Lessons on bad faith from Superman, Yakult and Queensberry

Australia is moving away from and towards European law, all at the same time.

There have been three recent decisions relating to the bad faith ground of opposition and invalidity in Australia, the UK and Europe.

The Australian decision was DC Comics v Cheqout 1, relating to the mark SUPERMAN WORKOUT in relation to fitness services. DC Comics opposed SUPERMAN WORKOUT based on its rights in the SUPERMAN mark. It also based its opposition on bad faith. Each ground of opposition failed before the delegate of the Registrar of Trade Marks and DC Comics appealed to the Federal Court.

Bennett J handed down her decision of the Federal Court in which she rejected the opposition based on reputation and thereby upheld the Registrar's decision.

On the bad faith claim, however, Justice Bennet overturned the decision of the Registrar.

Bennett J had the advantage of the decision of Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) 2 in which she gave a very broad interpretation of the bad faith ground under Australian law. In applying Fry, Bennett J looked at issues around the subjective intentions of the applicant, Cheqout, and also the objective...