DC Comics fails to prevent registration of superhero character

New Zealand
In Superloans Limited v DC Comics, a general partnership comprised of Warner Communications Inc and EC Publications Inc ([2011] NZIPOTM 43, November 25 2011), DC Comics has failed in its attempt to oppose a trademark application for a superhero character in relation to financial services in Class 36 of the Nice Classification.
 
In 2009 a New Zealand company, Superloans Limited, applied to register a cape and tight-wearing muscular superhero character bearing a shield-like device with a $ sign in it on his chest:

DC Comics opposed based on the likeness to the Superman character. The opposition was based on several SUPERMAN and S marks, including:

 


The assistant commissioner considered four main issues:
  • which marks had a reputation in New Zealand;
  • whether the Superloans trademark was similar to any of DC Comics' marks;
  • whether the services were similar; and
  • whether deception and confusion were likely to result.
When considering which trademarks 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.
 
Further, the assistant commissioner found that 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 DC Comics' superhero characters. She pointed to various differences, such as:
  • the cartoonish and comical nature of the Superloans mark;
  • the fact that the Superloans 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 Comics' services relate to entertaining the public, whereas Superloans' services are the provision of loans.
 
Unusually for a trademark opposition, DC Comics pleaded copyright infringement. The assistant commissioner ruled that Superloans may have 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.
 
Kate Duckworth, Baldwins, Wellington

Get unlimited access to all WTR content