We often stress the importance of registering trademarks outside the U.S., particularly in countries where trademark rights are based on registration and not on trademark use. The recent dispute between DC Comics and Indonesian snack company PT Marxing Fam Makmur underscores why belated registration can be kryptonite to a company’s enforcement efforts.
In 2017, DC Comics sought to register its powerful SUPERMAN brand in Indonesia but the application was refused based on an existing registration for the mark held by Marxing. In April 2018, DC Comics sued for infringement of its Man of Steel character, arguing that Marxing had a possible malicious intent for registering DC’s trademark in International Classes 30 and 34 (for products like wafers, biscuits and rice) without prior permission or approval. Marxing alleged that it had manufactured the chocolate wafer snacks under the SUPERMAN trademark in Indonesia since 1993 and the Central Jakarta Commercial Court in Indonesia agreed, ruling against DC Comics. DC filed an appeal to the Supreme Court of Indonesia, but it was promptly denied: “The plaintiff’s lawsuit cannot be accepted because it is obscure.”
Global brand protection can be complex, but don’t let Lex Luthor foil your trademark expansion plans. For any international filing, brand owners should decide which countries provide the most leverage and consult with a qualified and experienced trademark attorney for guidance on trademark availability, use, the application and registration procedure, and the mark owner’s rights vis-à-vis the rights of others. This assistance is likely to result in stronger trademark rights and cost savings.