DC Comics v cheqout Pty Ltd  ATMO 64
Cheqout Pty Ltd (“cheqout”) filed a Trade Mark Application for “superman workout” in relation to “conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)”.
The mark had been used by cheqout in relation to an exercise program and was subsequently used in relation to an instructional video. The purpose of the exercise was to change yourself into a “muscularly powerful athletic superman” according to the company. Cheqout deposed that it had no intention of trading off DC Comics’ comic book character Superman.
The Application was opposed by DC Comics, which filed evidence of its longstanding and extensive reputation in the Superman character dating back to 1938. The decision of the Trade Marks Office issued on 24 July 2012.
Comparison of Superman trade marks
DC Comics relied upon an earlier Australian Trade Mark Registration for Superman & device mark
in relation to:
“Entertainment services; educational services of an entertaining nature; presentation of live performances and simulated fictional character appearances to entertain the public; movie and video entertainment and/or educational presentations“.
The Hearing Officer decided that exercise classes are not an “educational presentation”. Therefore, the services covered by the earlier Registration do not include DVDs which feature exercise classes.
The Hearing Officer decided that “Superman” name and character was very well-known and enjoyed notoriety and familiarity amongst consumers. Therefore, consumers upon encountering the unadorned and unstylised words “superman workout” in relation to exercise services would discount the likelihood of any relevant commercial connection with the well-known Superman character accordingly.
It was also relevant for the purposes of this question that “Superman” is a word with descriptive qualities which would reduce the risk of significant confusion or deception amongst consumers. Accordingly, the Hearing Officer was not satisfied on balance that there was a real tangible danger of a number of people being left in doubt or caused to wonder whether the parties’ services dealt with under the respective trade marks came from the same source or otherwise enjoyed any relevant commercial relationship.
Use of “superman workout” mark not likely to deceive or cause confusion
The Hearing Officer decided that the Australian consumer is well educated in the increasingly popular practice of licensing well-known trade marks, including those relating to fictional celebrities, on a wide and diverse range of goods and services. Examples relied upon were Mickey Mouse and Pink Panther. However, the Hearing Officer considered that “Superman” is in a different category because there was a known meaning for the word prior to the creation of the “Superman” character (ie a person of extraordinary or superhuman powers). In addition, the Hearing Officer gave emphasis to the fact that “Superman” was a known and commonly used term in the fitness industry to indicate a set of core and back strengthening exercises, as seen in the photo below:
It was significant that DC Comics had not filed any evidence that it had ever conducted exercise or fitness classes or licensed others to do so.
It was also found that DC Comics’ reputation in “Superman” was bound up in the particular stylisation used by DC Comics, together with the S logo. Therefore, the Hearing Officer did not think that a significant number of consumers would be caused to wonder about any commercial connection between cheqout and DC Comics.
Application for “superman workout” not filed in bad faith
The Hearing Officer described behaviour which constituted “bad faith” as behaviour falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area.
It was noted that cheqout wanted to link its services and exercise routine to the physical characteristics of the “Superman” character and that the set of exercises imitate the well-known flying positions commonly adopted by the “Superman” character. However, it was held by the Hearing Officer that in the absence of any pre-existing licence agreement between the parties or a prior relationship which imposed obligations of a fiduciary character or quasi-fiduciary character, a high bar has been set for an opponent to establish bad faith.
It was concluded that cheqout’s conduct in filing an application to register the plain English words “superman workout” as a trade mark for the services could not reasonably be said to be of an unscrupulous, underhand or unconscientious character. Therefore, the application had not been filed in bad faith.
As none of the Opposition grounds were successful, it was ordered that the Trade Mark Application may proceed to registration.
Tips for trade mark owners
The decision is significant insofar as the very well-known and famous nature of DC Comics’ mark did not ensure success in the opposition, because of:
- the unrelated services covered by the opposed Application,
- the fact that “Superman” has a secondary descriptive meaning as describing core strengthening exercises, and
- the fact that reputation in DC Comics “Superman” mark was specifically associated with the “Superman” character and related indicia.