SUPERMAN rescued from the clutches of construction firm

In DC Comics v Viet Dia Construction Co Ltd (Case HK6-M289/02, July 8 2004), the National Office of Intellectual Property (NOIP) has ordered the cancellation of the defendant's SUPERMAN mark.

DC Comics registered its famous SUPERMAN and SUPERMAN and device marks in Vietnam in 1993 for goods in Classes 9, 16, 25 and 28 of the Nice Classification. These goods included films, tapes, disks, publications, hats, clothing, toys and games. It has also registered and used the marks in over 150 countries around the world since the 1930s. However, both marks have never been used in Vietnam.

Viet Dia Construction Co Ltd, a company based in Ho Chi Minh City, Vietnam, subsequently registered the trademark SUPERMAN (in block capitals) for services in Class 42, including "services of trading, agent, consigning, wholesaling and retailing mechanical accessories used in ... light industry, such as pliers, hammers, adjustable spanners".

DC Comics applied to the NOIP to cancel Viet Dia's registration. In response, Viet Dia argued that (i) DC Comics's trademarks did not have well-known status in Vietnam, and (ii) Viet Dia's registered services were completely unrelated to the products covered by DC Comics's registrations.

For its part, DC Comics submitted evidence of the worldwide reputation its trademarks have acquired and argued that they should be considered well known in Vietnam. It next claimed that Viet Dia's trademark was (i) confusingly similar to its well-known SUPERMAN marks, and (ii) likely to mislead consumers as to the origin of the services.

The NOIP accepted DC Comics's arguments and cancelled Viet Dia's mark.

Le Hoai Duong, LÊ & LÊ, Hanoi