Can you Trade Mark a Parody of a Trade Mark?

Should you build your brand on the back of another?

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. DC Comics has 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. However, we are not examining the case from a copyright perspective. The Trade Marks Act 1995 does not provide an exemption for parodies and satire. It follows then, that 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. This may be a serious issue to consider, especially in the case of parodies, where the parodied mark must be similar to the original mark (otherwise, it wouldn’t be a parody, would it?).

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. Different people may come to different conclusions about the mark, after all.

In recent times, many young entertainers and bloggers have become successful by utilising social media to entertain their audiences through parody and satire. Some consideration will be needed before taking such new found fame and success to the next level. As always, it is always preferred to build your own brand from scratch – however given the time and effort required to build a brand, it might be easier to build a brand on the back of another. However, capitalising this may prove to be difficult, Mr Saidden may appreciate.

UPDATE: In March 2011 the application for this mark was withdrawn. As far as we can tell, there are no outstanding trade mark applications for “Superwog”.