On 13 February 1993, DC COMICS in New York, USA (“DC COMICS”) filed an application for registration of the trademark “SUPERMAN & Device” in Vietnam and then was granted Trademark Registration Certificate No. 9119 on 14 Sept. 1993 in respect of goods in the Int'l Classes 9, 16, 25, 28 including films, tapes, disks, publications, hats, clothing, toys, and games. The trademarks “SUPERMAN” and “SUPERMAN & Device” of DC COMICS have also been registered, widely and consecutively used in over 150 countries in the world since 1930s. However, both these trademarks have never been used in Vietnam.
On 13 May 1996, Viet Dia Construction Co., Ltd., a local company in Ho Chi Minh City, Vietnam (“Viet Dia”), filed an application for registration of the trademark “SUPERMAN” (in block letters) and then was granted Trademark Registration Certificate No. 24089 on 3 April 1997 in respect of services in the Int'l Class 42 including "services of trading, agent, consigning, wholesaling and retailing mechanical accessories used in the light industry, such as pliers, hammers, adjustable spanners".
On 31 Aug. 1998, a local trademark counsel to DC COMICS filed a Request on canceling the validity of Viet Dia’s Trademark Registration Certificate No. 24089 with the National Office of Intellectual Property ("NOIP").
In July 2001, in a response to the Cancellation Request, Viet Dia argued that (i) DC COMICS failed to demonstrate the well-known status of DC COMICS’s trademarks in Vietnam, and (ii) The registered services of Viet Dia in Class 42 are completely different and non-related to DC COMICS’s products registered in Classes 9, 16, 25, 28, and as a result the scope of protection of DC COMICS’s trademark “SUPERMAN & Device” does not cover that of Viet Dia's Registration No. 24089.
After being authorized to replace the said counsel, on 11 Oct. 2002, LÊ & LÊ filed a new Request for canceling the Viet Dia’s Certificate No. 24089 with the NOIP. In the Request, LÊ & LÊ represents its opinions on a series of controversial issues relating to well-known trademarks, such as conditions, criteria and scope of protection of well-known trademarks on non-competing goods/services. All of these are decisive issues in the dispute. With the presented opinions on protection of well-known trademarks and the submitted evidence of the worldwide reputation these trademarks have acquired, LÊ & LÊ argues that DC COMICS’s trademarks “SUPERMAN” and “SUPERMAN & Device” should be considered well-known in Vietnam. Based on the regulations effective at the time of the filing of Viet Dia's trademark, LÊ & LÊ presents two arguments that Viet Dia’s trademark is confusingly similar to the DC COMICS's well-known trademarks “SUPERMAN” and “SUPERMAN & Device” and that Viet Dia’s trademark is a sign that is likely to mislead consumers about the origin of goods.
On 8 Jul. 2004, the NOIP decided to cancel the validity of the Trademark Registration Certificate No. 24089, accepting all LÊ & LÊ arguments on the said issues of the dispute that lasted for more than 6 years between DC COMICS and Viet Dia in Vietnam.