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.
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
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
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
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).
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
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
1DC Comics v Cheqout Pty Ltd  FCA 478
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