DC Comics has succeeded in an appeal to the Federal Court to have an application for registration of the trade mark SUPERMAN WORKOUT filed by Cheqout Pty Ltd in class 41 for services including exercise fitness classes and health club services, set aside on the ground that the application was made in bad faith.

In the recent decision of Justice Bennett in DC Comics v Cheqout Pty Ltd [2013] FCA 478, Her Honour found that whilst there was no real risk of confusion arising from the normal or fair use of the word ‘superman’ in connection with ‘workout’, the use of the mark SUPERMAN WORKOUT in conjunction with the shield device similar to the CD Comics’ Superman shield device and with the red, white and blue colours traditionally associated with the Superman character amounted to bad faith.

Her Honour confirmed that for the purpose of oppositions based on the ground of ‘bad faith’ under section 62A of the Trade Marks Act 1995 (Cth), there is no requirement to demonstrate that the use of the trade mark would be likely to cause deception or confusion. Although these factors can be persuasive in considering whether there has been any ‘bad faith’, they are not prerequisites. However the way a mark is used may indicate that an application to register the mark was made in bad faith.