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Indonesia's Trade Mark Law proves to be Kryptonite to Superman

Published on 30 May 2019 | 1 minute read

Indonesia’s problem of trademark piracy has reared its head again. This time, DC Comics lost a recovation case against Marxing Fam Makmur‘s SUPERMAN trademark. The Supreme Court then upheld the decision. 

The problem is that this was a very old registration from 1993. Marxing Fam Makmur is connected to a large public F&B maker called Siantar Top, and they have made a SUPERMAN chocolate wafer bar for many years. DC Comics' own trademark for similar foods was rejected so they tried to cancel Marxing Fam Makmur‘s SUPERMAN trademark on the grounds of bad faith. 

Indonesia’s IP authorities take a narrow view of bad faith.  Possibly the length of time, the existing product and no other indication of bad faith against others, helped the court decide in the local company’s favour. (But note the character and logo!!!)

It certainly seems suspicious. Some commentators speculate that the legal system favours local companies (but data suggests otherwise). Others say inherent weakness in the laws and the first to feel system (but well known marks like this and marks filed in bad faith, which this surely was, are in fact protected).  Most IP cases in the Commercial and Supreme Court work efficiently, but odd do decisions still occur. When famous marks are involved it attracts attention. Pierre Cardin, ASICS, Ikea and Monster Energy have suffered similar problems in event years. 

Unfortunately the decision seems to dwell more on procedural issues rather than the substantive case claim.  It is certainly the case that Indonesian judges spent too much time on procedural technicalities and less time on actual substantive justice. Great care must be taken with litigation in Indonesia, especially with dissimilar goods. Long delays make winning much harder. Getting caught out on procedural issues is a common problem and a sign perhaps of an unreliable decision for some other reason.

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Principal, Global Head of Enforcement
+62 811 870 2616
Principal, Global Head of Enforcement
+62 811 870 2616