any goods and services. If they are well-known, they enjoy a broad scope of protection as a recent decision of the EUIPO’s Opposition Division in a case concerning the famous tomb raider Lara Croft shows

Background

On 12 July 2022, Wuhan Shuncheng Electronic Commerce Co., Ltd. filed an application for EU trade mark no. 18731202 ‘LoraCraft’ covering essentially packaging and stuffing materials as well as ropes in class 22.

Relying on a likelihood of confusion (Art. 8(1)(b) EUTMR) and the protection of a trade mark with a reputation (Art. 8(5) EUTMR), Square Enix Newco Limited (‘Square Enix’) filed an opposition based on EU trade mark no. 549006 ‘LARA CROFT’ registered inter alia for ‘computer games software, computer games’ in class 9. 

. . . .

The EUIPO’s decisions

The Opposition Division briefly denied a likelihood of confusion because the goods are dissimilar (Art. 8(1)(b) EUTMR).

Regarding claims based on a trade mark with a reputation (Art. 8(5) EUTMR), the EUIPO found that ‘LARA CROFT’ and ‘TOMB RAIDER’ have been used as trade marks since 1996 throughout the world for computer games, computer game services and a wide range of merchandising products. Lara Croft has featured, inter alia, in music videos (e.g. here), car advertisements (here) and Hollywood films. Several Guinness world records are held by and associated with Lara Croft, including best-selling video game heroine. From 1996 to 2023 the total number of worldwide sales of Lara Croft video games amounted to 95 million units. In the EU (without the UK) Square Enix sold 14 different video games with a total of over 7 million units, generating an eight digit US Dollar turnover.

The Opposition Division concluded that the earlier EU trade mark enjoyed a strong reputation in the EU, in particular in Germany and France, for computer games in class 9.

As regards the similarity of signs, the EUIPO held that both signs will be perceived as the first and last name of a female. The signs are visually and phonetically highly similar on account of the coincidence in the letters ‘L*ra Cr*ft’ and the letters ‘o’ and ‘a’ being merely exchanged. Conceptually the signs were considered not to be similar.

On the question whether the relevant public would establish a link between the marks, the Opposition Division found that the goods and their market sector are only remotely connected. Despite the dissimilarity between video games and packaging material etc., the EUIPO held that merchandising of video game characters is a common practice and an important source of income. Hence it is found to be normal that the earlier mark is exploited outside its market sector, for instance, through licensing or merchandising. The contested goods could easily be used for further merchandising the famous Lara Croft trade mark. Considering this and the high visual and phonetic similarity, the Opposition Division concluded that the relevant public would establish a link.

The EUIPO also accepted that the use of ‘LoraCraft’ on the contested goods would take unfair advantage of ‘LARA CROFT’. Trade marks with a strong reputation will be recognized in almost any context. The exchange of the position of two letters will not impede that recognition. The use of ‘LoraCraft’ for the goods in class 22 will benefit from the attention paid to the highly similar and very well-known mark ‘LARA CROFT’ and will become associated with the aura of fame surrounding the latter. Consumers may think that there is a direct connection between the applicant’s goods and the famous Lara Croft character.

Comment

This decision raises the interesting question whether titles of works (such as ‘TOMB RAIDER’ or ‘LARA CROFT’ for video games or a video game character) are perceived as trade marks by the relevant public, i.e. as indications of origin. The answer impacts the questions whether a trade mark for the title of the work (1) is inherently distinctive, (2) can acquire a reputation for specific goods, (3) is genuinely used and (4) can be infringed by third party use of identical or similar signs.

The German Supreme Court held that use of a sign as a title does usually not amount to use as a trade mark. The purpose of a title of a work is generally only to distinguish one work from another but not to indicate the commercial origin. German case law makes exceptions, inter alia, for well-known titles (case Kinderstube at para. 41) and a series of works published under the same title (e.g. Higher Regional Court of Hamburg, case 5 U 147/09). Adding the ® or TM to the title is also considered to be helpful to establish trade mark use.

Link to the rest at The IPKat and thanks to C. for the tip.

PG notes that the OP has plenty of links so anyone can dig into IP law.

Here’s an overview of what is protected by trademark, patent and copyright:

Trademark, patent, or copyright

Trademarks, patents, and copyrights are different types of intellectual property. The USPTO grants patents and registers trademarks. The U.S. Copyright Office at the Library of Congress registers copyrights. Use the IP Identifier to learn what kind of intellectual property you have.

	Trademark	Patent	Copyright
What’s legally protected?	A word, phrase, design, or a combination that identifies your goods or services, distinguishes them from the goods or services of others, and indicates the source of your goods or services.	Technical inventions, such as chemical compositions like pharmaceutical drugs, mechanical processes like complex machinery, or machine designs that are new, unique, and usable in some type of industry.	Artistic, literary, or intellectually created works, such as novels, music, movies, software code, photographs, and paintings that are original and exist in a tangible medium, such as paper, canvas, film, or digital format.
What’s an example?	Coca-Cola® for soft drinks	A new type of hybrid engine	Song lyrics to “Let It Go” from “Frozen”
What are the benefits of federal protection?	Protects the trademark from being registered by others without permission and helps you prevent others from using a trademark that is similar to yours with related goods or services.	Safeguards inventions and processes from other parties copying, making, using, or selling the invention without the inventor’s consent.	Protects your exclusive right to reproduce, distribute, and perform or display the created work, and prevents other people from copying or exploiting the creation without the copyright holder’s permission.

PG felt an urge to meander, but, surprisingly, resisted. Basically, each major branch of intellectual property protection – The Big Three listed above plus Trade Secrets – has developed in its own unique manner and has its own rules.

Plus Patent Prosecution – persuading the government to issue a patent and patent litigation – suing someone who has violated your patent – involve much different typical days at work.

In addition to patent attorneys, there are patent agents, sometimes called patent practitioners – non-lawyers who are licensed by the USPTO to assist inventors in the process of obtaining a patent in the first place. Patent agents typically charge less than patent lawyers do to persuade the USPTO to issue a patent.

If you suspect PG has described what some might regard as one fine mess for people who actually create intellectual property in all its various forms, PG would be inclined to agree with you.

You can theoretically file a patent application by yourself, but you’ll need to climb a long learning curve. Ditto for a trademark. Registering a copyright is a bit easier, but has its own institutional quirks and pitfalls.

No, PG can’t help you with any of this stuff. He is a retired attorney which means he hasn’t kept up with the tasks, quirks and hurdles that an active attorney is required to perform to keep his license fresh and sweet-smelling. PG has no idea where his old and musty license is. He probably tossed it many years ago.