Have you ever wondered if you might have picked a brand name that’s a little too close to someone else’s mark? Or have you seen someone else manage to get a trademark registered that’s a little too close for comfort to your registered mark? If there’s infringement, trademark registrations can be challenged.
A recent Federal Court case demonstrates to business owners the important principle that trademark registration and trademark infringement should be considered as completely separate and distinct issues. A trademark registration is the best protection a business can have against attacks on its brand. But at the end of the day, a trademark registration is not an absolute guarantee against an infringement action if there is infringement.
The players in this recent case were Warner Brothers’ DC Comics, the owners of the Superman trademark, and a Melbourne gym, Cheqout, that used the mark “SUPERMAN WORKOUT” on its workout DVDs and video clips.
The trademarks office accepted a trademark registration application by the gym for the mark ‘SUPERMAN WORKOUT’. However DC Comics challenged the trademark, arguing that consumers would think the gym was associated with the comic book company. DC Comics also had issue with the gym’s use of the triangular-shaped symbol associated with Superman (Symbol) in its promotional materials. The gym eventually removed the Symbol after they received a cease-and-desist letter from DC Comics.
DC Comics took the matter to the Federal Court, and won. Judge Annabelle Bennett ruled in favour of DC Comics and ordered the gym to stop using the name ‘SUPERMAN WORKOUT’. The judge found that by using the name “SUPERMAN WORKOUT” together with the Symbol, the gym had intended to create a strong allusion to Superman, and so gain a benefit from the reputation of the DC Comics superhero.
So it was a costly exercise for the gym. The important lesson from this is that even if you can get a trademark approved and registered by the trademarks office, if there is in fact infringement, the trademark registration can still potentially be stripped from you by an action to the Federal Court.
You therefore need to ensure that before using a mark, you need to carefully consider whether it might infringe another person’s mark, as well as whether the mark is likely to be one in which you will be able to get a trademark registration.
If you have any questions in relation to trademarks or brand protection, contact us on [email protected] for a confidential discussion. Whether you need your trademark registered, you want to deal with someone who is infringing on your mark, or you have been threatened by a trademark owner – we can help.
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