DC Comics v Cheqout Pty Ltd

Case [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

  1. 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”).

  2. 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”)

  3. The Opponent filed its Notice of Opposition (“the Notice”) on 23 December 2009.

  4. 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”)

  5. 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.

  6. Amy…

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Details
AGLC
DC Comics v Cheqout Pty Ltd [2012] ATMO 64
Case
[2012] ATMO 64
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition by DC Comics ("Opponent") to an application by Cheqout Pty Ltd ("Applicant") to register the trade mark "Superman Workout" for services including conducting exercise classes. The dispute arose from the Opponent's claim that the Applicant's proposed mark was deceptively similar to its registered trade mark, which featured the SUPERMAN & Device Mark and covered services such as entertainment and educational presentations. The proceedings were before the Australian Trade Marks Office.

The primary legal issues before the Tribunal were whether the services for which the Applicant sought registration were "similar services" to those covered by the Opponent's registration, and whether the Applicant's proposed trade mark was "deceptively similar" to the Opponent's registered SUPERMAN & Device Mark, as required by section 44 of the *Trade Marks Act 1995* (Cth). The Opponent relied on its registration number 612154, which had a priority date of 23 September 1993, to oppose the Applicant's application filed on 2 June 2009.

The Tribunal considered the scope of "educational presentations" within the Opponent's registration, noting that it could encompass presentations relating to physical education and exercise classes, particularly in the context of DVDs for domestic use. However, the Applicant argued that a "normal and fair" use of the Opponent's trade mark, in conjunction with the other services listed in its registration (primarily entertainment and movie-related), would not extend to the provision of exercise classes in health clubs or gyms, where the Applicant's services were likely to be offered. Applying the criteria of the nature of the services, their uses, and trade channels, the Tribunal found that the services covered by the Opponent's registration were based in entertainment, education, and film, contrasting with the Applicant's services focused on exercise and fitness classes.

The Tribunal's decision on the similarity of services was not explicitly stated in the provided text, nor were the final orders. The reasoning focused on the interpretation of the trade mark specifications and the likely use of the respective services.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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: 612154Priority Date: 23 September 1993Services: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 presentationsTrade 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.