A Decision has recently issued from the Federal Court of Australia in DC Comics v Cheqout Pty Ltd  FCA 478 (22 May 2013), following an appeal of the Australian Trade Marks Office Decision dated 24 July 2012 allowing a trade mark application for "Superman Workout" in relation to conducting exercise classes and related services.
The appeal was allowed and the Judge determined that the trade mark application should be refused.
Use of "Superman Workout" Trade Mark
By way of background, the "Superman Workout" trade mark had been used by Cheqout Pty Ltd in relation to an exercise program and an instructional video. The trade mark was used in conjunction with the letters BG in a shield device (pictured below).
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The letters "BG" are the initials of Bass Gabrielle, a physique model, MMA expert and health and fitness consultant. His business interests have recently expanded to include an anti-aging cream, men's jewellery and a new Hollywood reality TV show. (The sole director and member of Cheqout Pty Ltd is Sam Gabrielle, and so it appears that "Bass Gabrielle" is Mr Gabrielle's stage name).
Once again, DC Comics relied upon evidence of its longstanding and extensive reputation in the SUPERMAN character dating back to 1938. It also relied upon several Australian trade mark registrations for the word SUPERMAN, together with the well known Superman character image and the "S" in shield device (pictured below).
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Grounds of Opposition to "Superman Workout" Trade Mark Application
In the Decision, Justice Bennett considered two grounds of opposition as follows:
- Whether use of the applied for mark would be likely to deceive or cause confusion in light of DC Comics' reputation in connection with the SUPERMAN character and trade marks (Section 60 of the Trade Marks Act 1995).
- Whether the trade mark application had been made in bad faith (Section 62A of the Trade Marks Act 1995)
Use of 'Superman Workout' Trade Mark was not likely to deceive or cause confusion
In relation to the Section 60 ground, Justice Bennett concluded that the ground of opposition was unsuccessful because there was use of the "Superman Workout" trade mark without reference to any of the well known indicia associated with the famous DC Comics SUPERMAN superhero (such as the "S" in shield device). Thus, such use would not result in the public being caused to wonder whether the "Superman Workout" services came from the same source as the SUPERMAN character or DC Comics.
Justice Bennett took into account the fact that "Superman" was descriptive and in that regard, referred to dictionary definitions of "superman", including the German philosopher Friedrich Nietzsche's ideal human being of the future who would possess greater spiritual powers.
"Superman Workout" Application was filed in bad faith
However, Justice Bennett determined that the Section 62A ground of opposition succeeded, taking into account the following factors:
- Cheqout had used the word "Superman" together with the BG Shield device referred to above, which clearly resembles DC Comics insignia and registered trade marks; and
- Cheqout had used a red, white and blue colour scheme (pictured below), which is traditionally used in conjunction with the DC Comics character and trade marks.
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It was noted by Justice Bennett that the Section 62A ground of opposition does not require the Opponent to establish that use of the trade mark would be likely to deceive or confuse (although such evidence may be persuasive in establishing bad faith).
Thus, Justice Bennett concluded that Cheqout's conduct was not in accordance with the standards of acceptable commercial behaviour observed by reasonable and experienced persons and so the application had been filed in bad faith.
Lesson for Trade Mark Owners
The recent Australian Federal Court Decision is of interest because it adds some valuable judicial authority to the relatively new Australian Trade Mark Opposition ground of "bad faith", highlighting that the manner of use of the applied for trade mark may shed light on the intentions of the Applicant in filing a trade mark application.