Disney’s need for vigilance

AI Mickey Mouse with copycat

You would expect that no one considers using the brand name Disney, as it is such a well-known brand all over the world.

Who doesn’t know Disney? And who doesn’t know that Disney closely protects its trademark rights?

In reality, Disney still has to be vigilant: there are parties out there who try to lay claim to a name similar to Disney. Recently, Yangjiang Xiaoyelin Trading Co. filed an EU application for ‘DISNNIE’, a trademark for clothing: unrelated to films, entertainment or media.

It came as no surprise when Disney Enterprises filed an opposition based on the European DISNEY trademark, which is also registered for all kinds of clothing products. The words Disney and Disnnie sound practically identical and there is also a clear visual similarity.

The European Trademarks Office (EUIPO) deliberated on whether the trademarks were also similar from a conceptual point of view, a point that we found particularly interesting. The Office found that the trademarks were conceptually identical for English-speaking consumers, as they would immediately associate both DISNEY and DISNNIE with Walt Disney.

It’s clear that a specific concept comes to mind when you think about Disney, but does this also apply to DISNNIE according to the rules of the game? Opinions on this may vary. We think that Disney’s fame played a role in this decision, although this factor was not assessed by the European Trademarks Office.

At the end of the day, the European Trademarks Office ruled in favour of Disney Enterprises, as it considered the trademarks similar enough to entail a risk of confusion.

The lesson to be learnt here is to think very carefully before using a trademark that ‘looks a bit similar’ to a famous trademark.  Sooner or later, it can get you into trouble. In this case, however, we suspect that the similarity between these trademarks was more than pure coincidence.

Author: Matthias Van Den Broek

Bio: Matthias van den Broek is a trademark attorney and specialist in advising in online brand protection and domain name disputes. His client portfolio includes well-known names in the financial sector, ranging from crypto startups to market makers. Matthias enjoys writing about current intellectual property issues, with an affinity for design law.