Focus: DC Comics v Cheqout Pty Ltd [2013] FCA 478
Services: Intellectual Property & Technology

DC Comics has succeeded in overturning the decision of a delegate of the Registrar of Trade Marks that would have seen the registration of the mark "superman workout". The Federal Court allowed DC Comics' appeal on the basis that the trade mark applicant, Cheqout, had sought registration in bad faith.

Background

In June 2009, Cheqout applied for trade mark protection of "superman workout" in Australia for "Conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)" in class 41. The application was examined in the usual manner and IP Australia issued a clear report.

DC Comics sought to oppose registration of the "superman workout" trade mark during the statutory opposition period and in July 2012, a delegate of the Registrar of Trade Marks rejected DC Comics' opposition on the basis that while "superman workout" was allusive of Superman, it was unlikely that Australian consumers would be caused to wonder whether there was a commercial connection between the services provided by Cheqout and DC Comics' famous superhero.

DC Comics appealed the decision of the Registrar's delegate on three grounds, arguing that Cheqout should be prevented from attaining registration of "superman workout" as a trade mark because:

  1. Use in relation to the exercise services for which protection was sought would be likely to deceive or cause confusion (s 43 of the Trade Marks Act 1995 (Cth) (the Act)).
  2. DC Comics' Superman trade marks had before the date of application of "superman workout" acquired a reputation such that Cheqout's use of "superman workout" would be likely to deceive or cause confusion (s 60 of the Act).
  3. Cheqout's "superman workout" trade mark application was made in bad faith (s 62A of the Act).

DC Comics was only successful on the third "bad faith" ground. Significantly, in upholding DC Comics' bad faith ground of appeal, Bennett J noted that unlike ss 43 and 60, s 62A does not require that an opponent establish that the use of the trade mark would result in deception or confusion.

Critical to Bennett J's finding in favour of DC Comics was that Cheqout's use of the word Superman was done together with a Shield Device that closely resembled the insignia associated with DC Comics' Superman.

Her Honour held that:

In my view, the inference is clear, from the immediate use of the Trade Mark together with the BG Shield Device that, in making the application to register the Trade Mark, Mr Gabrielle (and therefore Cheqout) intended to use it in combination with the BG Shield Device in order to strengthen the allusion to Superman. The inference can also be drawn that this use was designed to gain a benefit by appropriating Superman indicia and the reputation of the DC Comics superhero, so as to further the viewer's association between the Trade Mark and the Superman word mark.1

Take away

The decision reminds brand owners that section 62A of the Act provides an important alternate ground to rely on in seeking to oppose registration of a trade mark in Australia.

When conceiving of a brand and before using a sign as a trade mark, it is important to consider whether the proposed trade mark makes allusions to well-known brands, trade marks, personalities or fictional characters.

Footnotes

1DC Comics v Cheqout Pty Ltd [2013] FCA 478 [73].

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