A Melbourne based fitness company, Cheqout Pty Ltd, recently learned this valuable lesson. Cheqout had been using the brand name SUPERMAN WORKOUT in connection with fitness merchandise and took steps to register this name as a trade mark.
DC Comics, the right owners of a number of iconic superhero characters, including Superman, Batman and Wonder Woman, got wind of this trade mark application and as you can probably guess, were none too impressed by Cheqout's marketing efforts.
Initially, the Registrar for Trade Marks actually dismissed DC Comic's arguments, finding that the name itself would not deceive or confuse consumers into thinking it was connected to the DC Comics' superhero.
After all, even the Macquarie dictionary includes a definition of the words "super man" as being a general term to refer to ''an ideal human being who by virtue of greater spiritual powers rises above the usual notions of good and evil''.
However, DC Comics was not going to allow their superhero to lose this particular fight and challenged the decision in the Federal Court. At this stage, Cheqout realised it was no match for the "man of steel".
As part of their brand imagery, Cheqout had used the name SUPERMAN WORKOUT in combination with a logo that bore resemblance to the iconic "S" shield logo seen emblazoned on the comic character's chest and red cape.
Additionally, Cheqout had also used the colour combination red, white and blue on the packaging of its goods and its marketing collateral. Unsurprisingly, the Court sided with the man in the red cape, finding that Cheqout had filed the application in bad faith and the application was refused registration.
This is a clear example of where business owners and marketing departments have to be careful when creating brands and brand imagery, particularly where reference to fictional characters is concerned.
In Cheqout's case, the decision issued by the Court may have been a very different one had it used another symbol and colour combination with its merchandise, thereby creating an obvious point of difference and ensuring no risk of association with DC Comic's superhero character.
While there may be obvious commercial benefits to aligning your product or service to an iconic brand, such use may not go unnoticed and a long and costly dispute with right owners is not a typical part of any budget.
As previously noted by Jay Kogan, the chief intellectual property counsel for DC Comics, unauthorized use of superhero analogies is common among small businesses and local politicians who use the reference for commercial or political purposes.
For example: where the local pizza parlour advertises that it delivers "faster than a speeding bullet" and shows a picture of Superman flying through the air with a pizza in his hand. Or, where the candidate running as the local mayor, uses the Batman symbol to promote his pledge to keep the community safe from crime.
While some of these issues may be resolved with a simple phone call, not all matters are, in Mr Kogan's point of view, that "easy to resolve". And, as Cheqout and others have found out, even Superman and superheros have lawyers.
