The Supreme Court of Indonesia, on May 28, 2019, dismissed an appeal (Decision No. 1105 K/Pdt.Sus-HKI/2018) brought by DC Comics against PT Marxing Fam Makmur (respondent).
The respondent is in the food and beverage industry, producing and distributing among other things, Superman-themed chocolate wafer biscuits. The appellant, DC Comics, is an American comic book publisher known worldwide for its superhero characters, such as Batman and Superman.
The dispute, which began on April 3, 2018, came about after DC Comics was blocked from registering the SUPERMAN trademark. The respondent had held the trademark rights to the SUPERMAN mark in Indonesia since 1993. Trademark Reg. Nos. IDM000374438 and IDM000374439.
DC Comics took the case to the Jakarta District Court (District Court), alleging bad faith in the respondent’s registration of the trademark, and seeking a cancellation of the respondent’s trademarks. The District Court ruled in favor of the respondent and held that the suit by DC Comics was obscure and procedurally incorrect, as it combined three separate requests: (1) to cancel the respondent’s existing trademark; (2) to reject any pending applications by the respondent; and (3) to allow DC Comics’ trademark application to proceed to grant.
The District Court further held that DC Comics’ attorneys acted beyond their authority granted by DC Comics, which was specifically for the cancellation of the respondent’s trademark, but did not extend to the other two requests.
The Supreme Court agreed with the decision by the District Court, and upheld the same. Decision No. 17/Pdt.Sus-Merek/2018/PN.Niaga.Jkt.Pst.
This case demonstrates two key takeaways: First, Indonesia applies strictly the principle of first-to-file with respect to its intellectual property regime. Second, and more importantly, it is critical that powers of attorney be drafted and reviewed carefully to avoid similar unfortunate occurrences of suits being dismissed on technical or procedural grounds.
By: Denise Mirandah
This article first appeared in the INTA Bulletin Vol 74, No. 12. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx