Trade marks are serious business.
Following a number of viral and successful YouTube parody videos, Theodore Saidden, creator of “Superwog”, decided to take things to the next level and capitalise on his success – by selling t-shirts.
Theodore sought to register a “Superwog” stylised logo as a trade mark and submitted an application to register the mark to IP Australia. Despite its popularity among university and school students, DC Comics, the owner of the registered “Superman” trade mark, is not impressed. They have lodged a notice of opposition to the application.
The “Superwog” mark is quite similar to the “Superman” mark. It retains the classic diamond shield and replaces the letter “S” in the middle of the shield with a stylised letter “W”. In addition to this the colour scheme is different – the “Superman” mark is gold and red, while the “Superwog” mark is black and silver.
Will DC Comics be successful in its efforts? The Copyright Act 1968 after all, does provide exemptions for parodies and satire.
Unfortunately, the Trade Marks Act 1995 does not provide such an exemption. If a mark is unable to be distinguished from another similar mark, and as a result, deceives or causes confusion, then the registration of the mark must fail.
In this situation, the question that needs to be answered is this: “Will a large portion of the general public believe that the Superwog mark is associated with the owners of the Superman mark?”
One of the matters to take into account when determining this question is the success of “Superwog” on its own. If it is seen by the general public as an obvious parody and in no way affiliated to “Superman”, then there is a good chance that the trade mark registration application may stand up. However, that in itself will be a difficult decision to make.
Turning blogs into money by leveraging social media is becoming increasingly common, however as Mr Saidden may appreciate issues of parody and satire can run afoul of trademark owners as soon as you are on the trademark holders radar. It is important therefore to stop and consider the risks before taking new found fame and success to the next level.
About the author
Kenneth Ti is an Associate Solicitor with Phang Legal and a graduate from the University of New South Wales. He has a background in financial services and insurance, and is focused on commercial and intellectual property matters. Kenneth is a strong believer in small business, the community, and pro bono work.
