Bad Faith Banishes Superman Trademark into the Phantom Zone

A Trademark Application filed by Cheqout Pty Ltd for “superman workout” in respect of “conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)” was recently refused on the ground that the application was made in bad faith.

DC Comics, the registered owner of several trade marks (see table below) including the word SUPERMAN and the S shield device successfully appealed a previous decision of the Trademarks Registrar which had allowed this mark to proceed to registration.

Number	Trademark	Classes
86122		16
301371		9
311198	SUPERMAN	30
321798		3, 16, 25, 28
364804		16
612154		41
1513459	SUPERMAN	9, 14, 16, 18, 25, 28, 41

The Federal Court decision found that the public would not be caused to wonder whether “superman workout” came from the same source as the Superman character or DC Comics notably taking into account that Cheqout’s services were distinctly unconnected to DC Comics products.

However, the Court held that Cheqout had acted in bad faith by using the shield logo  soon after filing the trade mark application in order to strengthen the allusion to Superman. According to the Court, this use was designed to gain a benefit by appropriating Superman indicia and the reputation of the DC Comics superhero, so as to further the viewer’s association between the Trade Mark and the Superman word mark.

This decision is significant insofar as the bad faith ground was established notwithstanding the absence of deceptive similarity between the registered trade marks.