It’s not often a superhero makes an appearance in a Federal Court case, but Warner Brothers’ DC Comics has won a legal battle against a Melbourne gym over the term ‘Superman Workout’, which the company used to promote its products.
The gym Cheqout had been using the phrase to describe its workout DVDs and video clips, but DC Comics challenged the trademark, saying Cheqout’s consumers would think it was associated with the comic book company.
DC Comics also said the gym had used the triangular-shaped symbol associated with Superman, which is displayed on the superhero’s chest, in its own promotions, but these were removed following a cease-and-desist letter from the comic book business in December 2009.
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In July 2012, the registrar of trademarks ruled the fitness company could use the ‘Superman Workout’ trademark without consumers believing there was a connection between the fitness videos and the crime-fighter character made famous by DC Comics.
This decision was appealed by the comic book company and yesterday Federal Court judge Annabelle Bennett ruled in favour of DC Comics and prevented the Melbourne gym from using the phrase.
In Bennett’s decision, she said while the gym claimed it had no intent to associate the gym program with the comic book character, the use of a similar shield (the triangular-shaped symbol) was at odds with this claim.
“In my view, the inference is clear, from the immediate use of the trademark together with the BG Shield Device that, in making the application to register the trademark, Mr Gabrielle (and therefore Cheqout) intended to use it in combination with the BG Shield Device in order to strengthen the allusion to Superman,” Bennett said.
“The inference can also be drawn that 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 trademark and the Superman word mark.”
Goodsell Lawyers managing director Gene Goodsell says the use of the logo was one of the key differences between the trademark registrar and the Federal Court decisions.
“In the first case there was no reference to the logo, whereas in the second case the logo was considered.”
“The first case also considered the fact DC Comics had no link to the fitness industry and because this is a fitness company the registrar ruled there was no link, but it was then found the definition, the popular meaning and the use of the logo overrode the links between the goods and services,” he says.
Goodsell says there was also a variation in the dictionary definitions used by the trademarks registrar and the Federal Court, which partially determined the judge’s decision.
“Originally the trademark registrar looked at the Macquarie defining of Superman, which refers to the Friedrich Nietzsche definition, but in this case they looked at the Oxford dictionary definition, which referred to the popular character,” he says.
Goodsell says both sides had valid arguments, but he was surprised the company proceeded with the trademark in the first place.
“There are facts on either side as to whether there is infringement or not, but with regards to this, I’m very surprised the fitness company went ahead with this. The fact of the matter is I don’t see how you couldn’t connect the two.”
“If I was advising the fitness company I would have said don’t even bother putting in for the trademark,” he says.
Goodsell says businesses considering applying for a trademark should consult with a lawyer and take heed from this case to not use a logo or symbol which is connected to another trademark.
“The idea is to get good legal advice to begin with, because when you put the trademark forward it has to be approved and this case shows it doesn’t matter – even if the trademark is approved, it can still be disputed.
“If you have any doubts, don’t do it. With this case it was the logo – if there wasn’t the logo, it might have been a different story, but there are a whole lot of factors which need to be considered,” he says.
Last year Australian clothing label Black Milk Clothing received a cease-and-desist letter from Star Wars creator George Lucas to stop using Star Wars images on its products illegally.
Lucas’s film production company eventually agreed to licence the images, but the business was forced to pay costly license fees as a result.