DC Comics, the owner of various trade marks concerning superhero Superman, has prevented Australian company Cheqout Pty Ltd (Cheqout) from registering the trade mark “superman workout” (Cheqout’s Mark) for various fitness/health services. Bad faith on the part of Cheqout successfully grounded DC Comics’ case.
Before the Registrar of Trade Marks (Registrar), DC Comics unsuccessfully opposed the registration of Cheqout’s Mark in respect of services being “conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)” (Cheqout’s Services). DC Comics appealed that decision to the Federal Court of Australia.
In summary, the grounds of opposition the Court considered were that:
1. Before the priority date for Cheqout’s Mark (being the filing date of 2 June, 2009), another trade mark (the unregistered word mark “superman”) had acquired a reputation in Australia and because of that reputation, the use of Cheqout’s Mark would be likely to deceive or cause confusion (under s60 the Trade Marks Act, 1995 (Act)); and
2. the application for Cheqout’s Mark was made in bad faith (under s62A of the Act).
There was also a ground of opposition under s43 of the Act that because of a connotation of Cheqout’s Mark, its use in respect of Cheqout’s Services would be likely to deceive or cause confusion. However, DC Comics accepted that if the ground under s60 failed, so too would the s43 ground and the Court did not have to separately consider the latter ground.
For the purpose of s60, the Court had to consider the notional use which Cheqout might make of Cheqout’s Mark (that is, the plain words “superman workout”) if it obtained registration. The Court agreed with the Registrar that the word “superman” was, or had, become descriptive and that when it was used without any other indicia associated with the superhero (for example, the shield device at the top of this blog (Shield Device)), members of the public may see it as deriving from the superhero but they would also see it as descriptive “and would not be caused to wonder if” Cheqout’s Mark “was associated with DC Comics.” It’s use was not likely to deceive or cause confusion.
In relation to the s62A bad faith ground however, the Court was able to look beyond the notional use of the Cheqout Mark to the actual use of that mark by Cheqout.
Cheqout had used the trade mark with the following logo, resembling the Shield Device, in respect of personal training, film and entertainment services and video clip titles on a website:
The BG Device contained the initials of Cheqout’s director and the use of the device was key to the Court’s decision against Cheqout. The Court found that it could be inferred that in applying to register Cheqout’s Mark, Cheqout intended to use it with the BG Device “to strengthen the allusion to Superman”. It could also be inferred that Cheqout thereby sought to “gain a benefit” by appropriating DC Comics’ indicia and reputation to further the connection in the minds of the public between Cheqout’s Mark and the unregistered word mark “superman” of DC Comics. This was relevant to bad faith.
The Court found that at the time of applying for trade mark registration “Cheqout’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.” Bad faith was established and registration of the Cheqout Mark was refused.