DC Comics fails to prevent registration of superhero character
Wednesday 18th January 2012
DC Comics has failed in its attempt to oppose a trade mark application for a super hero character in relation to financial services in class 36.
In 2009 a New Zealand company, Superloans Limited, applied for a cape and tight wearing muscular super hero character with a shield like device with a $ sign in it on his chest.
DC Comics opposed based on the likeness to the Superman character and a variety of related trade marks.
The Assistant Commissioner considered four main issues: which marks had a reputation in New Zealand, whether the Superloans trade mark was similar to any DC Comics marks, whether the services were similar and whether deception and confusion was likely to result.
When considering which trade marks had a reputation in New Zealand, the Assistant Commissioner found that the stylised word SUPERMAN and the shield logo had a reputation. She did not make a finding in respect of the reputation of the Superman character itself.
The Assistant Commissioner found the Superloans mark would be perceived as being visually, phonetically and conceptually dissimilar and that it would not be perceived as being from the same stable as the SUPERMAN character or any of the DC Comics superhero characters. She pointed to various differences such as the cartoonish and comical nature of the Superloans mark, the fact the Superloan’s character is holding cash in his hand, and has a $ sign on his chest.
In respect of the services, the Assistant Commissioner found that DC Comic’s services relate to entertaining the public, whereas Superloans services are the provision of loans.
Unusually for a trade mark opposition, DC Comics pleaded copyright infringement. The Assistant Commissioner ruled that Superloans may be been generally influenced by superhero characters but had not copied the SUPERMAN character.
Overall, the opposition was unsuccessful, and pending an appeal, the Superloans superhero character can be registered.