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 Bennett stated:

“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 Comics".

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:

Click here to view images.

Section 62A Trade Marks Act enables an application to be opposed when “the application was made in bad faith”.

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 Comics.

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 experienced persons”.

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 locomotive.