In a battle of right and wrong, the 'villain' failed to
convince the court that their conduct met the requisite standards
of truth, justice and the Australian way.
The Federal Court has upheld an appeal from a decision of the
Registrar of Trade Marks, finding that Cheqout Pty Limited
("Cheqout") should not be granted registration of the
trade mark SUPERMAN in respect of "conducting exercise
classes; fitness and exercise clinics, clubs and salons; health
club services (exercise)".
The decision turns more on the activities and intentions of the
trade mark applicant, than any restrictions on general use or
monopolization of the word SUPERMAN.
The decision did not find that use of the word SUPERMAN alone by
Cheqout would cause confusion. In relation to that issue, Justice
"When the Trade Mark is used
without reference to any of the well known indicia associated with
the DC Comics superhero and as contained in the registered Trade
Mark or other trade marks registered by DC Comics , there is no
likelihood that use of the Trade Mark would be likely to deceive or
cause confusion by reference to the Superman word mark, or the
subject matter of DC Comics' registered trade marks. The public
would not be caused to wonder whether "superman workout"
came from the same source as the Superman character or DC
She had earlier noted that DC Comics' registered trade marks
"consist of the word Superman together with a device or
figure of the superhero or simply the S Shield Device, but not of
the word alone".
The problem that arose for Cheqout was their use of SUPERMAN in
conjunction with a BG Shield Device similar to the S Shield Device
used by DC Comics in conjunction with their SUPERMAN character.
Depictions can be seen below:
Section 62A Trade Marks Act enables an application to be opposed
when "the application was made in bad
Justice Bennett found that s62A does not require DC Comics to
establish that use of the trade mark applied for would result in
deception or confusion. She found that it has a broader scope and
disentitles a party to registration where the conduct of the
applicant falls short of the standards of acceptable commercial
behaviour expected of a business.
Soon after its application for registration of SUPERMAN, Cheqout
began using SUPERMAN together with the BG Shield Device shown
above. They also used the colours red, white and blue, which have
traditionally been used in conjunction with the SUPERMAN character.
They only stopped using the BG Shield Device after they received a
"cease and desist" letter sent on behalf of DC
Justice Bennett found 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."
As a consequence of this intention to take advantage of the
reputation of DC Comics' SUPERMAN character, she found that
"Cheqout's conduct fell short of the standards of
acceptable commercial behaviour observed by reasonable and
In SUPERMAN parlance, it might be said that Cheqout's
failure to 'do good' resulted in their application failing
faster than a speeding bullet. Cheqout failed to leap the s62A
requirement in a single bound, and so were hit by the
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