Superman can’t even defeat the Registrar of Trade Marks

A recent decision by a delegate of the Registrar of Trade Marks has shown that use of a famous trade mark by an unrelated company may be permissible where the trade mark has become common language.

The case of DC Comics v Cheqout Pty Ltd involved the owner of the famous ‘Superman’ trade mark, DC Comics, challenging an Australian fitness company, Cheqout Pty Ltd (“Cheqout”) over its application to trade mark the ‘superman workout’.

Comparison of Trade Marks

The services for the superman workout trade mark were listed as ‘conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise).’

In comparison, the Superman trade mark owned by DC Comics lists ‘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’.

In its evidence, Cheqout provided an exercise program and instructional DVD which it claimed was intended to change a potential user into a ‘muscularly powerful athletic superman.’ There was no association with or even hinting at the DC Comics’ character Superman.

The Trade Marks Hearing Officer ultimately concluded that Cheqout’s use of the ‘superman workout’ trade mark was not intended or likely to deceive Australian consumers into thinking that there was a connection between the superman workout and DC Comics’ Superman trade mark.

Grounds for Decision

This decision was based on three key grounds:

1. Unrelated industries

DC Comics failed to provide any evidence of undertaking, or issuing a licence to undertake, exercise classes or operation of a fitness clinic or health club. Accordingly, the Trade Marks Hearing Officer considered that the two trade marks operated in sufficiently different markets as to avoid any potential confusion among consumers.

2. Broad definition of ‘superman’

It was held that the word ‘superman’ has known uses ‘beyond merely conjuring up thoughts of the Opponent’s well known character’, namely with its primary dictionary meaning of ‘an ideal superior man conceived by Nietzsche as being evolved from the normal human type’. Consequently, it was found permissible to use this word in relation to Cheqout’s services.

3. The trade marks can be clearly distinguished through style, logo and font

It was found that the ‘overwhelming reputation’ of DC Comics’ superman trade mark, and in particular its stylised wording and logo, meant that there was no likelihood of consumers connecting Cheqout’s ‘unstylised and unadorned’ trade mark with that of DC Comics.

As a result, the Trade Marks Hearing Officer concluded that there could be no deception or confusion among consumers, and accordingly permitted Cheqout’s ‘superman workout’ trade mark to proceed to registration.

It should be noted that DC Comics have appealed the decision in the Federal Court, claiming that the Registrar erred on several grounds, reportedly arguing that the dictionary definition of the superman word should not be relied on, and Cheqout’s use of the superman word calls up associations with the DC Comics Superman character.

Protecting your trademarks and other intellectual property can be a key part of your commercial success. Contact Certus Legal Group for advice on how best to protect your intellectual property.