It has not always been possible to oppose a trade mark application in Australia on the grounds that the application was filed in bad faith.
In the DC Comics vs Cheqout Pty Ltd  FCA 478 case, the appeal by DC Comics from an opposition before the Australian Trade Marks Office to an application by Cheqout Pty Ltd (“Cheqout”) for the trade mark “superman workout” (“Cheqout’s Trade Mark”)* provides an example of the evolution of the bad faith ground of opposition and further clarity on the circumstances that can constitute bad faith in a trade mark opposition.
In the earlier decision in 2012 before the Registrar of Trade Marks, the Registrar dismissed the bad faith ground of opposition stating “…I do not believe the making of its [the Applicant’s] application to register the plain English words “superman workout” as a trade mark for the Services could reasonably be said to be of an unscrupulous, underhand or unconscientious character”. The Registrar also dismissed the ground of opposition based on DC Comics’ reputation in the SUPERMAN trade mark, Section 60 Trade Marks Act 1995 (Cth) (The Act), stating: “While the presence of the word “superman” in the Trade Mark might for many such consumers call to mind the Opponent’s SUPERMAN character, it nevertheless remains a word with independent significance as far as the Services are concerned”.
On appeal, the Australian Federal Court refused to grant registration of Cheqout’s Trade Mark. It was the Court’s view that the application had been filed in bad faith because, soon after the application was filed, the Cheqout Trade Mark was used on Cheqout’s website together with the device of a shield that included the letters BG and the colours red, white and blue which are some of the indicia associated with DC Comics’ Superman superhero character.
The Court found that this demonstrated an intention by Cheqout to use the BG shield device together with the “superman workout” trade mark for the Services in order to strengthen the connection to the Superman superhero character. The application for the “superman workout” mark was therefore filed in bad faith.
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The Court found in relation to the Section 60 ground of opposition that “There is no dispute, and no doubt, that Superman the superhero is well known and recognised, by look and by name, to the public at large”. But, in dismissing this ground of opposition the Court 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”.
The following lessons can be learned from this decision:
- Although the intention of the Applicant is a relevant factor to be considered when determining whether a trade mark application has been filed in bad faith, whether that intention was in fact present could have be easily refuted by Cheqout if it had participated in the appeal proceedings.
- In order for the bad faith ground of opposition to be successful, there is no requirement for the Opponent to establish that use of the opposed mark would result in deception and confusion.