Move over kryptonite, the “Man of Steel” has a new weakness, and it’s covered in garlic sauce! On the back of his highly successful YouTube parody, creator Theodore Saidden has sought to register the “Superwog” logo as a trade mark to protect the IP in his new T-shirt range (see the device mark lodged with IP Australia below). DC Comics, the owners of the registered “Superman” trade mark, is not impressed, and have lodged a notice of opposition.
The Superwog mark is clearly intended to be a parody of the Superman mark. It incorporates the letter ‘W’ into the famous diamond shield (replacing the letter ‘S’), with the word “Superwog” printed underneath. So the question is, to what extent are satirical marks, whose success as a parody are largely dependent on their similarity to a well-known mark, themselves registrable as a trade mark in Australia?
For an opposition to a trade mark to be successful under s 60 of the Trade Marks Act 1995 (Cth), the reputation of the registered trade mark must be such that the use of the applicant’s mark would be likely to deceive or cause confusion. Unlike the express exceptions to copyright infringement in the Copyright Act 1968 (Cth) (ss 41A and 103AA), there is no parody exemption in Australian trade mark law.
However, a parody is only successful as a parody if the viewer is able to successfully distinguish between the parody itself and the source of that which is being made fun of. A successful parody will not then, ordinarily, create a “real and tangible likelihood of deception or confusion” as to the source or origin of the mark.
On the other hand, a poorly executed parody, where the ordinary viewer fails to recognise the intended satire, could increase the likelihood of confusion as to the source of the trade mark, as was held in the Valium case (Hylebut Pty Ltd v Roche Products Ltd (2007) 74 IPR 551).
It was crucial in Valium that the word in the opposed trade mark was identical to the registered mark. In other cases, marks such as “Tenfolds Grunge” (Penfolds Grange) and “Mr Magloo” (Mr Magoo) have been found not to be deceptively similar (see Southcorp Ltd v Morris McKeeman [2006] ATMO 48 and Classic Media Inc v Republic Chemical Industries Inc [2005] ATMO 58). In these cases, a difference in spelling gave prospective purchasers the opportunity to identify and appreciate the send up.
So how successful is the “Superwog” parody? Does it pass the test?
Notwithstanding the fact that the “Superwog” mark may be intended as a humorous take-off of the “Superman” brand, Mr Saidden’s intention is not relevant. The only relevant question is whether a sizeable proportion of the purchasing public would be caused to wonder whether or not the owner of the “Superman” mark (DC Comics) is the source of, or associated with, the “Superwog” T-shirts.
Well, here at IP Whiteboard, reasonable minds can differ, and that might be the case in assessing the above. Still, we’ll jump off the fence and observe:
· There is no use of the famous “S”; and
· The presence of “wog” is a clear signal that we’re in Aussie satirical territory.
As to the famous “S”, due to its vast popularity, the diamond shield encompassing the letter ‘S’ is one of the most easily identifiable symbols in the world. The logo is learnt from an early age and could be recognised by most children in the Western world. Australian courts have regularly regarded fame as a “double-edged sword” in the trade mark context, as the greater the reputation of the mark, the higher the likelihood that even the slightest amendment will distinguish the parody from the well-known original mark.
Furthermore, due to the readily identifiable and politically incorrect use of the term ‘wog’ in Australia, we think it would be very difficult to argue that the shield device in combination with the “Superwog” word mark could cause the ordinary viewer to wonder whether DC Comics has come up with a new side-kick, a la Supergirl.
The success of a parody as a parody is crucial to the success of an application to register a trade mark in Australia. It appears that success to beating Superman is through a rigorous souvlaki diet and dedication to kickboxing. Lex Luther, take note.
