DC Comics v Cheqout Pty Ltd [2013] FCA 478

DC Comics v Cheqout Pty Ltd [2013] FCA 478

The s 60 ground failed, and therefore the s 43 ground also failed, because although Superman was famous, the word "superman" had become descriptive and normal and fair use of "superman workout" without Superman indicia would not create a real risk that the public would wonder whether the services came from DC Comics. The s 62A ground succeeded because Cheqout's immediate use of "superman workout" with the BG Shield Device, in male fitness and strength services and with red, white and blue colours, supported the inference that at the application date Cheqout intended to strengthen the allusion to Superman and appropriate Superman indicia and reputation, conduct falling short of acceptable...

Jurisdiction
Australia
Judgment Date
22 May 2013
Procedural Posture
Trade Marks Appeal From Decision of the Delegate of the Registrar of Trade Marks Allowing Registration Over Opposition / Appeal From DC Comics V Cheqout Pty Ltd [2012] ATMO 64
Outcome
Appeal allowed; decision of the delegate of the Registrar of Trade Marks set aside; application to register "superman workout" refused.
Legal Topics
['opposition to Registration' 'deceptive Similarity and Confusion' 'reputation in Australia' 'bad Faith Application' 'notional Use of Trade Mark']
['trade Marks' 'intellectual Property'] ['opposition to Registration' 'deceptive Similarity and Confusion' 'reputation in Australia' 'bad Faith Application' 'notional Use of Trade Mark']

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Procedural Posture

Trade Marks Appeal From Decision of the Delegate of the Registrar of Trade Marks Allowing Registration Over Opposition / Appeal From DC Comics V Cheqout Pty Ltd [2012] ATMO 64

Legal Issues

  1. 1 ['Whether registration of the trade mark "superman workout" should be rejected under ss 43, 60 and/or 62A of the Trade Marks Act 1995 (Cth).' 'Whether use of "superman workout" for exercise and health club services would be likely to deceive or cause confusion because of the reputation of DC Comics\' Superman word mark.' 'Whether Cheqout\'s application to register "superman workout" was made in bad faith.']

Ratio Decidendi

The s 60 ground failed, and therefore the s 43 ground also failed, because although Superman was famous, the word "superman" had become descriptive and normal and fair use of "superman workout" without Superman indicia would not create a real risk that the public would wonder whether the services came from DC Comics. The s 62A ground succeeded because Cheqout's immediate use of "superman workout" with the BG Shield Device, in male fitness and strength services and with red, white and blue colours, supported the inference that at the application date Cheqout intended to strengthen the allusion to Superman and appropriate Superman indicia and reputation, conduct falling short of acceptable...

Court Disposition

Appeal allowed; decision of the delegate of the Registrar of Trade Marks set aside; application to register "superman workout" refused.

Orders

  • ['The appeal from the decision of the delegate of the Registrar of Trade Marks be allowed.' 'The decision of the delegate of the Registrar of Trade Marks be set aside.' 'The application to register "superman workout" be refused.']