On 22 May 2013, Justice Bennett refused an application in the
Federal Court of Australia, by Cheqout Pty Ltd (Cheqout), to
register the trade mark 'superman workout'. Adopting the
test relied upon by Justice Dodds-Streeton in Fry Consulting v
Sports Warehouse Inc (No 2) (2012) (Fry), Her Honour held that
Cheqout made the application in bad faith as its 'conduct fell
short of the standards of acceptable commercial behaviour observed
by reasonable and experienced persons'.
On 2 June 2009, Cheqout lodged an application to register the
trade mark 'superman workout' in respect of the Class 41
services of 'conducting exercise classes, fitness and exercise
clinics, clubs and salons; health club services'.
Cheqout's application consisted of the word
'Superman' together with the BG Shield Device and used the
red, white and blue colours traditionally used in conjunction with
the DC Comics Superman character and DC Comics registered trade
The case is an appeal against the decision of a delegate of the
Registrar of Trade Marks to register the trade mark.
DC Comic's grounds for opposition
DC Comics opposed the application on the following grounds:
the word 'Superman' has come to be associated with the
Superman character and its use in association with health and
fitness services would be likely to deceive or cause confusion;
the application to register the trade mark was made in bad
Federal Court's decision
There is limited Australian authority on the breadth of the
concept of bad faith. In Fry, Justice Dodds-Streeton concluded that
bad faith, in the context of s 62A of the Trade Marks Act 1955
(Cth), was conduct 'of an unscrupulous, underhand or
Justice Barrett was satisfied that Cheqout's 'conduct
fell short of the standards of acceptable commercial behaviour
observed by reasonable and experienced persons' for the
it was a 'relevant circumstance' that in making the
application Cheqout intended to use 'superman workout' in
combination with the BG Shield Device to 'strengthen the
allusion to Superman'. Justice Barrett drew the inference that
Cheqout was attempting to gain a benefit by accentuating the
association between the trade mark and the DC Comics
the red, white and blue colours traditionally used in
conjunction with the Superman character were used by Cheqout
together with the BG Shield Device; and
the design of the BG Shield Device closely resembled that
associated with the DC Comic's character and DC Comic's
registered trade marks.
Justice Barrett found the fitness company had made the
application for the trademark in bad faith. She set aside the
Registrar's decision and refused the trade mark
In relation DC Comics other argument, Justice Barrett found that
there was 'no real, tangible danger or real risk of confusion
arising by the normal and fair use of the word 'superman'
in connection with 'workout'. Justice Barrett was of the
view that a word, such as 'Superman', although
'originally associated with a particular trade source, may over
time become descriptive of a class of goods or
characterisations'. She held that without reference to any of
the well-known indicia associated with the DC Comics superhero
there was no likelihood that the public would 'be caused to
wonder whether 'superman workout' came from the same source
as the Superman character or DC Comics'.
Tips for trade mark owners
We are seeing an increasing amount of cases in Australia in
which a local company has filed for a trade mark that is
essentially owned by an overseas business. There are ways to stop
activity of this sort and one of the most popular grounds is the
bad faith ground of opposition introduced in Australia in 2006.
It's important to act swiftly if you are to retrieve your
rights in your mark in a bad faith scenario.
This publication is intended as a general overview and
discussion of the subjects dealt with. It is not intended to be,
and should not used as, a substitute for taking legal advice in any
specific situation. DLA Piper Australia will accept no
responsibility for any actions taken or not taken on the basis of
DLA Piper Australia is part of DLA Piper, a global law firm,
operating through various separate and distinct legal entities. For
further information, please refer to www.dlapiper.com
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