DC Comics v Cheqout Pty Ltd - [2012] ATMO 64

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by DC Comics to registration of trade mark application 1300433 (41) – superman workout – filed in the name of cheqout pty ltd

Delegate: Michael Kirov

Representation: Opponent: Hamish Bevan of Counsel instructed by Victoria Bell of Baker & McKenzie
Applicant: Relied on written submissions prepared by Actuate IP, Patent & Trade Mark Attorneys

Decision: 2012 ATMO 64
s 52 opposition: Grounds under ss 43, 44, 60 and 62A pressed – services not similar – use not likely to deceive or cause confusion – application not made in bad faith - opposition unsuccessful. Costs awarded against the Opponent.
Background

This is an opposition brought by DC Comics (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark superman workout, subject of application number 1300433 in the name of cheqout pty ltd (“the Applicant”).
Details of the opposed application are as follows:
Application Number:           1300433
Priority Date:   2 June 2009  (“the Priority Date”)
Services:Class 41: Conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)  (“the Services”)
Trade Mark:  superman workout               (“the Trade Mark”)
The Opponent filed its Notice of Opposition (“the Notice”) on 23 December 2009.
The parties served Evidence in Support, Evidence in Answer and Evidence in Reply as follows:
Evidence in Support
▪ Statutory Declaration by Amy E Genkins made 21 June 2010, with Annexures
AG1 to AG26 (“Genkins 1”)
Evidence in Answer
▪ Statutory Declaration by Sam Gabrielle made 30 November 2010, with Exhibits
SG-01 to SG-11 (“Gabrielle”)
Evidence in Reply
▪ Statutory Declaration by Matthew Lee Crowe made 15 March 2011, with Annexure
MLC1 (“Crowe”)
▪ Statutory Declaration by Amy E Genkins made 25 May 2011, with Annexure
AG27 (“Genkins 2”)
The Applicant was incorporated in Australia in April 2007 and Sam Gabrielle is its sole director and Company Secretary. He says that:
The first time I used the phrase “Superman Workout” was in or around October 2007, when I used that phrase to refer to the new exercise program I was developing at the time. The “Superman Workout” program ultimately became an instructional video I recorded towards the end of July 2009 in which I personally provide instruction on how to perform the exercises making up the “Superman Workout” program. I personally have been a health and fitness consultant for 12 years and the instructional videos of the “Superman Workout” exercise program have been advertised and sold through the Applicant since August 2009.
…
Because of the many benefits gained from my exercise program, I decided to call my exercise program the “Superman Workout”. My intention was to convey to potential users of my exercise program the potential of changing yourself into a muscularly powerful athletic superman. It was not my intention to associate my exercise program with the Opponent’s comic book character.
Amy Genkins, the Opponent’s Senior Vice President Business and Legal Affairs, describes the Opponent (in Genkins 1) as “one of the largest and most diverse publishers of comics and comic related products in the world today” and as “one of the oldest comic book companies, with a continuous history that spans over seventy (70) years”. In 1938 the Opponent launched “Action Comics”, which featured the debut of its now well known SUPERMAN character. As Ms Genkins explains:
The SUPERMAN character was created by Jerry Siegel and Joe Shuster and was first introduced to the public by [the Opponent] in Action Comics #1 in 1938. From the outset, the SUPERMAN character has worn a distinctive costume comprising a full length bodysuit complemented by contrasting coloured trunks, boots, belt and a long flowing cape. A stylised SUPERMAN insignia has always appeared on his chest and on the back of his cape. This insignia consists of a large letter “S” inscribed within a bordered shield.
…
The SUPERMAN character was the first superhero to have its own regular comic book title. The character has subsequently appeared in newspaper comic strips, a radio series, animated cartoon series, a hardcover novel, live action movie serials, television series, Broadway musical entitled “It’s a bird…it’s a plane…it’s SUPERMAN”, motion pictures and computer and video games. It has also been licensed in relation to a wide array of products and merchandise.
…
From its beginnings in the USA in 1938, the SUPERMAN character now has a presence, either through comic books, movies or licensed products, in 147 countries.
At the heart of the opposition is the Opponent’s claim that the Applicant’s use of the Trade Mark for the Services would be likely to deceive or cause confusion amongst a substantial number of the relevant Australian public, specifically that it would cause them to wonder whether the Services enjoyed the Opponent’s licence, sponsorship or approval or otherwise enjoyed some connection with the Opponent.
I heard the matter as delegate of the Registrar of Trade Marks on 13 February 2012 in Sydney. Hamish Bevan of Counsel, instructed by Victoria Bell of Baker & McKenzie, appeared for the Opponent. The Opponent’s attorneys had also provided copies of written submissions to IP Australia and to the Applicant’s attorneys, Actuate IP, on 6 February. The Applicant did not appear, nor was it represented, at the hearing, but it did rely on written submissions prepared by Actuate IP. These submissions reached me very shortly before the hearing and, since they had not been copied to the Opponent’s representatives, I provided Mr Bevan and Ms Bell with a copy and allowed time for them to be considered prior to commencement of the hearing.
Grounds of Opposition
The Notice lists a large number of grounds corresponding to various provisions of the Act but in their written submissions of 6 February 2012 the Opponent’s attorneys confirmed that only the grounds based on ss 43, 44, 60 and 62A would be pursued at the hearing. These grounds are discussed below, where I have found it convenient to firstly consider the s 44 and s 60 grounds before turning to the grounds based on s 43 and s 62A. I treat the remaining grounds listed in the Notice as abandoned.
Onus and Standard of Proof
To succeed in its opposition the Opponent bears the onus of establishing one or more of the grounds pressed at the hearing. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities[1].
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32] and, most recently, Allergan, Inc v Di Giacomo [2011] FCA 1540 (30 November 2011) per Stone J at [11] to [12] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.
Discussion
Section 44
The ground based on section 44 is indicated in the Notice as follows:
the [Trade Mark] is substantially identical with or deceptively similar to one or more trade mark registrations and/or applications having an earlier priority date in respect of similar goods/services or closely related goods/services.
So much of section 44 of the Act as is relevant to this matter is reproduced below:
Identical etc. trade marks
44.(2) Subject to subsections (3) and (4) [2], an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
[2] As will become apparent I have not found it necessary to consider subsections 44(3) and 44(4) in this decision.
Note 3: For priority date see section 12.
Notwithstanding the wording of the Opponent’s s 44 ground the sole registration or application on which it relies is its registration 612154, which is detailed below:
Registration Number:         612154
Priority Date:   23 September 1993
Services:Class 41: 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
Trade Mark:  (“the SUPERMAN & Device Mark”)
For s 44 to apply at all, the priority date of the registration relied upon must be earlier than the 2 June 2009 priority date of the opposed application. This requirement is obviously met by registration 612154.
To succeed under its s 44 ground, then, it is sufficient if the Opponent establishes on the balance of probabilities that:
• the Services are “similar services”[3] to those covered by registration 612154; and
• the Trade Mark is at least “deceptively similar”[4] to the SUPERMAN & Device Mark.
[3] As defined in s 14(2) of the Act, namely the same services and/or services of the same description.
[4] As defined in s 10 of the Act, which provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.
As to whether the Services are the same as, or of the same description as, those covered by registration 612154, Mr Bevan noted that the Services include “conducting exercise classes” while, as the Opponent’s written submission put it, registration 612154 is:
registered in Class 41 for services that include “movie and video entertainment and [/] or educational presentations” (emphasis added). Clearly, “educational presentations” are words of wide import and will encompass presentations relating to or concerning physical education and exercise classes. It is a common experience to see DVDs which feature exercise classes (whether, for example, aerobics, yoga or pilates) for domestic use.
In response, Actuate IP submitted that it was a step too far to claim the words “educational presentations” appearing in the specification of registration 612154 should be interpreted so broadly. The attorneys argued that to do so:
…fails to import a “normal and fair” notional use of the Opponent’s trade mark (see Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65 at 80[5]) which in the context of the other services claimed in [registration 612154] must be seen to be limited to services related to entertainment, and in particular to “video and movie entertainment”. This is unlike the services of “conducting exercise classes” [covered by the opposed application].
[5] I note page 80 of the CLR referred to appears irrelevant to the point Actuate IP makes, but that pages 71 and 72 do appear apt.
Actuate IP noted the standard criteria for assessing the similarity of goods outlined by Romer J in Re Application by Jellinek (1946) 63 RPC 59; 1a IPR 393, being (a) the nature of the goods, (b) the uses of the goods and (c) the trade channels through which the goods are provided. Applying these criteria to the present case they submitted that the services covered by registration 612154 “are based in entertainment, education and film”, whereas “in contrast, the services claimed in the [opposed] application are based in the provision of exercise classes, fitness classes and health club services”. Accordingly, they said that:
…on a notional “normal and fair” use, it is highly unlikely that the Opponent’s services will be supplied within the context of health clubs or gyms where the Applicant’s services are likely to be offered.
I am in broad agreement with Actuate IP’s submission. It could no doubt be said that an exercise class was, at one level, “educational”; indeed, the description “physical education class” would, I accept, be apt for an exercise class provided as part of a more general educational curriculum such as in a junior or secondary school. However one would not normally describe or refer to an exercise class, whether live or recorded on film or video, as an “educational presentation” per se. If, back in 1993 when registration 612154 was filed, the Opponent intended to use the SUPERMAN & Device Mark in relation to the provision of exercise classes recorded on film or other media then presumably the coverage of the registration would have made that explicit.
I thus do not agree that the services covered by registration 612154 include “DVDs which feature exercise classes (whether, for example, aerobics, yoga or pilates) for domestic use” as argued by Mr Bevan. Such DVDs would in any event most likely be classified as goods falling within Class 9 but, be that as it may, I would still hesitate to characterize such DVDs as “educational presentations”. I think rather that the word “Education” as used in the Class 41 heading carries with it the idea of development of the mental faculties or intellect. By contrast, activities such as fitness and exercise classes or clinics would on the face of it fall within the Class 41 descriptions “providing of training” or “sporting activities”. Nor, I might add, is there any evidence before me that the Opponent has ever used the SUPERMAN & Device Mark in relation to “educational presentations” of any sort, so I am unable to find any further guidance beyond the words as used in the specification of the registration relied upon.
Conversely, although Mr Gabrielle says in the statement quoted in paragraph 5 above that his “‘Superman Workout’ program ultimately became an instructional video” and that “the instructional videos of the ‘Superman Workout’ exercise program have been advertised and sold through the Applicant since August 2009”, such videos are not actually included within the specification of the opposed application. In this regard production and sale of instructional videos is on the face of it a different field from that of “conducting exercise classes” per se, or operating “fitness and exercise clinics, clubs and salons”, or providing “health club services (exercise)”. In his declaration Mr Gabrielle explains the apparent discrepancy between his production of the instructional video on the one hand and the actual services covered by the opposed application on the other in this way:
Following the development of the “Superman Workout” exercise program, it was my intention to develop the business of the Applicant further by providing exercise classes and developing fitness clinics and clubs and salons where the “Superman Workout” program could be taught to other persons. I note that it is not an uncommon practice within the health and fitness industry to initially commence business by first selling instructional videos of exercise programs, only to follow up afterwards by providing live instruction in the exercise programs once they become popular.
He exhibits two “extracts from websites from developers of other exercise programs which began as instructional videos but expanded into the provision of live instructional classes” and continues:
Given the rapid success of the “Superman Workout” program to date, I decided to apply for trade mark protection of the phrase “Superman Workout” to ensure that I could continue to expand the Applicant’s business in the same direction that others had done in the health and fitness industry.
My conclusion, then, is that none of the Services are the same as, or of the same description as, any of the services covered by registration 612154. That being the case, it is not strictly necessary to consider whether the Trade Mark is “deceptively similar” to the SUPERMAN & Device Mark.
Should I be wrong in this conclusion however, then I would add that I do not in any event believe that the Trade Mark is deceptively similar to the Opponent’s SUPERMAN & Device Mark. In this regard s 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. This is not merely an abstract question, but rather will depend upon how close the parties’ services are and upon the context in which the marks under comparison may be used.
French J (as he then was) noted[6] in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“Woolworths”) that the logic of s 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks under comparison. He then went on to explicitly approve the observation in Wilcox J’s first instance decision in the Woolworths matter[7] that, “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”. In the present case, as I have indicated, I think it is somewhat forced to argue there is any particularly close similarity in the parties’ services.
[6] In the context of closely related goods and services, but relevant also in the context of “similar services” as defined in s 14(2) of the Act.
[7] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)
As mentioned above, in assessing whether trade marks are deceptively similar one should also keep in mind the context and the marketplace in which the parties’ trade marks might fairly be used. In the often quoted words of Parker J (as he then was) in Re Application by the Pianotist Co Ltd (1906) 23 RPC 774 at 775; 1a IPR 379 at 380:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
Actuate IP’s submissions highlighted the well known words of Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 415; 1b IPR 523 at 529 that:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.
The Opponent’s submissions on the issue of deceptive similarity were brief and centered on consumers’ likely “imperfect recollection” of the SUPERMAN & Device Mark:
In any imperfect recollection of the marks, consumers will readily place more emphasis on the word SUPERMAN; they will place less emphasis on the image aspect of the mark. In these circumstances, the Opponent submits that consumers will be caused to wonder whether it might not be the case that the services come from the same source; and, given the Opponent’s overwhelming reputation, a fortiori that source will (erroneously) be the Opponent.

In referring to “the Opponent’s overwhelming reputation” (presumably meaning the reputation of the SUPERMAN character) in the context of s 44, Mr Bevan cited Woolworths. There the majority of the Full Federal Court (French and Tamberlin JJ; Branson J dissenting) expressly approved the taking of reputation into account when assessing deceptive similarity under s 44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”[8]. Applying this principle in the case before them, the Court did not consider the trade mark WOOLWORTHS METRO to be deceptively similar to the mark METRO in view of the “notorious familiarity” amongst Australian consumers of the name “Woolworths”.
[8] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, per French J at 431.
As discussed below in connection with the Opponent’s s 60 ground, I accept that the SUPERMAN name and character were very well known in Australia as at the Priority Date. Moreover, it might in my view reasonably be said that the SUPERMAN name and character enjoyed the kind of notoriety or familiarity in relation to the “entertainment services” covered by registration 612154 that the Court in Woolworths would have had in mind. However, this can effectively work against the Opponent in its claim that relevant confusion or deception as between the SUPERMAN & Device Mark and the Trade Mark was likely. Indeed, it was the “notorious familiarity” of the name “Woolworths” which led the Court in Woolworths to conclude the marks WOOLWORTHS METRO and METRO were not deceptively similar.
Here, the evidence before me is that the reputation of the SUPERMAN name and trade mark is closely linked to the SUPERMAN character itself, as portrayed in comics, films and television over the years[9]. This link is of course manifest in the SUPERMAN & Device Mark itself, which prominently features a representation of the character in question. Indeed the evidence before me indicates that, when used as a trade mark, the character’s name is almost invariably rendered in the particular manner in which it appears in registration 612154, (namely ), and this too appears to me to be relevant to any reputation the element SUPERMAN contained within the SUPERMAN & Device Mark as a whole might enjoy. To the extent that the element SUPERMAN has the “overwhelming reputation” Mr Bevan highlighted, then, I would expect consumers’ recollection of it, imperfect though it might be, also to be associated with the SUPERMAN character and related indicia. I would thus expect such consumers, upon encountering the unadorned and unstylised words “superman workout” being used as a trade mark for the Services, to discount the likelihood of any relevant commercial connection with the well known SUPERMAN character accordingly.
[9] Again, this is discussed in more detail below in connection with the Opponent’s s 60 ground.
As highlighted in Actuate IP’s submissions, the word “superman” common to the parties’ respective marks is in any event “a word with somewhat descriptive qualities” as far as the Services are concerned.[10] This, too, would reduce the risk of any significant confusion or deception amongst consumers in my view.
[10] This is discussed in more detail below in connection with the Opponent’s s 60 ground.
When all the foregoing matters are weighed up and when I consider the SUPERMAN & Device Mark and the Trade Mark as wholes and attempt to assess their likely effect or impression in the minds of relevant consumers, I am not satisfied deception or confusion amongst a significant number of people was likely as at the relevant date. I do not on balance believe there was a real tangible danger of a number of persons being left in doubt or caused to wonder whether the parties’ services dealt with under their respective trade marks came from the same source or otherwise enjoyed any relevant commercial relationship.
The Opponent has accordingly not established its s 44 ground of opposition based upon registration 612154.
Section 60
The ground based on s 60 is indicated in the Notice as follows:
use of [the Trade Mark] would be likely to deceive or cause confusion because of the reputation of another trade mark where such reputation was acquired in Australia before [the Priority Date].
Section 60 of the Act is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
In confirming the word “SUPERMAN” was the “other trade mark” which the Opponent claims had the relevant reputation in Australia as at the Priority Date, the Opponent’s written submissions state:
[Genkins 1] details the long history of the SUPERMAN character and trade mark. It shows that SUPERMAN is one of the most recognised superhero characters in the world, and is well known in Australia. Furthermore, it shows that the extensive promotional and merchandising activities undertaken by the Opponent in relation to the SUPERMAN trade mark and the SUPERMAN character have covered a diverse range of products and services. [Genkins 1] demonstrates that, at 2 June 2009 (the priority date), the Opponent had acquired a significant reputation in Australia in its SUPERMAN trade mark.
I agree with this assessment of the Opponent’s evidence. I am well satisfied the SUPERMAN character would be very familiar to most people in this country and that the various promotional and merchandising activities to which Genkins 1 attests would have garnered a significant reputation in Australia for the name SUPERMAN as a trade mark for relevant merchandise and entertainment services as at the Priority Date. The question remains however as to whether, in light of that reputation, use of the Trade Mark for the Services “would be likely to deceive or cause confusion”.
Before exploring that question I mention that I do not entirely agree with the Opponent’s submission that:
In section 60, the comparison is not limited to the notional use of the respective marks, but rather encompasses all the surrounding circumstances relating to the mark being opposed and to the marks, whether registered or not, on which the opposition is based, including actual use and reputation.
The submission alludes of course to the fact that, under s 44, the respective marks must be considered as being in “notional use” in relation to all of the goods or services covered by the application(s) or registration(s) under comparison, whether or not such use has actually taken place. Under s 60, however, it is the actual past use enjoyed by the mark(s) relied on by an opponent which matters and not any abstract concept of notional use.
Mr Bevan is accordingly right to say that in assessing the likelihood of deception or confusion due to the reputation of the Opponent’s SUPERMAN trade mark it is critical to consider how the Opponent’s mark has actually been used in the past and the nature of the reputation it has thereby achieved. In this regard, as mentioned earlier, the Opponent’s evidence indicates the reputation of the SUPERMAN trade mark is closely linked to the SUPERMAN character itself, as portrayed in comics, films and television over the years, and to other indicia with which the character is associated such as the character’s strength, the powers he possesses and the clothing he wears. Mr Bevan highlighted in particular what he referred to as “the S Shield Device” emblazoned on the character’s chest and cape, submitting that “The SUPERMAN name and trade mark and the S Shield Device are intrinsically connected to this universally well known and recognized superhero character”. A representation of the S Shield Device, (which in its own right is the subject of registrations owned by the Opponent), is shown below:
In the case of the Opponent’s trade mark, then, I agree with Mr Bevan that the concept of “notional use”, in the sense of how the Opponent might in principle use its SUPERMAN mark in future, is not relevant for s 60 purposes. What matters is the reputation its SUPERMAN trade mark enjoyed as at the Priority Date because of its actual use up to that time. Indeed, the fact that the Opponent’s evidence indicates its SUPERMAN mark has in the past almost invariably been used in close association with the other indicia mentioned above and is almost invariably rendered in the form is on the face of it relevant in assessing whether use of the unembellished words “superman workout” in relation to the Services is likely to deceive or cause confusion.
Where I disagree with the Opponent’s above quoted submission is the claim that consideration of “all the surrounding circumstances” pertaining to use of the Applicant’s trade mark should include consideration of matters beyond its notional use. Contrary to this submission, what needs to be considered for s 60 purposes is indeed “limited”, if such be the appropriate word, to the notional use the Applicant might fairly make of the Trade Mark. French J put it this way[11] in Woolworths at [45]:
The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
[11] In fact paraphrasing with approval the words of Kitto J in Southern Cross at 595.
The distinction is important because notional use of the Trade Mark assumes use by the Applicant in a “normal and fair manner”[12] in relation to the Services. In this regard Actuate IP’s submissions again referred to the High Court’s decision in Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65 (“Sym Choon”), where Latham CJ noted the contrast between an opposition to registration which alleged use of the trade mark in suit was “likely to deceive”[13] and a passing off action, saying at 71-72:
Fraud is not to be presumed and it is therefore necessary to consider what is likely to happen with the fair and honest user of the mark for the registration of which application is made, having regard to the circumstances in which it would be used.
…
It is proper, in determining whether registration should be granted, to consider the competing marks themselves, the manner in which they are applied or will probably be applied to goods, the character of those goods, the class of purchasers to whom the goods are sold and general trade practices affecting sales – but all upon the assumption that the trading of rival traders is honest. If the trading is not honest the law with respect to passing off provides a remedy. I agree with the Deputy Registrar that a trade mark application should not be determined in the same way as if it were a passing off action.
[12] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, at 101.
[13] Pursuant to s 114 of the Trade Marks Act 1905, corresponding in effect to s 60 of the Trade Marks Act 1995.
Why this distinction is particularly relevant in the present case is that Genkins 1 includes screenshots from the Applicant’s website at < as at 17 December 2009 which show the cover apparently then being used for Mr Gabrielle’s instructional video for his exercise program. This cover contains, in addition to the Trade Mark itself, a shield device essentially the same as the Opponent’s well known S Shield Device[15] but with the letters “BG” substituted for the letter “S”. While the Applicant’s use of the Trade Mark together with what I will call the “BG Shield Device” on its website and on the cover of the instructional video in question might be relevant to a passing off action[16], however, it is not something which I believe I can take into account as far as s 60 is concerned. Rather, I am here solely concerned with, as Latham CJ put it in Sym Choon, “what is likely to happen with the fair and honest user of the mark for the registration of which application is made”. In this regard, of course, neither does the Trade Mark as applied for include the BG Shield Device, nor do the Services include instructional videos.
[14] Annexure AG 24 to Genkins 1 indicates the Applicant is the registrant of the domain name, with Sam Gabrielle listed as the “administrative contact”.
[15] As shown in paragraph 42.
[16] I note in passing that to establish a claim in passing off it is not sufficient merely to show that the respondent has acted with an intention to mislead or deceive –see Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1988) 12 IPR 297 per Gummow J at 302-303 and the cases there discussed by his Honour.
With that in mind I turn to the question of whether, in light of the reputation of the Opponent’s SUPERMAN trade mark as at the Priority Date, use of the plain words “superman workout” as a trade mark in relation to “Conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)” would be likely to deceive or cause confusion. Briefly put, the Opponent submits I should so find because of the long history of the SUPERMAN character, its wide recognition amongst the Australian public generally, and the fact that over the years “the extensive promotional and merchandising activities undertaken by the Opponent in relation to the SUPERMAN trade mark and the SUPERMAN character have covered a diverse range of products and services”. As the Opponent’s written submissions put it:
The Australian consumer is well educated in the ever-more popular practice of the licensing of well-known trade marks, including those relating to fictional celebrities, for use on a wide and diverse range of goods and services. This practice has become common, and the Australian market has for many years been inundated with goods and services of all descriptions sold by reference to well-known trade marks and fictional celebrities, even if they were each initially associated with more limited uses and contexts.
This has long been recognised in Australian jurisprudence. Two examples in which cartoon characters featured were the 1937 High Court judgment in Radio Corp Pty Ltd v Disney (1937) 57 CLR 448 and the much more recent Office decision in United Artists Corporation v Trevor Clarke Holdings Pty Ltd (1998) 41 IPR 425 in which the Hearing Officer, Ms Helen Hardie, quoted Radio Corp:
The High Court there found that use of the trade mark MICKEY MOUSE was likely to suggest an association with Walt Disney. Dixon J explains the licences for using the "Mickey Mouse" concept. The licensing, he says: resulted in:
…a valuable source of revenue. An elaborate and extensive system of licensing has been set up. Under it manufacturers or traders pay for permission to use the names of the figures in connection with their goods. In Australia alone licences have been granted for all sorts and descriptions of goods produced by numbers of unconnected manufacturers. The articles bearing representation of or called by the names of Disney's conceptions have no characteristic in common. They go from canned soups to cotton undershirts and from bridge scorers to boys' braces.
… He says if a trader is to apply the name of a well known character such as Mickey Mouse to his or her goods:
it may be that in some vague way the buyer supposes that Disney must have sanctioned it.
This was in 1937. In 1998, with character merchandising now a prominent and common feature of the commercial world I would put this prospect rather higher.
Neither Radio Corp nor the United Artists case, (which concerned the well known PINK PANTHER cartoon character), are however directly analogous to the present opposition in my view. In both these cases the names of the characters concerned were apparently coined for their alliterative qualities and in neither case does the character’s name have any other wider significance in the English language. The SUPERMAN name is in a somewhat different category because the word “superman” has a meaning in English which pre-dates creation of the SUPERMAN character and which, in combination with the word “workout”, obviously alludes to the nature of the Services notwithstanding it may also call to mind the Opponent’s SUPERMAN character.
The words of Burchett J in Conde Nast Publications Pty Ltd v Virginia Taylor[17], when comparing the trade marks VOGUE and EUROVOGUE (for clothing), are apt in this regard:
At the same time, it should be borne in mind that ``vogue'’ is neither a made-up word nor a word wholly without any direct application, in the ordinary use of language, to the goods in question. A trader is not entitled to monopolise such a word, denying its use entirely to other traders. Deceptive or confusing use is barred by the applicant's registration, but the court should be careful not to shut out inappropriately other traders from the fair use of the language in ways that will not in reality deceive or confuse.
[17] (1998) 41 IPR 505 (at 511-12).
It has of course long been held that the likelihood of deception or confusion will to some extent be contingent on the inherent distinctiveness of the element(s) common to the marks under comparison. As Actuate IP put it:
In this regard, it should be kept in mind that the word “superman” has a degree of descriptiveness which would discount somewhat its significance in the overall impression given by [the Trade mark].
For his part, Mr Gabrielle says in his declaration[18]:
I note that the Opponent argues that “Kryptonite” and “Brainiac” (at paragraph 26 (sic)[19] of [Genkins 1] and Annexure AG 22) have passed into language in Australia. The same contention can be said about the word “Superman”, which I note, at its most basic, means “a person of extraordinary or superhuman powers”.
[18] Gabrielle, paragraph 40 and Exhibit SG-11.
[19] Paragraph 46 (not 26) of Genkins 1 states, “Some of the vernacular from the SUPERMAN character, such as ‘Kryptonite’ and ‘Brainic’ (sic), have passed into language in Australia; these words appear in the Macquarie Dictionary. Attached and marked Annexure AG 22 are extracts from this dictionary for these two words.” I note in passing that dictionary definitions for the word “superman” itself are not included or referred to in the Opponent’s evidence.
Mr Gabrielle exhibits at SG-11 definitions from the website <dictionary.com> in support of this contention. I note in this context that the Oxford English Dictionary (“the OED”), by way of further example, gives the following two entries for the word “superman”:
1.An ideal superior man conceived by Nietzsche as being evolved from the normal human type; loosely, a man of extraordinary power or ability; a superior being.
2.(With capital initial.) The name of an invincible hero with superhuman powers, including that of flight, introduced in an American comic strip (1938).
I mention that the same two definitions are given in the OED whether the word is spelled as “superman” or “super man” and that several occurrences of the word are cited from various works in English pre-dating the 1938 creation of the Opponent’s character of that name[20]. It is interesting to note that the OED differentiates between the spellings “superman” and “Superman”, although I confirm I have not considered this to be a relevant distinction in my reasoning in this case. In this regard I am proceeding on the understanding that a normal and fair use of the Trade Mark would on the face of it include the mark as rendered in any standard combination of upper and lower case letters. Indeed, the evidence indicates the Trade Mark has in the past appeared on the Applicant’s website in at least three forms, namely as “superman workout”, “Superman Workout” and “SUPERMAN WORKOUT”.
[20] The earliest usage in English literature is said to be that of George Bernard Shaw in his 1903 book “Man and Superman”, with Shaw apparently deriving the word from the German word “Übermensch” coined earlier by Friedrich Nietzsche.

The Macquarie Dictionary Online, for its part, provides the same three definitions shown below whether the word is spelled with an initial capital or not and whether spelled as one word or two. Interestingly, none of these definitions includes a reference to the Opponent’s SUPERMAN character at all and, indeed, a plural form for the word is indicated:
noun (plural supermen)
1. a man of more than human powers.
2. an ideal superior being conceived by Nietzsche as the product of human evolution, being in effect a ruthless egoist of superior strength, cunning, and force of will.
3. a man who prevails by virtue of such characteristics. [translation of German Übermensch]
Thus Mr Gabrielle’s statement quoted in paragraph 5 above that in adopting the Trade Mark his “intention was to convey to potential users of my exercise program the potential of changing yourself into a muscularly powerful athletic superman” is not on the face of it implausible even if, as Mr Bevan essentially argued, it might also be characterized as somewhat disingenuous.
That said, there is evidence before me that the phrases “superman exercise”, “superman position” and even “superman workout” as a whole have some descriptive significance in the field of fitness and exercise classes and (notwithstanding Mr Gabrielle’s below quoted view) this does appear to relate specifically to the Opponent’s SUPERMAN character. In particular, Mr Gabrielle himself volunteers that:
I note that within the health and fitness industry, the phrase “SUPERMAN” is a known and commonly used term as it relates to a set of core and back strengthening exercises.
In support of this statement Mr Gabrielle exhibits at SG-01 “an extract from a search conducted on the Google search engine on the phrase ‘superman exercise’” which returned some 1,150,000 results and he “note[s] that none of the most popular links returned by the Google search engine reference or even concern the Opponent’s comic book hero”. He likewise exhibits at SG-02 an extract from a Google® search on the words “superman workout” themselves and makes the same observation.
Ms Genkins responded to this in Genkins 2, stating that it would be further addressed in the declaration of Matthew Lee Crowe. She continued:
There is an exercise routine that is commonly called the “Superman” exercise because, when performed, the exerciser adopts positions that are similar to the position of the SUPERMAN character when flying. This use illustrates the mythos that has developed around the SUPERMAN mark and character. Use of “Superman” in this way connotes [the Opponent’s] SUPERMAN character.
Matthew Crowe, a qualified fitness instructor with extensive involvement in the fitness industry since 1989, is Managing Director of a company which operates a health club and spa within a major hotel in the Sydney CBD. He confirms being aware of “an exercise that is called ‘Superman’” and says that it “has been practiced for many years”. He annexes extracts from several websites[21] showing the movements the exercise involves and explains that:
The movement when performed looks similar to the posture of the “Superman” comic book character when flying; hence the name of the exercise. The exercise is described at the website at as follows: - “Extend the entire upper body, arms straight out extending above your head (like superman) keeping your legs tense”.
Several exercises adopt names that are descriptive of the exercise movements to help non-professional exercisers remember how to do the exercise. Other examples of which I am aware include “Bird Dog”, “Praying Mantis” and “Wheelbarrow”.
[21] None of which, on the face of it, enjoys any relationship with the Opponent.
It thus seems the word “superman” might be seen as somewhat descriptive of the Services on two levels, the first in terms of the word’s primary dictionary meaning and the second dependant upon familiarity with the Opponent’s SUPERMAN character. Based both on the evidence before me and upon my own general knowledge I have no doubt that a substantial number of potential consumers of the Services would be likely to recognize the allusion to the Opponent’s SUPERMAN character implicit in the Trade Mark, whether in relation to the specific back strengthening exercise described above or more generally. Nevertheless, I remain unconvinced that a significant number of such consumers would, to paraphrase Kitto J in Southern Cross[22], be caused to wonder whether the Services were in fact being provided by the Opponent, or otherwise enjoyed the Opponent’s licence or explicit approval, given, inter alia, the primary dictionary meaning of the word “superman”.
[22] Op cit. at 594
That is to say, merely alluding to a consumer’s knowledge in this way does not of itself necessarily mean the consumer is likely to be confused or deceived in the sense understood by s 60 of the Act.[23] Indeed, Ms Genkins herself notes that: [24]
The SUPERMAN’s (sic) character, impact and role in the world has been explored by numerous cultural theorists, commentators and critics over the years.
and that:
Over the years there have been numerous musical references, parodies and homage paid to the SUPERMAN character.
Ms Genkins mentions these have included, inter alia, works by musicians and groups including Donovan, Genesis, the Kinks, the Clique, R.E.M. and Crash Test Dummies. There is however no suggestion in the evidence that any of these parties has the Opponent’s explicit blessing or licence to reference the SUPERMAN character.
[23] Or, as discussed below, in the sense understood by s 43.
[24] Genkins 1, paragraphs 43 and 44.
Although a case concerning passing off and misleading and deceptive conduct under the (now repealed) Trade Practices Act 1974, I have found the Federal Court’s decision in McIlhenny Company v Blue Yonder Holdings Pty Ltd (formerly t/as Tabasco Design) (1997) 39 IPR 187 (“McIlhenny”) instructive in this regard. McIlhenny was the owner of the very well known TABASCO trade mark, which it had used for its pepper sauce since 1868. Blue Yonder’s relevant business was the design and construction of exhibition stands. McIlhenny sought to restrain Blue Yonder from, as Lehane J put it at 188, “using the mark TABASCO in connection with their business and from passing their business off as, or representing that services which they provide are, connected with, sponsored or approved by [McIlhenny]”. Blue Yonder’s general manager conceded he was well aware of McIlhenny’s trade mark and indeed that the business had deliberately adopted it to suggest to the relevant market that Blue Yonder’s exhibition stands were, like McIlhenny’s pepper sauce, “hot”. Blue Yonder had even published an advertisement covered with red blobs, (which Lehane J characterized as “obviously of sauce”), and bearing the words “Tabasco. Lousy on your tie, great on your exhibit” and “Talk to the hottest design team in town…”
Lehane J was satisfied on the evidence before him “that in the mind of the Australian consuming public ‘Tabasco’ is associated with one thing only, the applicant's pepper sauce.” He accepted that TABASCO was therefore “an exceptionally strong brand” and that the longstanding, exclusive use the (inherently distinctive) mark had enjoyed for McIlhenny’s particular, hot, spicy sauce meant that “its capacity for brand extension was virtually unlimited”. Nevertheless, after reviewing many of the leading decisions in this area, his Honour thought the services provided by Blue Yonder were such that persons in its target market would conclude that “without any association or permission the designer has — as the fact is — perhaps cheekily used a name which, by reference to its only other known use, conjures up ‘hot’ associations”.[25] He accordingly rejected McIlhenny’s application for relief.
[25] (1997) 39 IPR 187 at 195 to 199.
Unlike the trade mark TABASCO the word “superman” in fact does, as already discussed, have another “known use” beyond merely conjuring up thoughts of the Opponent’s well known character, namely use with its primary dictionary meaning. Indeed, use with this sense is on the face of it reasonably apt in relation to the Services.
That said, like the position in McIlhenny (and notwithstanding one might at first blush think otherwise), the Services themselves are in my view rather different from the kind of services which one would usually expect to be provided by, or subject to the sponsorship or license of, an entity such as the Opponent. In this regard I am mindful that Ms Genkins described the Opponent as “one of the largest and most diverse publishers of comics and comic related products in the world today”. While, as Genkins 1 documents and Mr Bevan highlighted, licensed use of the Opponent’s SUPERMAN trade mark has over the years “covered a diverse range of products and services”, Mr Bevan readily conceded there is no evidence that the Opponent has itself ever conducted exercise classes or operated fitness clinics or health clubs, or licensed or had plans to license others to do so. Nor am I aware of any like character merchandising activities by others which has extended to these fields.
As regards the actual use or licensed use of the SUPERMAN character to date, as mentioned earlier Ms Genkins states in paragraph 10 of Genkins 1 that:
The SUPERMAN character was the first superhero to have its own regular comic book title. The character has subsequently appeared in newspaper comic strips, a radio series, animated cartoon series, a hardcover novel, live action movie serials, television series, Broadway musical entitled “It’s a bird…it’s a plane…it’s SUPERMAN”, motion pictures and computer and video games. It has also been licensed in relation to a wide array of products and merchandise.
Based on the evidence as a whole I do not doubt that the SUPERMAN character has been licensed in relation to a wide array of products and merchandise. It must be said, nonetheless, that use of the word “superman” per se as a trade mark in Australia for specific goods or services is somewhat difficult to pin down. This is because the information Ms Genkins provides regarding such use is in relation to “the SUPERMAN Marks” collectively, defined in paragraph 15 of Genkins 1 as follows:
In Australia [the Opponent] is the owner of a number of registered marks including the word SUPERMAN and, amongst others, the following device marks:
(“SUPERMAN & Superman Device”)
(“S in Shield Logo”)
(collectively known as the “SUPERMAN Marks”). The earliest of these registrations dates back to 1946. Attached and marked AG5 are current extracts from the Australian Trade Marks Register of [the Opponent’s] registered Australian trade marks.[26]
[26] Of the 13 registrations extracted only six are for marks containing the word “superman” and of these six only one is for the word alone, being registration 311198 SUPERMAN covering ice cream and ice confections in Class 30. In three of the six registrations the word is stylised in the form .
Ms Genkins then goes on to say in paragraph 28 that:
The SUPERMAN Marks were first used in Australia in the early 1940s in relation to comic books. Since then these marks have been used continuously throughout Australia in relation to entertainment services and goods falling under the broad categories publications, motion pictures, home videos, and licensed products. Details of this use in Australia in relation to these broad categories are provided in paragraphs 29 to 40 below.
The figures provided for sales in Australia of printed publications, motion picture revenues and sales of home videos (or DVDs) which feature “the SUPERMAN Marks” do appear significant. Beyond these entertainment services and directly associated goods other merchandise licensed for sale in Australia appears to have extended to what might be characterized as the usual range of goods for a fictional character of this kind. Annexure AG 18 to Genkins 1 provides gross licensing revenues for this merchandise in Australia for the years 2000 to 2009, with the goods in question essentially falling within the following categories:
·Apparel (including clothing, footwear, headgear, costumes, swimwear and sleepwear);
·“Accessories” (including, I understand, such things as jewellery, watches, belts, purses, wallets, sunglasses, spectacle cases and the like);
·Games, playthings, and crafts (such things as board games, computer games, coin-operated video and pinball games; playing and trading cards, toys and dolls, costume make-up, craft kits and sewing patterns);
·Stationery and paper goods (including calendars, balloons and party goods);
·Food and beverages (such things as confectionery, chocolate and chocolate eggs, cereals, cereal bars, biscuits and snacks);
·Housewares, domestics and linens (such as bedspreads, bean bags, cups and plates, teapots and kettles);
·Consumer electronics devices and peripherals (including mobile phone cases);
·Automotive products (including bicycle and car accessories);
·Pet products and accessories;
·Bags and luggage (such as carrying cases and containers, tote bags of various kinds, backpacks and handbags);
·Souvenir items (such as magnets and money boxes); and
·“Sporting Goods” (which are not further specified as far as Australia is concerned).
On the face of it none of these goods has any particularly close connection to the Services, with the possible exception of sporting goods. In this regard paragraph 25 of Genkins 1 states:
The Superman Marks have been licensed for sporting goods and in particular fitness equipment including elliptical trainers, aerobic steppers, step trainers, rowers, home gyms, treadmills, trampolines, jumping balls and dumbbells. Annexed and marked Annexure AG 11A are illustrations of the fitness equipment licensed to Wiseport ApS in Denmark bearing the SUPERMAN Mark.
That said, there is no suggestion any sporting goods of this kind have been sold in Australia. Indeed my understanding from the totality of the evidence before me is that as far as Australia is concerned the general description “sporting goods” refers to items such as sports bags and athletic shoes or clothing rather than, say, the kind of equipment one might expect to find in a health club or fitness clinic. Moreover Annexure AG 18 to Genkins 1 indicates the total gross licensing revenue in Australia for “sporting goods” for the years 2000 to 2009 inclusive was only US$7,789 in any event and that this modest amount was raised in the single year 2005.
Apart from motion picture revenues and use under licence in relation to a “Superman Escapes” attraction at Warner Bros Movie World on the Gold Coast, the only revenue generated from the supply of services in Australia in connection with the SUPERMAN character appears limited to various (unspecified) “promotions”. Presumably these would be promotions aimed at children by third parties in respect of those parties’ goods but, be that as it may, the revenue generated for the years 2000 to 2009 as indicated in Annexure 18 to Genkins 1 is in any event quite modest.
There is accordingly merit in Actuate IP’s submission that:
The Opponent’s [s 60] argument fails to recognise that Australian jurisprudence considers the likelihood of confusion arising from such brand extension to be minimal where there is a lack of evidence establishing any history of promotion in the same field of activity as the Applicant. See, for example, Virgin Enterprises Limited v Alan Raymond Bowes [2000] ATMO 74 (22 July 2000), where a known supplier of entertainment goods and services failed to establish any extension of its brand into domestic or commercial cleaning services which were the subject of the mark sought to be registered.
In summary, the evidence indicates that the reputation the word “superman” had acquired as a trade mark in Australia as at the Priority Date is closely bound up with a combination of a particular, stylised manner of representation, (namely ), and its use together with other indicia associated with the SUPERMAN character. Moreover, given the differences between the Services and the more or less “conventional” range of goods and services for which the Opponent has actually used (or might be expected to use) the word “superman” as a trade mark in Australia, I do not think it likely a significant number of consumers of the Services would be caused to wonder about any commercial connection between the Applicant and the Opponent. While the presence of the word “superman” in the Trade Mark might for many such consumers call to mind the Opponent’s SUPERMAN character, it nevertheless remains a word with independent significance as far as the Services are concerned. To paraphrase Lehane J in McIlhenny, I accept some people might conclude that “without any association or permission [the Applicant] has…perhaps cheekily used” the word “superman” and that the Applicant was most likely aware use of the word might conjure up thoughts of the well known SUPERMAN character. However, I am not satisfied use of the Trade Mark for any of the Services would be likely to deceive, or cause relevant confusion amongst, a significant number of Australian consumers.
The Opponent has accordingly not established its ground of opposition under s 60.
Section 43
The ground based on s 43 of the Act is indicated in the Notice as follows:
use of the [Trade Mark] in relation to the specified goods/services would be likely to deceive or cause confusion.
Section 43 is reproduced below:
Trade mark likely to deceive or cause confusion
43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Both parties’ submissions were in agreement that, as it was put in the Opponent’s submissions:
The approach taken to Section 43 in an opposition has been authoritatively pronounced in TGI Friday's Australia Pty Ltd v TGI Friday's Inc (2000) 100 FCR 358[27] at [43]: the deception or confusion must arise from a connotation of the mark.
[27] Also reported as (2000) 48 IPR 513.
There is a significant line of authority indicating s 43 might be invoked where, as Giles J put it in Pfizer Products Inc v Karam[28], the connotation contained within the trade mark is “an implication of sponsorship or association”. Such, as I understand it, is the case the Opponent seeks to make out here. In this regard the Opponent’s further written submissions in relation to its s 43 ground are set out in full below:
According to Hearing Officer, Mr Iain Thompson, in Opposition by Hasbro, Inc to registration of trade mark 937827 LIVE-OPOLY filed in the name of Imagination Holdings Pty Ltd at paragraph 45:
a sign contained within a trade mark might contain a deceptive or confusing connotation if it resembles something so ubiquitous, longstanding or notorious that it has entered Australian parlance or is shown to have become accepted generally in Australia as connoting a particular meaning whether or not that particular sign has trade mark significance.
In the present case, Genkins First Declaration shows that the iconic SUPERMAN character has achieved a secondary meaning or notoriety with the Australian public, (See for example entries into the Macquarie Dictionary for the words "brainiac" and "kryptonite" which refer to the Opponent's SUPERMAN cartoons attached in exhibits AG-22 of Genkins First Declaration) such that use of the SUPERMAN mark would give rise to that connotation and its use in relation to the services in the application would for that reason be likely to deceive or cause confusion.
The Opponent submits the ground under section 43 is also made out.
[28] (2006) 70 IPR 599 at [55]. See also Durkan v Twentieth Century Fox Film Corp (2000) 47 IPR 651 (BRAVEHEART THE MUSICAL), Amalgamated Television Services Pty Ltd v Pickard (1999) 48 IPR 133 (SUMMER BAY), Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207 (HOME & AWAY), McCorquodale v Masterson (2004) 63 IPR 582 (DIANA’S LEGACY & Device) and Marc Chagall Committee v Elite Wines & Spirits (2007) 73 IPR 552 (MARC CHAGALL).

For the reasons discussed earlier in connection with the Opponent’s s 60 ground of opposition, I accept that for many potential consumers of the Services the presence of the word “superman” in the Trade Mark would quite likely call to mind, or “connote”, the Opponent’s SUPERMAN character in addition to its primary dictionary meaning. For essentially the same reasons canvassed earlier, however, I do not think it likely this connotation would deceive or confuse such consumers as to the existence of any formal or commercial relationship between the Applicant and the Opponent.
In McCorquodale v Masterson (2004) 63 IPR 582 Kenny J noted at [26] that:
In order for s 43 to apply, the court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations: see, for example, the discussion in Down to Earth (Victoria) Co-operative Society Ltd v Schmidt (1998) 41 IPR 632 at 644–5.
In the present case, as previously noted, one would not generally expect “brand extension” of the SUPERMAN character to encompass activities such as exercise classes, fitness clinics, health clubs or similar. There is no evidence before me of any past association or licensing of the SUPERMAN character, name or trade mark in relation to services such as these and, on the face of it, the Services do not to my mind seem particularly well suited for promotion by reference to a fictional character. Unlike the case with names of characters such as the PINK PANTHER or MICKEY MOUSE, the element SUPERMAN in the Trade Mark is an ordinary dictionary word with a known or obvious meaning which is not inappropriate as far as the Services are concerned. Moreover, as with the Opponent’s s 44 and s 60 grounds, I am obliged “to consider what is likely to happen with the fair and honest user of the [Trade Mark]”[29] as applied for, rather than hypothetical use alongside other indicia closely associated with the Opponent’s SUPERMAN character.
[29] Sym Choon & Co Ltd v Gordon Choons Nuts Ltd (1949) 80 CLR 65 at 71.
Taking these matters into account, I am not satisfied on the evidence before me that a significant number of potential consumers would be deceived as to there being some relevant connection between the Services bearing the Trade Mark and the Opponent’s SUPERMAN character. Nor do I think a significant number of consumers would be confused, in the sense of being caused to wonder, about whether the Services enjoyed the Opponent’s formal sponsorship, licence or approval.
I accordingly find the Opponent has not established its s 43 ground of opposition.
Section 62A
The ground based on s 62A of the Act is indicated in the Notice as follows:
the opposed application was made in bad faith.
These words echo those of s 62A itself, which is reproduced below:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Mr Bevan firstly noted that s 62A had not been authoritatively construed by the Australian courts but that some guidance might be found in a decision in 2004 by the England and Wales Court of Appeal (“Harrison”)[30] and in two more recent Australian decisions handed down by IP Australia, “HardCoffee”[31] and “BombalaCouncil”[32].
[30] Harrison v Teton Valley Trading Co [2004] EWCA Civ 1028; (2005) FSR 10, which related to s 3(6) of the Trade Marks Act 1994 (UK). Section 3(6) says that “A trade mark shall not be registered if or to the extent that the application is made in bad faith”.
[31] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26.
[32] Bombala Council v Wilkshire (2009) 82 IPR 325.
As it happens, a decision of the Federal Court which did consider s 62A in some detail issued on the day of the hearing itself. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 (13 February 2012) (“Fry”) Dodds-Streeton J examined several English and Australian decisions (including Harrison, HardCoffee and BombalaCouncil) which have dealt with either s 62A itself or with its equivalent under s 3(6) of the Trade Marks Act 1994 (UK). Her principal conclusions, (which were essentially consistent with those distilled by Mr Bevan in his submissions before me), were that:
·“While the seriousness of an allegation of bad faith that ‘impugns the character of an individual or collective character of a business...’ requires correspondingly cogent evidence (statement of the Hearing Officer [at first instance] in Maslyukov v Diageo Distilling Ltd [2010] EWHC 443 (‘Maslyukov’), quoted with approval by Arnold J at [36] and [37]), the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.” (at [145]);
·“The examples of bad faith applications in the Explanatory Memorandum[33] are predominantly, but not exclusively, manifestations of blocking or holding to ransom the party which is, at least in conscience, entitled to a mark, but the illustrations in the Explanatory Memorandum are merely inclusive and do not limit the breadth of the concept of bad faith.” (at [163]);
·“Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.” (at [164]); and
·“The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.” (at [165]);
[33] The Explanatory Memorandum to the Trade Marks Amendment Act 2006, (which introduced s 62A), gave as examples “a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they license or buy the trade mark; a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.”
On this last point, Dodds-Streeton J had earlier noted (at [147]) that in Harrison:
Sir William Aldous rejected the appellant’s contentions that bad faith required dishonesty (at [20]) and that an applicant’s subjective state of mind was the sole consideration (at [24]). His Lordship stated that “bad faith” in this context was a “combined test” that involved both subjective and objective elements. His Lordship referred to the leading speech of Lord Hutton in Twinsectra Ltd v Yardley [2002] UKHL 12 at [27] and [36], a case involving dishonesty on the part of a solicitor, and stated at [24]-[26]:
24.      Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton “the Robin Hood test”. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
25.      Lord Hutton went on to conclude that the true test for dishonesty was the combined test. He said:
36. … Therefore I consider … that your Lordships should state that dishonesty requires knowledge by the defendant that what he was doing would be regarded as dishonest by honest people, although he should not escape a finding of dishonesty because he sets his own standards of honesty and does not regard as dishonest what he knows would offend the normally accepted standards of honest conduct.
26.      For my part, I would accept the reasoning of Lord Hutton as applying to considerations of bad faith. The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
In the matter before me the Opponent has essentially argued that Mr Gabrielle’s knowledge as at the Priority Date was such that the Applicant would have been aware or that “a reasonable person standing in the shoes of the [A]pplicant would have been aware that [it] ought not apply for trade mark registration.”[34]
[34] BombalaCouncil at [37], paraphrasing the words of the Hearing Officer in HardCoffee at [11].
The Opponent’s written submissions in this regard were (with footnote omitted) that:
In the present case, Genkins’ First and Second Declaration[s] show that:
(a) the SUPERMAN mark and character as well as the S Shield Device have been so widely used in Australia and worldwide that it is almost impossible to suggest that an adult person does not know or has not heard of them;
(b) the Applicant was using the opposed mark on a DVD[35] and on its website together with a device of a shield containing the initials BG (the BG Shield Device); and
(c) the BG Shield Device closely resembles the S Shield Device used by the Opponent in connection with the SUPERMAN trade mark and character.
In the evidence in answer the Applicant can not deny that he was aware of the SUPERMAN superhero character as at the date that he chose his SUPERMAN WORKOUT trade mark. In fact, he intended by the use of this mark to convey to potential users of his services, "the idea of changing yourself into a muscularly powerful athletic superman" (emphasis added).
This clearly demonstrates that the Applicant wanted to link his services and exercising routine to the physical characteristics of the Opponent's SUPERMAN character, which are well known and recognised worldwide.
In fact, as set out in [the] Crowe Declaration, there is an upper body set of exercises known as "Superman", named after the Opponent's SUPERMAN character because these exercises imitate the well-known flying positions commonly adopted by the Opponent's character SUPERMAN.
We further note that the Applicant was unable to explain the reasons behind the adoption of the BG Shield Device used on the cover of its DVD and on its website. The only reasonable explanation for the Applicant's adoption of the opposed mark and the BG Shield Device was to suggest a relationship between his services and the Opponent's SUPERMAN character.
We submit that the Applicant had full knowledge of the Opponent's SUPERMAN mark and, applied for the opposed mark with an intention to link his services to the Opponent's SUPERMAN character. We further submit that a reasonable person, standing in the shoes of the Applicant, would have been aware that he/she ought not to apply for the registration of a mark which incorporates as its distinctive and substantial feature, the name of a well-known hero cartoon character owned by a third party.
[35] “DVD” in this context refers to the “instructional videos” discussed earlier in this decision which were produced by Mr Gabrielle and sold through the Applicant’s website.
The Applicant, for its part, does not at any point in its evidence or submissions deny being aware of the SUPERMAN character. (That said, I disagree with the above quoted submission that Mr Gabrielle’s use of the words “…the idea of changing yourself into a muscularly powerful athletic superman” is relevant to the issue; indeed, this strikes me as an obvious and reasonable use of the word “superman” with its primary dictionary meaning.)
I have already mentioned that Mr Gabrielle was the first to raise in evidence that there is a back strengthening exercise which is commonly described in the health and fitness industry by reference to the “superman position”. Moreover Mr Gabrielle expressly notes that (with my emphasis added):[36]
It is clear from Annexure AG-4 of the Genkins Declaration that the Opponent strictly regulates the image and stylisation of its comic book character and the phrase “SUPERMAN”. In my view this would be common knowledge and a further reason why the Applicant’s use of the SUPERMAN WORKOUT trade mark would not cause confusion. The specific and high level of control evidenced by Annexure AG-4 which the Opponent exerts over its comic book character and stylisation of the word “SUPERMAN” means it is unlikely for any reasonable person viewing the Applicant’s SUPERMAN WORKOUT trade mark to be confused or deceived.
[36] Gabrielle, paragraph 28.
Annexure AG-4 to Genkins 1 consists of three US copyright registration certificates, being registrations for “Style Guides” for the years 1993, 1994 and 2001. I note that the SUPERMAN trade mark is rendered in the form on all three certificates. The purpose of the Style Guides themselves is apparently to inform licensees as to the manner in which the SUPERMAN trade mark (and the other indicia associated with the SUPERMAN character such as the S Shield Device) are to be used on licensed merchandise. In this regard each Style Guide bears instructions such as:
This logo should be used on all packaging and as the official hangtag. It may also be used as a design element on products. Color transparencies of these logos will be sent automatically to each style guide recipient from [the Opponent] or [Warner Brothers Consumer Products].
In its submissions Actuate IP concedes that, “It is clear from the evidence … that the Opponent has developed a substantial reputation in its comic book character”, but nevertheless emphasises that:
·“[The evidence shows] that the Opponent’s use of the word mark ‘SUPERMAN’ invariably occurs within the context of its comic book character” and “is rarely used to indicate any association between the Opponent and its goods/services other than through its comic book character”;
·“While there is likely to be potential overlap in the likely class of persons observing both the SUPERMAN WORKOUT trade mark and the Opponent’s marks (including its comic book character), it is highly unlikely that any risk of confusion would arise because of the Opponent’s reputation for its comic book character and related merchandising products”;
·“…the Opponent has failed to establish any pre-existing reputation for its trade marks in the fitness industry in Australia. Any use therefore by the Applicant of its SUPERMAN WORKOUT trade mark to promote its claimed services is unlikely to cause any audience to wonder about the origin of those services, let alone deceive a consumer who is aware of both the Opponent’s products and the Applicant’s services”;
·“Contrary to the Opponent’s assertions, the Applicant’s use of the word ‘SUPERMAN’ in conjunction with the word ‘WORKOUT’ is not to connote nor allude to the Opponent’s comic book character. The intention…is to associate the Applicant’s fitness regime which produces what could be considered extraordinary or superhuman…results” (sic). (Reference is then made to the dictionary definitions of the word “superman” shown in Gabrielle, Exhibit SG-11 and to Mr Gabrielle’s statement that in choosing the Trade Mark his “intention was to convey to potential users of my exercise program the potential of changing yourself into a muscularly powerful athletic superman” and that it was not “to associate my exercise program with the Opponent’s comic book character”.); and
·“It is clear that the Applicant did not adopt this name for its goods and services to be confused with the Opponent’s marks, but for its inherent adaptiveness (sic) to distinguish the Applicant’s services from the goods and services of the Opponent by alluding to the ‘extraordinary’ or ‘superhuman’ results which could be obtained.”
From at least the subjective point of view, then, I see little reason to question Mr Gabrielle’s claims at paragraphs 14 and 15 of his declaration that:
I did not at the time, and still do not now, understand how my use or the Applicant’s use of the SUPERMAN WORKOUT trade mark can be the cause of deception or confusion with the Opponent’s own trade marks as my use and the Applicant’s use of that trade mark has always been associated with me. Anyone viewing the Applicant’s website will immediately come to understand that the SUPERMAN WORKOUT trade mark relates to me. The SUPERMAN WORKOUT website does not even mention or reference the Opponent.
…
It is my strong belief that anyone viewing the SUPERMAN WORKOUT website would not associate the use of the word “SUPERMAN” with the Opponent’s comic book character. In fact, in my view, because the SUPERMAN WORKOUT website focuses on discussing the “Superman Workout” exercise program and my health and fitness background, viewers of the SUPERMAN WORKOUT website are more likely to associate the SUPERMAN WORKOUT trade mark with the Applicant, myself and my exercise program, rather than any association with the Opponent or the comic book character.
As regards the Opponent’s contention that “the Applicant was unable to explain the reasons behind the adoption of the BG Shield Device used on the cover of its DVD and on its website”, it is certainly the case that the Gabrielle declaration does not address this issue. Moreover, Ms Genkins notes in Genkins 2 that the Device “was removed from the [Applicant’s] website at some time after receipt by the Applicant of [a cease and desist letter dated 17 December 2009 from the Opponent’s attorneys]”. As mentioned above, the Opponent’s submission was that in these circumstances, “The only reasonable explanation for the Applicant’s adoption of the opposed mark and the BG Shield Device was to suggest a relationship between his (sic) services and the Opponent's SUPERMAN character”. Mr Bevan further submitted that the (unexplained) removal of the BG Shield Device from the Applicant’s website some time after December 2009 reinforced an inference of bad faith on the Applicant’s part at the time it applied to register the Trade Mark in June 2009.
I am satisfied the similarity of the BG Shield Device to the Opponent’s well known S Shield Device was not coincidental. I am satisfied, moreover, that its use together with the Trade Mark on the cover of Mr Gabrielle’s DVD and on the Applicant’s website was intended to strengthen an allusion to the Opponent’s SUPERMAN character that the element SUPERMAN contained in the Trade Mark already carried. However, I do not think this leads to the conclusion that the application to register superman workout for the Services was made in bad faith. I am not at all persuaded that the “apt touchstone” referred to by Dodds-Streeton J in Fry is met, namely that applying to register the Trade Mark “[fell] short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons”.
While every case must be considered on its own facts, there are certainly many decisions where obvious (or even deliberate) use of, or allusion to, a well known trade mark has been considered unobjectionable. I have already discussed the McIlhenny case concerning the well known TABASCO trade mark, but there are several other similar cases[37] as well as cases involving “parodies” of well known marks[38]. It is true that these cases were in the main decided on the basis that deception or confusion amongst relevant consumers was unlikely and without specific consideration of the applicant’s good or bad faith per se. They do nevertheless provide some guidance, I believe, as to what might be considered acceptable in terms of s 62A of the Act, particularly where the goods or services applied for are somewhat removed from those for which the earlier mark is known or is likely to be used as is the case in the present opposition.
[37] See for example McWilliam’s Wines Pty Ltd v McDonald’s System of Australia (1980) 33 ALR 394; 49 FLR 455 (BIG MAC), Subafilms Ltd v Tenancy Management Pty Ltd (2006) 68 IPR 196 (YELLOW SUBMARINE) and Turner Entertainment Company v Yo-Merry Todd (2007) 73 IPR 396 (THE WIZARD OF OZ).
[38] See for example Intermatch Sweden AB v Dick Smith Investments Pty Ltd (2003) 56 IPR 575 (DICKHEADS & Device).

100. What I think is apparent from the decision in Fry is that in the absence of any pre-existing licence agreement between the parties “or a prior relationship which imposed obligations of a fiduciary or quasi-fiduciary character”[39] a high bar has been set for an opponent to establish a breach of s 62A. Indeed, while the facts of the present opposition are not directly analogous to those in Fry, it is noteworthy that Dodds-Streeton J considered s 62A had not been made out in the case before her and it is instructive, I believe, to consider the actions of the Applicant in light of the applicant’s actions in Fry.
[39] Fry, per Dodds-Streeton J at [168].
101. In Fry the trade mark applicant’s sole director, Mr Fry, had decided to commence an online business selling tennis products. He conducted Google® searches which revealed the opponent’s website at < from which the opponent operated an essentially identical online business offering tennis products under the banner “TENNIS WAREHOUSE”. As her Honour further explains at [18] to [21], Mr Fry:
[18]…conceded he thought of the name “Tennis Warehouse” after visiting the Tennis Warehouse website during the course of his Google searches, which he probably had not selected previously. He subsequently, in early September 2004, registered the business name “Tennis Warehouse” and the domain name “tenniswarehouse.com.au”. Mr Fry also incorporated Fry Consulting in early September 2004 for the purpose of running the online retail tennis gear store.
[19] Mr Fry acknowledged that nothing on the Tennis Warehouse website indicated that its online sales were restricted to the United States of America and indeed, he knew that the website made sales to Australia, as a friend had purchased some racquets. Mr Fry agreed that he used some photographs from the Tennis Warehouse website in preparing the Fry Consulting website.
[20] Mr Fry testified that his wife conducted a trade mark search and informed him that Tennis Warehouse was not an “international” trade mark.
[21] Mr Fry conceded that he knew that there was potential that some people would confuse the websites (at least at the point of the domain name) and acknowledged that he chose the name partly for that reason, but denied that he hoped to use Sports Warehouse’s reputation in order to boost early sales. He also denied that he believed the name TENNIS WAREHOUSE would cause customers aware of Sports Warehouse’s website to think that the Fry Consulting website was an arm or affiliate of Sports Warehouse.

102. The opponent’s President, Mr Hightower, emailed Mr Fry on 21 December 2004 stating that the opponent had a “worldwide trademark on the name Tennis Warehouse” and requesting he cease using its “trademarked name” by operating a business with the name Tennis Warehouse via the website at < Mr Fry responded the next day saying, effectively, that since his business was run from a storage facility rather than a shop he considered the words “tennis warehouse” to be generic, but that if Mr Hightower could “provide me with some evidence that you have a world wide trademark…I will gladly trade under a different name”. Mr Fry added that he was “only interested in selling to Australia” and was in any event intending “to change the heading at the top of the page from ‘Tennis Warehouse’ to ‘Tennis Warehouse Australia’.” (Mr Fry did change the name to “Tennis Warehouse Australia” some days later, although Dodds-Streeton J noted that in related proceedings between the parties Kenny J had found that “the email correspondence from Mr Hightower led Mr Fry to change the name” and that she (Kenny J) “did not accept Mr Fry’s evidence that the email exchange with Mr Hightower merely accelerated a change he had always intended to make”.)
103. Mr Hightower responded the following day (23 December 2004), saying he would gather the requested information as to his company’s trade mark rights in Australia and provide this “after the New Year”. Not having heard anything further, however, Mr Fry had his company file an application to register the trade mark Tennis Warehouse Australia in July 2005 (which application subsequently lapsed for want of distinctiveness) and, in December 2006, an application for TENNIS WAREHOUSE AUSTRALIA & Device (which was eventually accepted for registration). It was with Mr Hightower’s company’s opposition to this latter application, and in particular the claim that the opposed application was made in bad faith, which fell to Dodds-Streeton J to decide.
104. Her Honour considered “Mr Fry’s conduct was exploitative and designed to acquire a springboard or advantage for his fledgling business”[40] and she noted Kenny J had found the applicant’s use of the relevant trade mark “did not evidence use ‘actuated only by proper motives’”.[41] Dodds-Streeton J nevertheless held s 62A was not made out given the exchange of emails between the parties in December 2004, the fact that the opponent did not follow up that correspondence with “any documentation or evidence of its entitlement or rights to the ‘TENNIS WAREHOUSE’ mark”[42], the fact that “Mr Fry did not acknowledge [the opponent’s] ownership or rights in Australia”[43] and apparently had a genuine (albeit somewhat misconceived) belief in his company’s entitlement to the mark, and the fact that the opponent’s own application to register the plain words “TENNIS WAREHOUSE”[44] had been refused registration in 2010 for want of capacity to distinguish the Class 35 services it covered.
[40] Fry, per Dodds-Streeton J at [170].
[41] Ibid at [171].
[42] Ibid at [174].
[43] Ibid at [174].
[44] Which application enjoyed an earlier priority date than either of Mr Fry’s company’s applications.
105. More generally, the rationale behind Dodds-Streeton J’s decision appears to have been based on the conclusion she summarised at [166] after having reviewed the various UK and Australian precedents which had considered bad faith, namely:
…in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character

106. On any view of the Applicant’s conduct in the present matter I do not believe the making of its application to register the plain English words “superman workout” as a trade mark for the Services could reasonably be said to be of an unscrupulous, underhand or unconscientious character. I accordingly find that the Opponent has not established its ground under s 62A.
Decision
107. Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, the Registrar
must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then
specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.

108. I have found the Opponent has not established any of the grounds it raised pursuant to ss 43, 44, 60 or 62A of the Act. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
109. Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
24 July 2012

Delegate:	Michael Kirov
Representation:	Opponent: Hamish Bevan of Counsel instructed by Victoria Bell of Baker & McKenzie Applicant: Relied on written submissions prepared by Actuate IP, Patent & Trade Mark Attorneys
Decision:	2012 ATMO 64 s 52 opposition: Grounds under ss 43, 44, 60 and 62A pressed – services not similar – use not likely to deceive or cause confusion – application not made in bad faith - opposition unsuccessful. Costs awarded against the Opponent.