An Australian court has ruled for DC Comics Inc. in rejecting a local fitness company’s attempt to register a “Superman Workout” trademark.

The Australian Registrar of Trade Marks had originally granted the application by Cheqout Pty Ltd. on the grounds that there was little likelihood consumers would associate the fitness offering with the iconic superhero.

In defending the decision, the registrar noted that the term “superman,” derived from Friedrich Nietzsche’s ubermensch, predates DC’s introduction of the superhero character in 1938. Though he acknowledged that the Superman mark was familiar to most people in Australia from movies and a variety of merchandise, the registrar pointed out that DC had never operated health or fitness clubs.
 
But Justice Annabelle Bennett of the Federal Court of Australia rejected the registration on the grounds that Cheqout owner Bass Gabrielle had applied for the “Superman Workout” trademark in bad faith and clearly intended an allusion to the DC character.
 
Though the company applied to register the mark using the words alone, the judge noted that, in most of its films and promotional materials, it used the words in conjunction with a “BG” shield device similar to the Superman’s famous “S.” She also pointed out that Cheqout used a red, white, and blue color scheme reminiscent of Superman.
 
“In my view, the inference is clear, from the immediate use of the Trade Mark together with the BG Shield Device that, in making the application to register the Trade Mark, Mr Gabrielle (and therefore Cheqout) intended to use it in combination with the BG Shield Device in order to strengthen the allusion to Superman,” the judge wrote.
 
“The inference can also be drawn that this use was designed to gain a benefit by appropriating Superman indicia and the reputation of the DC Comics superhero, so as to further the viewer’s association between the Trade Mark and the Superman word mark.”
 
DC was represented by Ron Webb SC of Nigel Bowen Chambers and Baker & McKenzie Sydney partner Robert Arnold.
 
Australian government solicitor Nick Gouliaditis appeared for the Registrar. Cheqout and Gabrielle did not participate in the proceeding.
 
Email: alin@alm.com .