Superman takes on fitness company - DC Comics v Cheqout Pty Ltd [2013] FCA 478

Superman's powers were put to the test this week as the Federal Court handed down its decision in DC Comics v Cheqout Pty Ltd [2013] FCA 478.

DC Comics issued the challenge to Melbourne fitness company Cheqout Pty Ltd, who had attempted to trademark the "superman workout." DC claimed that this was an infringement of their trademark, and would cause Australian consumers to assume DC endorsed the workout.

Prior Proceedings

In July of 2012, the Trademarks Registrar ruled that the "superman workout" was not intended to deceive, and would not have the effect of deceiving consumers that there was any connection between the super hero and the workout. 

The decision referenced possible alternate definitions of the word "superman" - the DC comic hero, or philosopher Nietzsche's concept of an "ideal superior being." DC claimed that the first definition was more popular amongst Australians, and that the public would naturally associate the term with the super hero character. However, the Hearing Officer of the Federal Court noted that there was a common understanding of the term prior to the creation of the super hero, and that the term also had an established meaning within fitness circles, to define a set of back and core strengthening exercises.

The Trademarks Registrar concluded that the trademark would be unlikely to deceive or cause confusion. DC Comics had never ventured into the fitness industry, and the services offered by Cheqout were distinctly unconnected to DC Comics products. Furthermore, the "superman workout" did not use any logos, styles or fonts that would imply a connection with the comic character. 

Federal Court Case

The Federal Court has reversed the decision of the Trademarks Registrar, ruling that Cheqout cannot register the trademark "superman workout" as the application was made in bad faith. 

An attorney for DC argued that the Registrar erred in relying on the dictionary definitions of the term "superman," saying that the comic hero was so widely known that his character would be the first connotation of the term.

Justice Bennett agreed with this, saying that while there was no danger of confusion between Superman and the workout, Cheqout had acted in bad faith by using a shield logo in order to "strengthen the allusion to Superman." Bennett J concluded by saying that:

"I am satisfied that DC Comics has established that Cheqout made the application for the Trade Mark in bad faith.  This is evidenced by the use, soon after the application, of the word Superman together with the BG Shield Device, in the context of male fitness and strength...I am satisfied that at the date of application for the Trade Mark, Cheqout’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons."

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