- About You
- About Us
- Trade Marks
- Domain Names
- IP Law
- IP Disputes
The Markwell Blog
Man of Steel prevails in fight to trade mark ‘Superman Workout’
A Melbourne fitness company has found that just like in the movies, Superman always wins in the end. Cheqout Pty Ltd’s attempt to register ‘Superman Workout’ found early success in the Trade Marks Office but was overturned on appeal.
In 2009, Cheqout applied to register ‘Superman Workout’ as a trade mark in connection with fitness and exercise classes and health club services.
DC Comics, which owned a number of registered marks comprising the word Superman accompanied by a figure of the superhero or the ‘S shield device’, opposed Cheqout’s application (interestingly, DC Comics did not have a registration for the plain word SUPERMAN).
The Hearing Officer held that there would be no confusion as the word ‘Superman’ was descriptive and also as DC Comics hadn’t registered or used its marks in relation to fitness services and dismissed the opposition.
DC Comics appealed to the Federal Court.
The Federal Court decision
In the appeal, the Court considered whether the use of the Superman Workout trade mark would be likely to cause confusion. Justice Bennett determined that it would not.
Her Honour agreed with the Hearing Officer that use of Superman Workout on its own would not cause confusion or deception as the word Superman was descriptive, referring to dictionary definitions and the German philosopher Nietzsche’s use of the term to describe the ideal human being of the future.
However, Justice Bennett did find that Cheqout’s trade mark application was filed in bad faith under section 62A of the Trade Marks Act. The finding of bad faith was based on evidence that Cheqout had used its mark in combination with a shield device that was very similar to DC Comics’ ‘S shield device’ and with a red, white and blue colour scheme that was similar to the colour scheme used by DC Comics for its Superman character and trade marks.
The Court noted that the bad faith ground of opposition did not require DC Comics to establish that confusion or deception was likely to arise but simply that Cheqout’s conduct was below the standards of acceptable commercial behaviour observed by reasonable people. Justice Bennett held that DC Comic’s had succeeded on this point and refused Cheqout’s application.
- Even superheroes need a trade mark lawyer
- There have only been a handful of cases on the bad faith ground of opposition. The Superman decision is important as it establishes that the manner in which a trade mark is used can be an indicator of an applicant’s intention in filing a trade mark.
- Businesses thinking of using marks that are similar to well known marks, even in relation to unrelated goods and services, must tread carefully. If the purpose is to allude to the well known mark, it’s best to stay clear.
- Without Oyster Bay, it’s just a bottle
- Omega fails reputation test in trade mark dispute
- Trade marking colours – lessons for brand owners
- New law to protect major event sponsors
- Additional damages adds up to a lot of kebab
- Descriptive trade marks and Google Adwords
- Changes to trademark oppositions in China
- Important changes to Chinese trade mark laws
- A mite too late: Dick Smith loses OzEmite
- Trade Marks Office decision too bad for IBAD
Get in touch
Intl: +61 3 9909 7693
Melbourne VIC 3000 AUSTRALIA
We eat trade marks for breakfast
Markwell is a boutique intellectual property firm that provides no-nonsense, business-relevant, expert advice in trade marks, domain names and intellectual property law. Representing brand owners in Australia, Asia and Worldwide.
Our attorneys have been featured in: